Leeds & Catlin Co. v. Victor Talking Mach. Co.

HOUGH, District Judge. Defendants in error, having brought suit against the plaintiff in error alleging infringement of the Berliner Gramaphone patent (No. 534,543), procured an injunction restraining the manufacture, use, or sale of sound reproducing apparatus or devices embodying .the subject-matter specified in claims 5 and 35 of said patent, and also the use or employment in any way of the method set forth in claim 5 thereof (reported [C. C.] 146 Fed. 534, affirmed by this court 148 Fed. 1022). The claims protected by such adjudications are “a sound reproducing apparatus-consisting of (1) a traveling tablet having a sound record formed thereon and (2) a reproducing stylus shaped for engagement with said record and free to be vibrated and propelled by the same, substantially as described” (No. 35), and. the “method of reproducing sounds from a record of the same,” consisting in “(1) vibrating a stylus, and (2) propelling the same along the record by and in accordance with the said record substantially as-described” (No. 5); the “record” being identical with the' “traveling tablet” above mentioned. In other words, the invention under consideration is the Victor Talking Machine, and the feature thereof here important is that its reproduction of sound depends upon the record groove cut in the traveling tablet (or disk record) compelling the movement of the stylus across the face of the record by the horizontal revolution of the record itself. The reproducer of which the stylus is an integral part is covered by claims of the Berliner patent, not now in question; but of the combination protected by claims 5 and 35 thereof the stylus alone (or rather the machine of which it forms a part) is itself patented, while the traveling tablet, sound record or disk record, is an unpatented article. — 59 — The Leeds & Catlin Company is a manufacturer of disk records, and, since the decision of this court above referred to, asserts that it has become a dealer in another talking machine known as the “feed-device machine,” which for the purposes of this cause may be regarded as not infringing any of the rights of the Victor Company under the Berliner patent. The Leeds & Catlin disk records are equally suitable for the feed-device machine, and for that of the defendant in error. Plaintiff in error was found to have sold disk records forming an essential part of the sound reproducing apparatus and devices covered by the above-mentioned claims of the Berliner patent, and was fined for such violation of injunction. This writ of error is to review the order imposing said fine. On ample evidence, the court below found that most of the sales of Leeds & Catlin records were knowingly made by the plaintiff in error to enable the owners of Victor Talking Machines to reproduce such musical pieces as they wished by the combination of the Leeds & Catlin record with said machines; that the Leeds & Catlin Company made no effort to restrict the use to which their records might be put until after motion to punish for contempt had been made; that the only effort at such restriction ever made was to insert upon the face of the records a notice to the effect that such record was intended and sold for use with the “feed-device machine”; that the,records sold by plaintiff in error were far more frequently bought to increase the repertoire of the purchaser’s Victor machine than to replace worn-out or broken records. In our opinion it is also established by the evidence that the “feed-device machine,” above referred to, was not at or before the time of beginning this proceeding a practically or commercially known reproducer of musical or spoken sound, whereas the Victor machine, embodying the claims of the Berliner patent here under consideration, was at such times widely known and generally used, and that the plaintiff in error knew, and sold its records with the knowledge, that if its output was to be used at all by the public it would be used with the Victor machine, and in the combination protected by the claims of the Berliner patent above referred to. Upon these facts it is clear that the Leeds <& Catlin Company have made and sold a single element of the claims of the Berliner patent, with the intent that it should be united to the other element and complete the combination; and this is infringement (Heaton Peninsular, etc., Co. v. Eureka Specialty Co., 77 Fed. 297, 25 C. C. A. 267, 35 L. R. A. 728) adopted by this Court (Cortelyou v. Lowe, 111 Fed. 1005, 49 C. C. A. 671). The facts above recited are scarcely controverted, nor is it denied that the above inference should ordinarily be drawn; but plaintiff in error seeks to avoid that result by asserting that the records under consideration are but temporary, perishable, and unpatented parts of the patented combination; and therefore under Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 14 Sup. Ct. 627, 38 L. Ed. 500, free to be manufactured and sold by any one. This contention is not supported by the evidence. Disk records are fragile (i. e., brittle and easily broken), but they are not perishable (i. e., subject to decay by their inherent qualities, or consumed by few uses or a single