Murray v Clayton
| Jurisdiction | England & Wales |
| Date | 1865 |
| Year | 1865 |
| Court | Equity |
Patent - Injunction - Discovery - Names and Addresses of Purchasers - Names and Addresses of Agents.
A patentee of improvements in brick-cutting machines, who was a manufacturer of the machines by an agent at the agent's works and not a licenser, having obtained a perpetual injunction against Defendants, who were also manufacturers of brick-cutting machines, from infringement, the Defendants were ordered to file an affidavit stating the number of machines made by them since the date of the patent, and the names and addresses of the persons to whom the same had been sold, and of the agents concerned in the transactions. Upon motion to vary the order:—
Held, that the Plaintiff was entitled to have discovery of the names and addresses of the purchasers, but not of the agents concerned, there being nothing to shew that any agents had been employed.
ADJOURNED SUMMONS.
This was a summons on behalf of the Defendants to vary an order of the Court.
By an order of the Lords Justices, dated the 6th of May, 1872, a perpetual injunction was granted to restrain the Defendants from infringing the Plaintiff's patent, which was for improvements in the construction of brick-cutting machines, with an inquiry as to damages; see the reportF1.
By an order made in Chambers in this branch of the Court, dated the 16th of July, 1872, the Defendants were ordered, on the Plaintiff's application, to file an affidavit stating the number of brick-cutting machines made by them since the 8th of June, 1866, the date of the patent, “and the names and addresses of the persons to whom the same respectively have been sold, or for whom the same have been purchased, and the names of the agents concerned in the transactions.”
The Defendants made an affidavit stating the number of machines made by them since the 8th of June, 1866, but not stating the names and addresses of the purchasers, and afterwards took out the present summons to vary the order of the 16th of July, 1862, by striking out the words in inverted commas above.
The situation of the Plaintiff was this: He employed an agent to manufacture and sell brick-making machinery fitted with his patent, but the manufacture was carried on in workshops which were the property of the agent; and the Plaintiff did not issue licenses.
A summons on behalf of the Plaintiff, questioning the sufficiency of the affidavit, was set down to be heard at the same time. The Defendants opened their summons first, and in so doing said they were willing to let the order of the 16th of July, 1862, stand, on the undertaking of the Plaintiff that he would not take proceedings against any of the purchasers whose names might be thereby disclosed; but the Plaintiff declined.
Mr. Fooks, Q.C., Mr. Aston, Q.C., and Mr. E. Carpmael, for the Defendants:—
The order, so far as it is directed to the names and addresses of the purchasers, is excessive.
A patentee, who is not a manufacturer of the machines fitted with his invention, having obtained a decree for damages against an infringing manufacturer, by reason of use or vending of the invention, cannot claim from the Defendant, by way of damages, a manufacturing profit: Penn v. JackF2. We contend that the Plaintiff is a person who is not a manufacturer within the meaning of the above rule, and that, not being entitled to a manufacturing profit by way of damages, he cannot insist upon having the names and addresses of purchasers.
The principles on which this Court proceeds when an interim injunction is applied for pending an action are explained in Bridson v. MacalpineF3.
In an action for infringement, the account at common law, under the 42nd section of the 15 & 16 Vict. c. 83, extends to the profits actually made by the Defendant only, not to the loss of the Plaintiff: Elwood v. ChristyF4; and if the Plaintiff be the assignee of a patent, the account will be directed only from the date of the assignmentF5.
Mr. Higgins, Q.C., and Mr. Melville, for the Plaintiff:—
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