Scottish Court of Session Decisions

This was an action at the instance of Edington Detrick, manufacturer, San Francisco, California, and William Webster, engineer, formerly of San Francisco, now residing at Leeds, in England, against Laing's Patent Overhead Hand-Stitch Sewing Machine Company (Limited), having their registered office at Dundee, to have it found and declared that an agreement, dated 15th October 1878, entered into between the pursuers and Joseph Johnston Barrie, merchant, Dundee, John Watson & Co., merchants, Dundee, and Robert Abbot Glenday, merchant, Dundee, the then proprietors of certain letters-patent, and the defenders, was valid and effectual and binding upon the defenders in all respects; and to have the defenders decerned and ordained “to implement and fulfil the said agreement, and in particular, upon receiving payment, or offer of payment, from the pursuers of the royalties mentioned therein, to accord to the proprietors of the Webster patent, and all others acting under agreement with them, or with their consent, full and undisturbed right and liberty to make, use, exercise, and vend sewing machines made in conformity with the said agreement.”

On 25th January 1884 the Lord Ordinary ( Lee) ordered the pursuers Detrick and Webster to sist mandatories.

The pursuers reclaimed, and on 23d February 1884 the First Division recalled the order on the pursuer Webster to sist a mandatory, and quoad ultra adhered. On 28th May 1884 the Lord Ordinary “in respect of the failure of the pursuer Detrick to sist a mandatory in terms of interlocutor of 23d February last, assoilzies the defenders from the conclusions of the summons, so far as directed against them at his instance, and decerns.”

The action was thereafter insisted in only at the instance of the pursuer Webster. At the date of this decision he had seven twelfths of the patent (of which one had recently been assigned to him), Detrick four-twelfths, and the proprietor of the other twelfth took no part in the proceedings. The circumstances out of which the action arose were thus stated by the Lord Ordinary in the opinion appended to his interlocutor of 18th July 1884, quoted infra—“The pursuer appears to have sold certain sewing machines to certain firms … Kinnear & Company, sack merchants, Dundee; J. F. White & Company, merchants, Dundee; The Cowgate Calendering Campany, Dundee; and others. The machines so sold to these people contained, among other things, a ‘thread barrel,’ which is claimed by Laing's Patent Overhead Hand-Stitching Company as having been patented by them. Accordingly that company take proceedings against those gentlemen as infringing their patent. The pursuer says he sold those instruments or machines to the company, or effected an agreement with them of this nature—‘The Laing's Patent Overhead Hand-Stitch Sewing Machine Company (Limited) agrees to pay to the proprietors of the Webster patent the sum of £5 sterling as royalty on each machine they make for working with notched needles, as patented by Mr Webster. The proprietors of the Webster patent agree to pay to the Laing's Patent Overhead Hand-Stitch Sewing Machine Company (Limited) the sum of £5 sterling as royalty on each machine they make, excepting those shipped to India, having a thread barrel; and it is acknowledged that what is described in the Laing patent as a ‘thread barrel’ is the same as in the Webster patent is described as a ‘cylindrical thread-controller and take-up.’ “The pursuer says that that company have no title to interfere with the sale of those machines. That dispute gave rise to the present action, which is an action to enforce that agreement.”

The defenders pleaded—(1) No title to sue.

On 18th July 1884 the Lord Ordinary ( Adam) sustained that plea-in-law and dismissed the action.

“ Opinion.—…. The action is met by the defenders with the plea that the pursuer has no title to insist in the action; and that plea was argued to me.… Now, it is obvious enough from the terms of the agreement that there had been a question as to the validity of the patents and the respective rights of those parties; and the agreement provides that, upon the lines of the Overhead Hand-Stitch Company paying to the proprietors of the Webster's patent a sum of £5 for each machine, they were to be entitled to make machines working with notched needles, which was evidently the subject of Webster's patent. On the other hand, the proprietors of Webster's patent agreed to pay to the defenders the same sum of £5 sterling as a royalty on each machine they made, excepting those shipped to India, having a thread barrel, and ‘for these considerations each party accords to the other liberty to make use of the respective parts above named.’ That being the agreement—which I have thought it necessary to enter into in some detail—the question is, whether Webster is entitled to insist in this action. It is an action, so far as I read it, in the conclusions and in the statements entirely directed to the enforcing of that agreement. It is not an action in any sense or in any way meant to put a stop to any infringement—apart from the agreement—of Webster's patent or any other patent. The question arises, what that agreement was? I am quite clear upon the construction of it that it was an agreement between the whole partners or proprietors of Webster's patent on the one hand, and the Overhead Hand-Stitch Company on the other part, and that it was not an agreement from which any one of the partners of the Overhead Hand-Stitch Company—which might, for anything I know, number twenty, thirty, or forty individuals

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—should be exempt; it was not the meaning of the agreement that any one of those should be entitled to manufacture machines using Webster's patent with the notched needles. The meaning of it was that the Overhead Hand-Stitch Sewing Machine Company was entitled to manufacture such machines on payment of a certain royalty. And on the other part, I am equally clear that no one of the proprietors of Webster's patent could manufacture and sell machines containing the defenders' patented thread barrel. That is the nature of the agreement, and it humbly appears to me that the one proprietor, as Webster now is, is not entitled to enforce his agreement as against the Overhead Hand-Stitch Sewing-Machine Company. It is clear to me that where there is a joint and not a several agreement of this sort, one of the several proprietors of that patent cannot insist for implement of that agreement. The action would have been perfectly good founded on the merits if the whole of the proprietors were parties to the action, which they are not, but in the circumstances of the case I think the defenders' first plea-in-law is well founded, and I am prepared to dismiss the action and find the defenders entitled to expenses.”

The pursuer reclaimed, and argued—The instance in this case comprehended eleven-twelfths of the patent. The proprietor of the other one—twelfth had advertised he would have nothing to do with the matter. The object of the agreement was merely to give vitality to the patent; the pursuers were really in the position of seeking to maintain a monopoly, and therefore the action was of the nature of an interdict— Johnstone v. Craufurd, July 3, 1855, 17 D. 1023; Laird v. Reid, 9 Macph. 699; Lawson v. Leith and Newcastle Steam, Packet Company, Nov. 26, 1850, 13 D. 175; Sheehan v. Great Eastern Railway Company, 1830, 16 Ch. Div. 59.

The defenders replied—The foundation of the action was breach of contract. One of several joint proprietors could not alone sue implement of an agreement which the whole joint proprietors had made— Miller v. Cathcart, March 16, 1861, 23 D. 743, Lord Meadowbank; Scotland v. Walkinshaw, Nov. 18, 1830, referred to by Lord Medwyn in 13 D. 179.

At advising—