FEDERAL" ;REPO;RTli:R,

vol. 39.

his if the head were not flat and preferably solid, instead of being round and hollow. The stud.afthe Keats· patent would be his if it were not folded over and joined by lateral pressure at the sides, so as not to be made of a continuous piece of metal. For the particular\lse for which the Stokes stud was designed a flat .and solid head was preferable, and for the particular use for which the Keats stud was designed a joint or seam at the sides was not objectionable. For the use for which the complainant's stud was designed Ii'round head was preferable, and a seam at the sides was objectionable. He desired to improve upon his predecessors by making a stud without a seam, and thus obviate the neces8ity of soldering, and which should be hollow throughout and thereby save material; and he desired to make a stud differing somewhat in details of the configuration of the partfl from that of Stokes or Keats. The idea and the method of making a seamless stud out of a single continuous piece of metal was suggested and fully shown by the patent of Stokes, and the idea and IT!ethod of saving material by having the entire stud hollow was suggested and fully shown by the patent to Keats. It is not open to reasonable doubt that any competent mechanic, versed in the manufacture of hollow sheet-metal articles, having before him the patents of Stokes and Keats, could have made these improvements and modifications without exercising invention, and by applying the ordinary skill of the calling. Indeed, the stud of the Stokes patent alone is a substantial anticipation of the complainant's patent. The different manipulation of the blank necessary to introduce the desired modifications of form, and the hollow head, which distinguish the studs, was within the obvious knowledge of the skilled mechanic. It must be held that the patent is invalid for want of novelty. The bill is dismissed, with costs.

ASBESTINE TILING

&

MANUF'G

Co. v.

HEPP

et al.

(Circuit Court, D. Oregon. June 28, 1889.)

1.

PATENTS FOR INVENTIONS-INFRINGEMENT-AcCOUNTING.

Cnder.section 4921 of the Revised Statutes, where a decree is given in 3 suit in equity restraining the infringement of a right secured by patent, the court may also decree a recovery of the profits arising from such infringement and the damages the plaintiff has sustained thereby.

2.

Where the council of Portland authorizes a contractor to lay a sewerin one of its streets, in pursuance of a power contained in its act of incorporation, and in so doing the contractor infringes upon the patent of another for mak· ing sewer-pipe, the act being a corporate ODe for the benefit of the corpora· tion, it is liable for such infringement, the same as a private corporation or person. ISyllabu8 by the Court.)

MUNICIPAL CORPORATION-INFRINGEMENT OF PATENT.

Suit in Equity for the Infringement of a Patent. Albert H. Tanner, for plaintiff.

ASBESTINE TILIJSG & MAJSUF'G CO. 'D. BEPP.

325

William H. Adams, for defendant.

DEADY, J. This suit is brought by the Asbestine Tiling & uring Company, a corporation formed under the laws of Washington, against V. Hepp and F. D. Ball, citizens of the state of Oregon, and the city of Portland, a municipal corporation of said state. It is brought to restrain the defendants from using or vending certain moulds for making mortar-pipes, for which Ezra Hamilton, the inventor, on October 23, 1877, obtained a patent from the United States, for the term of 14 years, for an account of the profits arising from the making, using, and vending of said moulds, and damages for the same. The defendants Hepp and Ball answer the amended bill, and the city of Portland demurs thereto. It appears from the bill that the plaintiff is the assignee of this patent for this county, and that the city of Portland is authorized by its act of incorporation to lay down sewers within the corporate limits, designate the mat.erial to be used in the construction of the same, exercise exclusive control in all matters relating thereto, and to assess the cost thereof on the property benefited thereby; that the defendant, by its common council, has employed and contracted with the defendants Hepp and Ball to put down numerous sewers constructed of pipe made with said moulds, and in pursuance thereof has used a large num bel' of said moulds and a large quantity of pipe made by means thereof,and is about to contract with them for the construction of other sewers therewith. On the argument of the demurrer the points made in support of it were these: (1) The city of Portland, in constructing sewers, eXl'rcises a police power for the benefit of the public health, which" ill no way inures to the profit or ad vantage of the city in its corporate capacity," and therefore it "is not Iiaule for the infringement of a patent in prosecuting such work." (2) The city of Portland is not liaule for profits on account of the alleged infringement, "none being realized" or "claimed by the bill." Hence equity has no jurisdiction. (3) The city. if liable at all, is only liable for damages, and these can only be recovered in an action at law. By section 4921 of the Revised Statutes (section 55, act of July 8, 1870, 16 St. 206) it is provided that in cases arising under the patent laws this court shall have power to grant injunctions "to prevent the violation of any right secured by patent, and upon a decree being rendered in any such case for an infringement the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the plaintiff has sustained thereby." Presumably the city has made no profits out of the alleged infringement; but, whether it. has or not or will not, the complainant is presumably damaged thereby to the extent of the royalty or :icense fee usually charged for the use of the patent. Prior to the act of 1870 damages could not have been recovered ina suit in equity for the infringement of a patent, but resort must have been had to an action at law for this purpose.

