642·

plainant's business, and from in any way interfering with that business by threats, It is alleged that this circular 'and the action of,"have already caused of the great daJhage to it [the complainant], which will increase daily;" but there is no statement of the amount of damages sustained or nqrof the value 9(tp.e in. cqntroversy,-of the object sought to be attained,which is the preventlOn.of "any further issuing ofthecil'cular,"etc.Tbe bill is therefore defective for want of are1,'1rient that in contro'Versy is sufficient, under tlieact to. Consequently, thepresentiJDDtion fQraprelbninary injunction cannot be entertained; but, as it does not affirmatively appear that the court is witp.out juris.diction of the cause, the bill will not now be dismissed,. and hll-s N 'move as it may advised in view of, notice to defendant's counsel. The attention of counsel is directed to Railroad Co. v; Ward, 2 Black, v. Fed.. 83;1:; Whitman v. Hubbell, 30 Fed. 485; 81; l'. S. 112; Gorman v. Havird, 141 U. S. 206;1'1:Sup. Ct and: Ra1ney v. Herbert, 3 U. S. App. 592, 5 C. C. A.l$3/1$5 Fed,. 443; . Theni6tion for preliminary injunction is dismissed Wfthout prejudiCe. .
, I

HOME INS; CO. v.NOBLES et at. '(Circt1lt Court, E. D. Pennsylvania. September 27, 1894.) No.4.
1. PRELIMINARVINJUNCTION+-DENIAL .WHERE RIGHT DOUBTFUL. ..........·. ,"

Aprelimlnary injunction will be denled where, upon conflicting aftldavits, an(lunder'the law, complalnant's right to the relief asked is doubtWHERE Wlt0NG VOLUNTARII,y DISCONTINUED.

I.

A preUi:nblli.R': injunction. be granted to restrain the further issue of a. circular alleged' to 'l)e Q.etrimental to complainant's business, a statement tha.t tbe llolicy holders of complainant company areUable to involvethettlselves in suits instituted to protect alleged there referred to, it appears 1?y oath of defendant that the ot such circulars was discontinued before suit brought, on being advbred that the p\>licy holders could not be held liable for tnfringement. .. .

In Equity. On motion fQr preliminary injunction. The facts appear in the preceding case;' 63 ;Fed. 641. G. and FraMisT.Chambers, for plaintiff. Harrity & Beck, HectorT, Fenton, and F. Pierce Buckley, for . defendants. DALLAS,HCireult JUdge.c . When application for 'a preliminary injunction was first made, I declined to entertain it because the bill was, in my opinion, defective for want of a necessary jurisdicThat defect has since been cured by an amendtional·· ment, flIed with notice and without objection,anq.thereupon the motion fqr,preHminary injunction has "been I have care-

HOME INS. CO. V. NOBLES.

