In this case, this Court follows the unanimous opinion of the
Circuit Court of Appeals that defendant did not have sufficient
notice of the license restriction to be charged with contributory
infringement, even if that doctrine exists, for selling ink to the
vendee of a patented printing machine, sold under a license
restriction that it should be used only with ink made by the
Where none of the executive officers of a manufacturing
corporation knew of the license restriction under which a patented
machine was sold, notice to a salesman, who was not an officer or
general agent of the corporation, was held insufficient to charge
the corporation with notice as to future sales of the article
manufactured by it to the licensee and used by the latter in
violation of the license restriction.
142 F. 933, affirmed.
The facts are stated in the opinion.
Page 207 U. S. 198
MR. JUSTICE BREWER delivered the opinion of the Court.
This is a suit to restrain an alleged infringement of a patent
granted June 22, 1897, for the stencil duplicating machine known as
the rotary Neostyle. The plaintiffs below, petitioners here,
represent the entire interest in the patent. There is no claim of
any infringement by using or selling the patented machines, but of
an indirect infringement in the following manner: for the last few
years, the rotary Neostyle has been sold subject to this license,
which was plainly disclosed on the baseboard of the machine:
"License agreement. This machine is sold by the Neostyle Company
with the license restriction that it can be used only with stencil
paper, ink, and other supplies made by the Neostyle Company, New
York City. "
Page 207 U. S. 199
The defendant company (which is engaged in the manufacture and
sale of ink) is, it is contended, engaged in selling ink to the
purchasers of these machines for use thereon; that it is thus
inducing a breach of the license contracts, and is responsible as
indirectly infringing the patent rights of plaintiffs. The circuit
court sustained the contention and entered an interlocutory decree
for an injunction and an accounting. 138 F. 110. On appeal, the
Circuit Court of Appeals for the Second Circuit reversed this
decree and remanded the case to the circuit court, with
instructions to dismiss the bill, 145 F. 933, whereupon the case
was brought here on certiorari.
The three judges of the circuit court of appeals concurred in
reversing the decree of the circuit court on the ground that the
evidence was not sufficient to show that the defendant had notice
that the machines for which the ink was ordered had been sold under
any restrictions, but they differed upon the question whether there
was any liability in case sufficient notice of the license
agreement had been brought home to the defendant. The majority were
of the opinion that the doctrine of contributory infringement,
which they conceded to exist, should not be extended beyond those
articles which are either parts of a patented combination or
device, or which are produced for the sole purpose of being so
used, and should not be applied to the staple articles of commerce.
In that view of the case, the article supplied being ink, a thing
of common use, its sale to a purchaser of the Neostyle machine
would be no infringement.
While in Bement v. National Harrow Company,
186 U. S. 70
Court held in respect to patent rights that, with few
"any conditions which are not in their very nature illegal with
regard to this kind of property, imposed by the patentee and agreed
to by the licensee for the right to manufacture or use or sell the
article, will be upheld by the courts,"
it is unnecessary to consider how far a stipulation in a
contract between the owner of a patent right and the purchaser from
him of a machine manufactured under that right that it should
Page 207 U. S. 200
be used only in a certain way will sustain an action in favor of
the vendor against the purchaser in case of a breach of that
stipulation. So, although,
"if one maliciously interferes in a contract between two
parties, and induces one of them to break that contract to the
injury of the other, the party injured can maintain an action
against the wrongdoer,"
Angle v. Chicago, St. Paul &c. Railway,
151 U. S. 1
151 U. S. 13
is also unnecessary to determine whether this states the full
measure of liability resting upon a party interfering and inducing
the breaking of a contract, for we concur in the views expressed by
all the judges of the court of appeals that there is no sufficient
evidence of notice. True, the defendant filled a few orders for ink
to be used on a rotary Neostyle, but it does not appear that it
ever solicited an order for ink to be so used, that it was ever
notified by the plaintiffs of the rights which they claimed, or
that anything which it did was considered by them an infringement
upon those rights. Further, none of the chief executive officers of
the company had knowledge of the special character of the rotary
Neostyle machine or the restrictions on the purchase of supplies.
The case of the plaintiffs in this respect rests mainly on the
testimony of the witness Gerber, who testified that, at the
instance of the manager of the Neostyle Company, he wrote to the
defendant for a one-pound can of black ink for use on the rotary
Neostyle, saying: "I will be at my office Friday afternoon, between
1:30 and 3:30, and, if convenient, have your representative call at
that time." A salesman of the defendant, named Randall, did call.
The witness directed Randall's attention to the restrictions on the
single machine he had in his office, and asked if he would have any
trouble with the Neostyle Company if he used the defendant's ink;
Randall replied in the negative, and added that "the ink in
question was not patented, that anybody could make or use it; that
no trouble would come to me from the use of the ink which he sold."
The restriction on the machine shown to Randall was one formerly
used by plaintiffs, but which had been discarded prior to this
transaction, and for it the present license agreement
Page 207 U. S. 201
had been substituted. The restriction shown to Randall stated
that the machine was sold
"with the express understanding that it is licensed to be used
only with stencil paper and ink (both of which are patented) made
by the Neostyle Company of New York City."
Evidently from his reply, Randall's attention was not drawn to
the question of a patent on the ink. Further, he was not an officer
or general agent of the defendant company, but simply a salesman,
and it cannot be that this talk with him is notice to and binding
on his principal in respect to all future transactions.
After reviewing all the minor considerations to which our
attention has been called by the plaintiffs, we see no sufficient
reason for disagreeing with the unanimous opinion of the circuit
court of appeals in respect to the matter of notice, and its decree