Hastings v. Giles Lithographic Co. , 58 N.Y. Sup. Ct. 364 ( 1889 )

Brady, J.

It may be said in limine that the plaintiffs’ case would seem to rest substantially on the infringement of the copyright of the Hargreaves Manufacturing Company by the defendants, as admitted by them, before they had acquired any right from that company by an exclusive license. This would, in no legal view that can be presented, sustain an action like this, which depends for success upon two elements, falsity and malice. Steward v. Young, L. R. 5 C. P. 126; Kendall v. Stone, 5 N. Y. 14, 18: Hovey v. Pencil Co., 57 H. Y. 119; Manufacturing Co. v. Goodyear, 13 Blatchf. 375; Burnett v. Tak, 45 L. T. (N. S.) 743.

It seems to have been conceded on the trial that the defendants had what was claimed by them, namely, an exclusive license; and, assuming that to have been established by concession or proof, the first requisite is wanting in the plaintiffs’ case. The statement made by the defendants must therefore be assumed to be true, and what was done to protect the right secured by the license cannot be said to be malicious. Indeed, it was declared in Hovey v. Pencil Co., supra: “If the defendant, believing itself to have an exclusive patent, issued such a notice in good faith as a warning to dealers against an invasion of its rights, it in so doing would only have- discharged a moral obligation, and satisfied the demands of fair dealing. In such a case a mistake on its part as to the validity of its right would not have rendered it liable to an action. ” If the falsity of the statement were established, malice, it is true, might be inferred or pronounced upon facts and circumstances accompanying the act complained of. Here, however, one of the plaintiffs said, in one of the interviews which took place between him and Mr. Giles in relation to the subject of this action, that he never asked to see the exclusive license the defendants claimed to have secured from the Hargreaves Manufacturing Company for the production of the “Little Turk” and the “Alberta” cards for advertising purposes. He presumed, he said, they had some paper to that effect. There is no doubt they had, and that they believed in their ownership of a license. And they proceeded regularly to enforce their rights by the employment of competent counsel, who, after examination of the subject, wrote the letter detailed in the statement of facts, and advised the course pursued by the defendants. The manner in which they sought to protect themselves was cautious, and, under all the circumstances leading to it and distinguishing it, it could not per se create any other just impression than that they were doing what careful business men would do to protect their interests. Indeed, in Halsey v. Brotherhood, L. R. 15 Ch. Div. 514, affirmed L. R. 19 Ch. Div., 386, the right to give notices, the notice being bona fide, is recognized, and declared to be a duty to protect a patent. The rigorous maintenance of a right can never be construed as malicious. The defendants could resort to all the remedies known when their cause was just in a legal sense, and the plaintiffs can gain no right to indemnity in this action from the prior improper infringement by the defendants of the copyright under which they subsequently became licensees. Doubtless this would be a good defense in an action by the defendants for an infringement, (Rev. St. U. S. § 4962; Paper Bag Cases, 105 U. S. 766; Littlefield v. Perry, 21 Wall. 205;) but this is a very different controversy. The plaintiffs seek damages for slandering their title to the cards named as a commercial article, or their right to deal in them; and they have not shown their superior ownership of and right to use them, the falsity of the defendant’s claim to them, or malice in its assertion. The plaintiffs, indeed, must succeed on the strength of their own asserted title, and not on any infirmity of the defendants’ arising from kindred violations of the law of copyright. The result of this review is, therefore, that the court did not err in refusing to leave the question of malice to the jury. There was no falsity shown of which to predicate the right to that procedure, and the dismissal of the complaint was correct for the same reason, if no other existed. The exclusion of the evidence relating to damages, even if improper, could by no possibility prejudice the plaintiffs, inasmuch as the underlying weakness of their case was not removed, and left them powerless to maintain the action as we have seen. There does not seem to spring from the record any reason why the appellant should have a new trial, and the judgment must therefore be affirmed, with costs. All concur.