643

fully considerE!d'allthat cQunsel, have urged upon my attention, but deem it proper to abstain from any premature and 'unnecessary expressionOf' opinion, and it D1ustbe'understood that, in disposing of the present matter, nothing is indicated with reference to th tl conclusion which may be reached upon final hearing. It is sutllcient now to say that I am not satisfied that a clear , case for granting the relief sought at this stage has been made out. Upon the conflicting affidavits which. have been submitted, and under the law as I understand it, the complainant's right to a decree in this proceeding, restraining the, defendants "from in any way interfering" with complainant's business, "either by threats or false representati6ns, whether verbal or written, or by any other means whatsoever," is at best very doubtful; andtbis is enough to require a denial of a preliminary injunction in pursuanceofthat portion of the prayer of the bill which I have quoted. I would, however, presently order an injunction to restrain any further i!lsuing of the circular annexed to the bill, but for the fact that its use was, voluntarily, wholly discontinued before suit was brought. 'l.'he statement which it contains, that the poJicy holders of the company are Iia'ble.' to involve themselves in lawsuits instituted to protect the alleged copyrights there referred to, is wholly unwarranted, and was manifestly injurious to the plaintiffi It greatly exceeds the latitude which is legally permissible in the methOds which may be pursued in the strife of business Steamship Co. v. McGregor, [1892] App. Cas. 25. But this wrong, as appeal'S from the affidavits and sworn answer, is not now being committed, and is not threatened. There is no reason to suppose that it will be repeated, and therefore, whatever other remedy the complainant may be entitled to, it cannot be awarded a preliminary injunction. If, as in Celluloid Manuf'g 00. v. Arlington Manuf'g Co., 34 Fed. 324, there was merely "a naked and unsupported promise" not to further violate the plaintiff's rights, I would hold, as was held in that case, that such unsupported promise could be of no avail to avert an injunction. But here we have Sbmething more. It is alleged under oath, and without contradiction, "that defendant Nobles issued the circular (Exhibit C) dated August 17, 1894, in good faith, and under a claim of right which he believed, and still believes, is good and valid in law; that he issued very few of said circulars, and discontinued the same entirely before this suit was brought, on being advised that policy holders or users of the copyrighted matter could not be held liable for infringement in merely being in possession of such matter." This statement is not incredible. I am not at liberty to assume that it is false, and if it is true how can it be said that it is reasonably to be apprehended that the circular complained of will be further issued? At this time there is no foundation whatsoever for such apprehension, and therefore, in my opinion, nothing to call for the immediate exercise of the restraining power of the court. Williams v. McNeely, 56 Fed. 265; Pott v. Altemus, 60 Fed. 339. Complainant's motion for a preliminary injunction is denied.

Co,.· J

,Q44

FEDERAL 'REPORTER,

vol. 63.

1.

Pao CONFESSO DECREE. A final :decree against defelidll!nt' UpOIl a,bill taken pro confesso chargIng in;frlngement of a patent wiUnot be vacated and defendant permitted is sufliclently excused, when: the been susmilled in other circuits, and' the answer submItted does Or any 'patent claimed to anticipate that in suit, nor llpeclfyilny time or place Where, or any party by whom, the inventI.ondes<lribed was evex: used, before application made for the patent. B.S:urL A on a. bill pro confesso cannot be vacated at subno apl)llcatioll was made at the term at WhICh it was 'rendered. . In EqUity. This was amotion by the city of St. Paul to vacate a. final decree rendered it upon a bill by Peter Stuart and others, tharging infringement of a patent, and to permit the defendan.t to answer.

,

STUART et atv.OITY OF ST. PAUL et at. . , Oourt, D. MlnnEl89W-t. Third Division. .' ;January. 27, 1894.)
'

"

Paul' Merwin,' LeonT.

&:

complalJ;lants. , · for defendant the mty of St. Paul.

SANllORN, Circuit Judge. This is a motion to vacate a final decree rendered June 5, 1893, during the January, ,1893, term 01 this court, against the defendant the city of St. Paul upon a bill eharging:the infringement of a patent, and to permit the defendant to answer. The motion Ie denied for the following reasons: First. The patent on which the bill is based has been sustained after a contest in the cillcuit court for the eastern district of Pennsylvania in Vulcanite Co. ,v. ;American Co., 34 Fed., 320, and in the circuit· court for the district' of Maryland in Stuart v. Thorman, 37 Fed. 90. Conceding, for the 'purposes of this decision, that the neglect of· the corporation attorney is sufficiently excused by the affidavits filed, it must be presumed that the proposed answer of the city states every substantial defense it could interpose in this action. The answer has been carefully examined, and it does not refer to or plead any patent which is claimed to anticipate that in suit, nor does it specify any time or place where, or any party by whom, the invention. described in the patent was ever used before application was made.for the patent. Under this answer the only substantial defense is that the int'ention was not patentable. That question is so far foreclosed by the decision of the circuit courts already ren, dered that this court ought not to come to a different conclusion until all controversy is put at rest by a decree of the supreme court of the United States. ManUfacturing Co. v. Bancroft, 32 Fed. 590; Manufacturing Co. v. Spalding, 35 Fed. 67; Reed v. Railway Co., 21 Fed. 284 ; Celluloid Manuf'g Co. v. Zylonite Brush & Comb Co.. 27 Fed. 295. As it does not appear that the city of St. Paul ever had any substantial defense to this suit, there is no reason why thb decree· should be vacated.