
    Elmer E. Alexander et al., Under the Firm Name and Style of Davis, Reid and Alexander, Plaintiffs, v. The Trent Tile Company, Defendant.
    (Supreme Court, New York Special Term,
    November, 1908.)
    Patents — Licenses and contracts — Actions relating to royalties — Defenses.
    In the absence of an agreement to the contrary, it is no defense to an action by a patentee against a licensee for royalties upon the manufacture of patented articles that, after the contract between the parties was made by which the patentee reserved the right to license at its option any other manufacturer to make such articles, he did grant such license to another manufacturer at a lower rate.
    Action to recover a sum of money. Demurrer to separate defenses.
    Esselstyn & Ketcham, for plaintiffs.
    Flammer & Flammer, for defendant.
   Dayton, J.

The issues raised by the demurrer to the first, second and third defenses are in substance the same as those passed upon in Alexander v. Encaustic Tiling Company (ante, page 190). For a fourth defense it is alleged that the plaintiffs, subsequently to the date of the agreement set forth in the complaint, therein made an agreement with at least one large manufacturer for a lower payment of royalties than that provided in the contract set out in the complaint, and that this was in violation of an understanding between the parties that no future arrangement should be made with any licensees at a lower rate than that agreed upon between the parties. The contract is in writing and under seal. It contains no such prohibition as is claimed by the defendant. On the contrary, the plaintiff specifically reserves the right “ to license at its option any other manufacturer to make and sell circular tile under said patents or either of them,” and nothing whatever is said about the royalties to be charged such prospective licensees. I think, therefore, the demurrer to this defense should also be sustained. The first counterclaim is in substance the same as that set up in the En-caustic Tiling Company case. The second counterclaim is not demurred to. The third counterclaim is in substance the same as the second counterclaim in the Encaustic Tiling Company case. For the reasons set forth in my memorandum in that action the demurrers must be sustained in all respects, with leave to defendant to answer over upon the usual terms.

Demurrers sustained.  