The American Cotton Tie Supply Company v. Bullard.

is punched or cut through the centre of the plate, the two longer sides, M, I, and K, L, being equal in length to the width of the hoop of the size above mentioned. In the side A, D, is cut a slot, which is indicated on the diagram by the letters E, F, and G, H, the side G, H, of the slot being turned outward the eighth of an inch, to facilitate the insertion of the end of the hoop." The buckle is of this shape:

The hoop and buckle are arranged as follows in use:

The claim is as follows: "Forming a link or tie with an oblong aperture, one end of which is arrow shaped, or, rather, presents two sides of an equilateral triangle, the design of this arrow shaped end being not only to force the hoop, or bend of the hoop, over the slot, which it does with unerring precision when the bale expands, after being released from the press, but also to secure an equal bearing upon the separated parts of the slotted side of the tie."

A patent was granted to Frederick Cook, March 2d, 1858, for an "improvement in metallic ties for cotton bales." This

The American Cotton Tie Supply Company v. Bullard.

patent was extended for seven years from March 2d, 1872. As extended, it was assigned by Cook to James J. McComb, March 21st, 1872. In June, 1874, McComb assigned the Cook patent and the Brodie patent to a firm called “The American Cotton Tie Company." In March, 1876, that firm assigned those patents to "The American Cotton Tie Company, Limited," a corporation, and at the same time that corporation acquired the title to the McComb patent. From that corporation the title to the three patents passed to the plaintiff. Neither McComb, nor any of the subsequent owners of the patents, granted any licenses thereunder to make buckles or ties, but they retained to themselves the monopoly of manufacture, and made the ties and supplied the market with them, to an extent always equal to any demand. The tie mainly sold since March, 1872, by them, has been the "arrow tie" of the McComb patent. The bands have been cut to the length of eleven feet, bent over upon themselves once, and put up in bundles of thirty each, the buckles being strung upon one of the inner bands.

The defendants have used upon the cotton ties, which they have put up or sold, second-hand buckles, which they have bought from cotton mills and from junk dealers, and which were made and disposed of by the plaintiff, or its predecessors, under the Brodie and McComb patents. These buckles have had stamped upon them the words: "Licensed to use once only," and were formerly put upon the market by the plaintiff, or its predecessors, in the usual course of their business, with the following words printed on the bill-heads or invoices which went to the first transferee of the ties: "The cotton ties included in this invoice are licensed to be used once only, as baling ties, and are sold and purchased subject to this restriction," or the words: "Each bundle of cotton ties charged in this invoice consists of 30 bands. The buckles accompanying these bands are the property of The American Cotton Tie Supply Company, [or, American Cotton Tie Company, Limited,] and are licensed to be used once only, the company reserving the right, after such use, to recover possession of them

The American Cotton Tie Supply Company v. Bullard.

wherever found." The first of the above forms of bill-head was used during the years 1873, 1874 and 1875, and the other one during the years 1876 to 1879 inclusive, except that, for a portion of the latter four years, such bill-head used the words, "for one season," in lieu of the word "once."

In this country, cotton is usually sold without tare, that is, the purchaser pays a certain price per pound upon the aggregate weight of the bale, which is made up of the bagging, the ties (bands and buckles) and the material which they confine. In England, cotton is sold with tare, that is, the weight of the ties and bagging is deducted from the aggregate weight of the bale, and the purchaser pays so much per pound for the cotton, net weight, but takes the ties and the bagging with the cotton which they confine.

The ties which the defendants have sold embody the principles of construction which are found in the inventions covered by the 3d, 4th and 5th claims of the Brodie patent, and in the invention covered by the McComb patent. The defendants' ties, as sold, consist of bands eleven feet in length, put up in bundles, each band accompanied by a buckle. In regard to some of such ties, the buckles being second-hand buckles, the bands are entirely new. In regard to others, the buckles being second-hand buckles, the bands are not, as whole bands, the original bands, bought at second hand, but consist of pieces of such original bands pieced together to make the proper length.