one). Neither are they temporary, i. e. not intended to endure; on the con — 60 — trary, we find them capable of remaining useful for an indefinite period, and believe that they usually last as long- as does the vogue of the sounds they record. A rifle bullet, lost by a single discharge, is a perishable and temporary 'part of the combination of rifle and ammunition, and probably a cartridge shell, though capable of reloading and use several time, may also be so regarded; but the missile of a toy gun, picked up and used again and again in its original form, is in no proper sense of the words either “perishable” or “temporary,” though it may by repeated use wear out sooner than does the gun with which it is repeatedly combined. Again it is urged inasmuch as disk records are unpatentéd articles of commerce, which may be used upon the feed-device machine or lawfully exportéd to foreign countries, that no infringement can be alleged against the maker and seller thereof, because his product may be or is in fact used by purchasers as one element of a patented combination. This argument disregards the facts established herein. It is .true that the doctrine of contributory infringement has never been applied to a case where the thing contributed is one of general use, or suitable to a variety of other uses, especially where there is no definite purpose that the thing, sold shall be employed with others to infringe a patent right. Rumford Chemical Works v. Hygienic Chemical Co. (C. C.) 148 Fed. 866, and cases cited. But this plaintiff in error is shown to have manufactured and sold records for the express purpose of supplying the users of Victor machines; nor are such records staple articles of commerce (Cortelyou v. Johnson, 145 Fed. 935, 76 C. C. A. 455); on the contrary, they cannot be practically used within the United States except with the Victor reproducer; for we regard the feed-device machine either as a curiosity or a pretense, while the foreign trade of plaintiff in error is not interfered with by the injunction, nor affected by the order under review. • It is further contended that those who purchase the patented combination in question without restriction have lawful right to provide themselves with unpatented records made by any person whatever, by way of replacement and repair. We perceive no substantial difference in the meaning of these words. To return to use something injured or lost, or to substitute for something defaced or destroyed another thing substantially identical, is to repair. The right of general repairing has not been questioned; but what plaintiff in error has done is not to mend or better broken or other records, nor even to furnish new records identical with those originally offered by the Victor Company, but to place upon new disks such other sound records as are thought to command a market, and to induce users of the patented machine not to replace, but to increase their stock of recorded words and music. The right of repair is measured by the right of the owner of the patented article, and such owner, when doing what is above outlined, is no more repairing his machine than is one repairing a stereopticon, by changing the pictures therein to suit the whim of the person gazing through it. The final contention against the order below admits that the record actuating the stylus is a vital part of the combination claims of the patent in question; but declares that any purchaser of the patented article — 61 — may immediately substitute for even an essential-element therein any other element which he conceives better suited to his purpose, and, of course, if this be true, such preferred elements may be freely manufactured and sold. We think this contention disposed of by Thomson-Houston. etc., Co. v. Kelsey, etc., Co., 75 Fed. 1005, 22 C. C. A. 1; for the right of substitution there recognized was specifically restricted so as to refuse “authority to reconstruct or rebuild a combination which has been sold by the complainant,” and, whenever a Leeds & Catlin record is placed in a Victor machine, the patented combination is instantly reconstructed. The right of substitution rests upon the right to improve, pointed out by Clifford, J., in Chaffee v. Belting Co., 22 How. 223, 16 L. Ed. 210, and is different from the right to repair. But there is here no true substitution, and improvement is scarcely pretended. From a legal standpoint the disks of both parties are identical, because the grooving capable of actuating the reproducer is the same. What is substituted is but music or words, and what is improved, either price or novelty, is sound. These are but accidents, and no more important than the color of the disk. The true inquiry is whether the owner of a patented combination, the elements of which are durable, unbroken, and in good repair, may buy from the patentee one specimen of a single element, from an outsider an indefinite number of identical specimens of the same element, and keep and use them all, under cover of the word “substitution”; it further appearing that the element so procured and used is useful and commercially known only in respect of the said combination. We think this cannot lawfully be done, and affirm the order below.