Birdsall v. Perego

HALL, District Judge. The opinion of this ■court on the defendant’s demurrer to the orig-inál declaration in this case, would seem to be decisive, so far as this court is concerned, of the principal question raised by the demurrer to the third plea. The contract of the parties, as set forth in the original declaration, was substantially the same that is set out in the amended declaration, with the exception that, in the latter, it is alleged, that the plaintiff “agreed to allow, and did allow and transfer, to the defendant, the exclusive right,” &c., while, in the former, it was only alleged, that he “agreed to allow” such exclusive right; and it was held, under the former demurrer, that no avex-ment oi full performance on the part of the plaintiff was necessary. If this conclusion is correct, the third plea would seem to be bad in substance, as being no sufficient answer to the plaintiff’s amended declaration. Selden v. Pringle, 17 Barb. 458; Thomas v. Quintard, 5 Duer, 80. The third plea, as pleaded, admits the transfer to the defendant, of the exclusive right mentioned in the declaration, — Washburn v. Gould. [Case No. 17,214,] — and if, after such transfer, the plaintiff infringed that exclusive right, the defendant would have a right of action for such infringement. It would not, however, be a defence to this [448] action for the recovery of the sum agreed to be paid as a license fee for the machines which the plea admits were made and sold by the defendant. Even if such damages could be deducted from the plaintiff’s demand, by way of recoupment, the facts alleged would furnish no sufficient defence, by way of special plea, in bar of the plaintiff’s action; for, recoupment is a matter which, it is said, is never pleaded in bar. Nichols v. Dusenbury, 2 Comst. [2 N. Y.] 283, 286. And, if such a matter could be pleaded in bar of the action, it would be necessary to aver that the defendant’s damages were at least equal to the damages of the plaintiff; for, otherwise, the plea would not answer the whole action, and would be bad for that reason. But it is not matter for a plea in bar, under any circumstances, (Id. 2SG;) and, whether the defendant claims damages for an infringement of the exclusive right transferred to him, or for the violation of the plaintiff’s agreement to allow him the exercise of that exclusive right, the rule of law and of pleading is the same. [NOTE. For other cases involving this patent. see note to Birdsall v. McDonald, Case No. 1.434.J The demurrer to the fourth plea presents a more doubtful question. The plea alleges no fraud on the part of plaintiff, in obtaining the contract, there is no express warranty, and, for aught that appears, the plaintiff supposed, when the contract was made, that he was the original and first inventor oi the machines specified, and that his patents were legal and valid. The plea does not allege that the defendant has been disturbed in the enjoyment of the exclusive right which the plaintiff assumed to transfer, by any person holding a paramount title, or aver even the existence of any such paramount title. Nor does it allege a re-transfer of the alleged right, while it in effect admits the manufacture and sale of the thirty-eight machines, as alleged in the plaintiff’s declaration, without the defendant’s having rescinded the agreement on the ground of an entire failure of consideration, because the plaintiff had in fact no exclusive right under his patents. The defendant has made and sold machines during the existence of the agreement, and while that agreement could have been set up against the plaintiff, if he had brought a suit against the defendant for an infringement of his patents. I am of the opinion that this fourth plea is bad in substance, as not forming any defence to the plaintiff’s action. Kinsman v. Parkhurst, 18 How. [59 U. S.] 289, 293; Wilder v. Adams, [Case No. 17,647;] Pitts v. Jameson, 15 Barb. 310; Thomas v. Quintard, 5 Duer, 80; Brooks v. Stolley, [Case No. 1,962.] But, it is insisted, on the part of the defendant, that the declaration is bad in substance, because it states the citizenship of the parties in the present tense, instead of stating such citizenship as existing at the time of the commencement of the suit, it being insisted that this allegation of the amended declaration relates to the date of the filing of that declaration, and not to the time of the commencement of the suit This objection must be overruled. The averment Is substantially in the form used in all cases where suits are commenced by capias, or by the service of a declaration; and it is clear that the amended declaration is not bad for the cause alleged. On the whole case, the plaintiff must have judgment on the demurrer, with leave to the defendant to amend within twenty days, on payment of costs.