The question presented for consideration is, whether, on the foregoing facts, the defendants may lawfully sell such ties, consisting of such bands and such buckles. This question has been before the Courts. In August, 1876, the American Cotton Tie Company, Limited, and others, brought a suit in equity, against one Chapman, in the Circuit Court of the United States for the District of Louisiana, on the Cook, the Brodie and the McComb patents. The defendant had procured second-hand buckles lawfully put into use on cotton bales, under said patents, and had put new bands with them, and sold the combination as ties. It appeared, in that case,

The American Cotton Tie Supply Company v. Bullard.

that, at the cotton presses at New Orleans, when the bales bound with the plaintiff's ties, consisting of the bands and buckles, were ready to be compressed, the bands and buckles were stripped off from the bales, and thrown on one side in a pile promiscuously with others, and that, when the bales were in the press, they were fastened together by the first ties that might be reached by the pressman out of the pile, no care being taken to use the same ties upon the bale, when compressed, which were so taken off from it. The facts, before mentioned, were before the Court, as to the sale of cotton in this country without tare, and as to the stamp on the buckles, and as to the contents of the original bill-heads. The buckle used by Chapman was that of the McComb patent. The case came before Judge Billings, the District Judge, on a motion for a preliminary injunction, and he granted the injunction, in November, 1876, after hearing counsel for both parties, and after the defendants' answer and a replication thereto were filed. The decision of the Court is embodied in the order for the injunction. It sets forth, that the Cook and the McComb patents secure the exclusive right to a cotton tie buckle having an open slot or slit, into which a flat iron band can be inserted sideways, known commonly as the open-slot buckle, and that the third and fourth claims of the Brodie patent secure the exclusive right to an open-slot buckle in combination with a flat band of iron, to be combined for and used as a tie for baling cotton or other compressible and elastic material; that the defendant had made and sold to be used a combination of a flat band of iron in combination with an open-slot buckle; that he had so combined and sold both the open-slot buckle in the exact similitude of the invention secured to the plaintiffs, as well as said open-slotted buckle combined with a flat band of iron, without any license, except such as was averred to have resulted from an alleged sale of said buckles by the American Cotton Tie Company, Limited, to other persons than the defendant, whereby it was insisted by the defendant that he acquired the right, by purchase from said third persons, to combine said buckles with flat bands of iron, and sell

The American Cotton Tie Supply Company v. Bullard.

the same; that the plaintiffs, in the protection of their rights, did not dispose of said buckles in full property, but with a condition that the same should only be used once for the purpose of baling cotton or other compressible material, and that the said condition was known to the defendant, it being stamped, in a permanent manner, on said buckles; that the contract by which said cotton ties and buckles were disposed of for use by the American Cotton Tie Company, Limited, contained the same condition and stipulation as was stamped on said buckles; that said license to use said open-slot buckles, and a combination of the same with a flat band of iron, as a cotton tie, had, on the terms on which it was granted by the American Cotton Tie Company, Limited, expired and been expended before the same came into the possession of the defendant; and that the sale of the open-slot cotton tie, known in the trade as the arrow tie, and the sale of the said open-slot buckles, in combination with a flat band of iron, to be used as a tie for baling cotton, or other compressible and elastic materials, was a substantial invasion and infringement of the right secured by said patents. It then proceeded to enjoin the defendant from using or selling for use any openslot cotton tie buckle of the kind commonly known as the arrow tie, described and secured by any of said patents, upon the pretence that the same had, at any former time, been sold by the American Cotton Tie Company, Limited, or its agents, and been once used for the purpose of baling cotton or other material before coming into the possession of the defendant, and from combining any such open-slot cotton tie buckles with a flat band of iron, to be used, or vended to others to be used, as a tie for baling cotton or other elastic or compressible material.

In January, 1877, the American Cotton Tie Company, Limited, and others, brought a suit in equity against Grover, Stubbs & Co., in the Circuit Court of the United States for the Southern District of Georgia, on the same three patents. The defendants set up that they had never made any ties, but had sold ties made by the American Cotton Tie Company,