326

,FEDERAL REPORTER l vol. 39,

The city, like any natural perSOll, Ulay be enjoined from violating any right secured to the patentee in this patent, or his assigns, and the statute expressly provides that hl case of a decree for an injunction to restrain the infringement of a patent the plaintiff shall be entitled to recover the damages sustained thereby. ' In Root v. Railway CO'., 105 ,U; the whole subject of redress in equity for thevioillition of a right secured by a patent is exhaustively examined by the late Mr. JllsticeMATTHEWS. The bill was filed after the expiration of letters pntentfor the profits derived by the defendant from the 'UBe of an iinprovement in railway car brakes, and, as there could be no 'further infringement after the expiration of the patent, it was not, a case for lm injunction, and consequently not of equitable cognizance. In stating the conclusron of the court, Mr. Justice MATTHEWS said (page 216) "that a bill in equity for a naked account of profits and damages against an infringer of a patent cannot be sustained; that such relief ordinarily is incidental to some other equity, the right to enforce which secures to the patentee his standing in court; that the most general ground for equitable interposition is to insure to the patentee the enjoyment of his specific right by injunction against a continuance of the infringement. " In the case under consideration, on the demurrer to the bill, the plaintiff is entitled to an injunction against the continuance of the infringement by theCity, and this gives this court, sitting as a court of equity, jurisdiction. Incidental to this, according to the rules of procedure in equity and the express language of the statute, (section 4921, Rev. St.,) the court may give the plaintiff further relief by way of the recovery of the profits made by the infringer or the damages sustained by the plaintiff. By the ,act of October 21, 18$2, incorporating the city of Portland, the common council thereof is authorized to open, layout, widen, grade, and improve the streets of the city, and, by section 121 of such act, "to lay down all necessary sewers and drains, and cause the same to be assessed on the property directly benefited by such drain or sewer," and by subdivision 30 of section 37 of said act the council is given the power "to regulate * * * the building and repairing of sewers." In Dillon on Municipal Corporations (3d Ed. § 966) it is said that such corporations U are liable for acts of misfeasance positively injurious to individuals, done by their authorized agents or officers, in the course of the performance of corporate powert Gonstitutionally conferred, or in the execution of corporate duties." But, the writer adds, there is" not a little diver5ity of opinion as to what duties are corporate duties." However this may be, it is certain that the state may authorize the officers of a municipal corporation to perform a duty which is not corporate in its character or purpose, and for the omission or wrong-doing of which the corporation is not, and ought hot to be, liable to anyone. My attention has not been attracted to any specific instance of this kind, but mnny suggest themselves. For instance, if the state were to author-

ASBESTINE . TILING' & MANUF'G CO. 1.'. HEPP.

