H. W. Johns-Manville Co. v. Lovell-McConnell Mfg. Co.

LACOMBE, Circuit Judge. We do not see any ground on which to base an injunction. Certainly there was nothing unfair or of which plaintiff could complain in clause VII of defendant’s contracts with the different periodicals in which its advertisements were inserted. If the publishers were willing to agree in advance that defendant might cancel its contract and cease its advertising, whenever products which it thought were infringements were advertised, surely no one else had any right to complain. So, too, by virtue of that clause, defendant might discontinue its advertising whenever some product advertised was in its judgment an infringement. Of course it would have to act in good faith; it could not avail of the seventh clause to get rid of its obligations under the contract, if the advertisement complained of related to a product which in defendant’s judgment was not an infringement of any of its patents. But there is nothing here to indicate any such bad faith; on the contrary, the circumstance that they have brought suit to enjoin the manufacture and sale of plaintiff’s horn in [925] dicates that, rightly or wrongly, defendant believes that it is an infringement. We do not understand that it is contended that defendant, assuming that it entertains such belief, might not notify the journals that the contract was cancelled and thereupon cease advertising. But if it took such a course, the first thing the journals would do would be to demand information as to what advertisement it was of which defendant complained, whose product it was that in defendant’s judgment infringed its patent. Surely no one can contend that defendant should refuse to give such information. If, when' such information had been given, a journal had offered defendant to discontinue further publication of plaintiff’s product-if defendant would renew its advertising contract, what possible cause of action would plaintiff have against any one? Nor can we see how the situation is changed by the circumstance that the information is given to the journals before, instead of after, the discontinuance of defendant’s advertising. The case at bar differs materially from Adriance v. Nat. Harrow Company, 121 Fed. 827, 58 C. C. A. 163, where defendant for years kept on sending circulars to the customers of a rival manufacturer, notifying them that they were infringing his patent and threatening wholesale suits, while at the same time defendant was careful to avoid bringing suit against any one. Here within a few days of the sending of the notices complained of suit was brought under defendant’s patents, against the plaintiff. It is true that plaintiff’s horns have been manufactured, sold, and advertised for two or three years, but it appears that during that time defendant has been conducting a suit against another supposed offender, in which suit with reasonable promptness an interlocutory decree was entered which sustained defendant’s patents and construed their claims. Immediately thereafter the notice was given to the journals. It is well settled that the owner of a patent is under no obligation to prosecute every supposed infringer simultaneously; it is entirely consistent with good faith on his part to wait until the decision in a test case has determined the validity and scope of his patent. The order is affirmed, with costs.