327

ize and require the mayor of the city to keep a:rain-gauge or weather record in Poriland, or an account of the immigrants arriving at the port, in the performance of such duties he would be servingthe public at large, and not the agent of the corporation. But where the act is a corporate one, to be performed primarily for the benefit of the corporation, the inhabitants of the municipality, it is none the less a private, corporate act, because the public at large may be incidentally benefited thereby. What few cases there are on this subjAct refer to and follow the ruling in Bailey v. Mayor, etc., 3 Hill, 531. In tnis case it appeared that certain "water commissioners," appointed by the state under an act of the legislature to provide the city of Kew York with pure and wholesome water, employed persons to build a dam across the Croton river. The action was brought against the corporation to recover damages for injuries caused by the insufficient construction of the dam. The court held that the work was a corporate one; that the commissioners were the agents of the corporation; and that the latter was therefore liable for the injury. In delivering the opinion of the court, :Mr. Chief Justice NELSON, in speaking of the grants of power to municipal corporations for exclusive public purposes and those for private purposes, and the difficulty sometimes of distinguishing them, said: "But the distinction is quite clear and well settled, and the process of separation practicable. To this end, rpgard should be had not so much to the nature and character of the various powers conferred as to the object and purpose of the legislature in conferring them. If granted for public purposes exclusively, they belong to the corporate body ill its public, political, or municipal character. But if the grant was for purposes of private and emolument, though the pnblic may derive a common benefit therefrom, the corporation, quoad hoc, is to be regarded as a private company. It stallds on the same footirm as would any individual or body of persons upon whom the like special fraBchises had been conferred." Certainly the purpose of the power to drain the streets of the corporation for the health and convenience of the inhabitants thereof, is quite as much a private one as that of the power to furnish them with water. Like the power to maintain fire-engines and lights, the power to drain the streets by constructing sewers therein to carry offthe waste water and refuse matter is granted and intended for the benefit and emolument of the corporation,-the dwellers in the city , and not the general puhlic, although the latter may be and is incidentally benefited thereby. When the municipal corporation of Portland was created by the legislature, it was not contemplated that the inhabitants thereof should be left to perish in their own filth, and the place become a nuisance, and therefore the corporation is authorized, for its own benefit, to provide for the removal of its waste water and refuse matter by laying down sewers or constructing drains in its streets. In Ransom v. New York, 1 Fish. Pat. Cas. 254, and Blus v. Brooklyn, 4 :Fish Pat. Cas. ,596, it was held that the municipal corporation was liable as an infringer for acts done in the course of the execution of its corporate

328

FEDERAL ,REPORTER,

vol. 39.

powers and duties, the patents infringed being in the one case for fireengines and the other for an, improvement in hose-couplings. In Elizabeth v. Pavem.ent Co., 97 U. S. 126, it was not questioned that the corporation, having contracted with third persons to lay down a pavement on its streets, which was in fact an infringement of the pavement company's patent, was liable therefor as an infringer for profits, if any were made, and for damages, if any were sustained. But, the suit having been commenced before the passage of the act of 1870, "damages" could not be recovered therein; and. it not appearing that any profits had been made by the corporation, there were none to recover. Nor is it material whether the council contracted for or requited that the pipe to be used by the contractor should be made on the machine of the plaintiff. It is enough that it has aGcepted the same, or allowed the contractor to use it, without the license of the patentee or his assignee. The demurrer is overrded.

THE KATE PINCKNEY

V.

AITKIN.

v.

THE KATE

V.

AITKIN.

(Dist1'ict Court, D. South Carolina.

OF LADING.

June 28, 1889.)

Phosj.lhate rock, as an article of export, is known to commerce as "wet" and "dry" rock. the latter being subjected to heat, and thereby made merchanta· ble. Libelant sold a cargo of "dry" rock, which should contain not more than 2 per cent. of moisture, but after the rock was loaded. the master, represent· ing the vendees and charterers, refused to sign a bill of lading for anything but simply "phosphate rock," while libelant insisted that he should sign for "dry phosphate rock," without qualification. On libel filed for damages for the master's to sign, held, that both parties were in the wrong,-the libelant for insisting upon bills of lading for' dry rock" without qualirtcation or explanation, and the master for refusing to sign except for phowhate rock without statement of its condition, wet or dry, as ascertainable by the senses,-and the libel was dismissed, and costs divided.

In Admiralty. Libel for refusing to sign bill of lading. J. N. Nathans, for libelant. J. P. K. Bryan, for claimant.
SIMONTON, J. In order to understand this case a brief preface is necessary. Phosphate rock, as an article of export, is taken from the mine and subjected to the process of washing. When it leaves the washer, it is known as "wet" rock, and is shipped in that condition. Very frequently, however, the wet rock is dried before shipment. The drying process is either in a kiln or in the open air. The latter process exposes it to the action of the sun and air. The moisture is thus expelled.