King v. The New York Central & Hudson River Railroad Company. think not; especially where the article is not in its nature dangerous, and is placed in the possession of a person competent to manage and use it. This was substantially what was done by the defendant; and the fact that the right to use the derrick was given to Dillon by the contract, and that it was to be used in performing work for the defendant, and on its premises (assuming that the dock belonged to the defendant), does not, I think, change the liability. The plaintiff knew that Dillon had taken the contract for unloading the iron, and the cases which hold it to be the duty of a master to furnish safe and suitable machinery for the use of his servants have no application, because that relation did not exist between the plaintiff and defendant.

In Coughtry v. The Globe Woolen Company, 56 N. Y. 124; S. C., 15 Am. Rep. 387, the defendant caused a scaffold to be erected fifty feet from the ground to accommodate workmen who should be engaged in putting a cornice on the defendant's building, and made a contract with Osborne & Martin to put on the cornice, and the scaffold, owing to its defective construction, fell while the plaintiff's intestate, a workman employed by the contractors, was upon it, and he was killed. This court reversed the nonsuit granted at the Circuit. The court say: "The scaffold was upward of fifty feet from the ground, and unless properly constructed would be a most dangerous trap, imperiling the life of any person who might go upon it; that by placing it where they did, on their own premises, for the use of the workmen, they (the defendants) not only licensed, but invited them to go upon it, and impliedly held out to them that it was a safe structure, or at least that proper care had been used in its erection," and these facts, it was held, imposed a duty upon the defendants toward any person who should be invited to go upon the structure, to use proper care in its construction. See, also, Corby v. Hill, 4 C. B. (N. S.) 556; Chapman v. Rothwell, El., Bl. & El. 168; Hounsell v. Smyth, 7 C. B. (N. S.) 738.

In this case there was no holding out by the defendant to the plaintiff that the derrick was safe at the time of the accident, and no invitation on its part to the plaintiff to use it. The evidence tended to show that the contract between the defendant and Dillon contained some stipulation in respect to repairs of the derrick by the defendant. It is claimed by the plaintiff that the defendant agreed to keep it in repair, but the defendant's proof tended to show the agreement was that the defendant should make repairs

Marston v. Swett.

when notified by Dillon that repairs were necessary.

The court on

the trial ruled substantially two propositions: First. That it was the duty of the defendant, if there was no special agreement as to the inspection and keeping the derrick in order, to provide a suitable and proper derrick, and to keep it in order. Second. That if the agreement was that the defendant was to make repairs when notified by Dillon that repairs were needed, and no notice was given, yet the defendant was liable if this agreement was not known to the plaintiff, and the accident occurred from neglect to repair, and without any negligence on the part of the plaintiff. The defendant excepted to the charge that the defendant was bound, in the absence of a contract to do so, to keep the derrick in order, and also to the second proposition stated. Both exceptions were, I think, well taken. No duty, in the absence of a contract to repair, rested upon the defendant for the reasons before given, and if the plaintiff's right of action is founded upon negligence of a duty imposed by the contract between the defendant and Dillon to keep the derrick in repair, that duty did not arise if the contract was conditional until notice that repairs were needed was given.

The judgment should be reversed and a new trial ordered. All concur except CHURCH, C. J., not voting; ALLEN, J., not sitting. FOLGER, J., absent.

Judgment reversed.

MARSTON, appellant, v. SWETT.

(66 N. Y. 206.)

Consideration - When invalidity of patent no defense to claim for license fee.

Plaintiff, being joint owner with defendant of certain letters patent which both supposed to be valid, conveyed to the defendant the exclusive right to manufacture the patented articles, and defendant agreed to pay plaintiff a certain royalty therefor. Held, in an action for the royalty, that the invalidity of the patent was no defense for the time the defendant had actually enjoyed the patent under the license unmolested.

A

CTION to recover a sum of money alleged to be due from defendant to plaintiff as royalty for the use of a patent

right.

Marston v Swett.

The complainant in this action alleged, in substance, that prior to October 1, 1869, plaintiff and defendants were joint owners of a patented invention known as "Hawk's Auxiliary Air Chamber for stoves, heaters and furnaces," and on that day it was agreed between them that in consideration that plaintiff would not license others to use said invention, but give defendants the exclusive right, they would manufacture stoves with the invention attached and pay plaintiff fifty cents for each stove, heater or furnace so manufactured and sold by them, and plaintiff claimed to recover the license fees due up to January, 1872.

Defendants' answer set up substantially the same agreement, with the exception that it was alleged that the agreement to pay was upon the express condition that plaintiff should execute and deliver to the defendants an instrument in writing wherein such exclusive right to such invention should be given and granted to these defendants," and it was averred that plaintiff had refused and neglected to comply with this condition. The answer further alleged that the patent was illegal and void, and therefore there was no consideration for the agreement. It also set up a counterclaim for goods sold, etc., to the amount of $1,208.49.

Before the introduction of evidence upon the trial defendants' counsel moved to dismiss the complaint upon the grounds that the contract alleged in the complaint was without consideration, and that the contract was void within the statute of frauds, as it was not to be performed within a year, and as it was not alleged in complaint to be in writing, which motion was denied, and defendants' counsel excepted.

Upon the trial defendants offered in evidence a decree in an action brought by defendants against plaintiff and others in the United States Circuit Court for the Northern District of New York, declaring the said letters patent were "void, invalid and of no effect." This was objected to, on the ground that said judgment was not set up in the answer. The objection was overruled, and plaintiff's counsel excepted.

The court refused permission to the plaintiff to go to the jury upon the facts, and directed a verdict in favor of defendants for the amount of the counter-claim, to which plaintiff's counsel duly excepted. A verdict was rendered accordingly.

James Lansing, for appellant. It was not necessary that the

eut.

Marston v. Swett.

complaint should allege affirmatively that the contract was in writing. Livingston v. Smith, 14 How. 490. The agreement having been admitted by a failure to deny, no evidence to prove its existence was necessary. West v. Am. Ex. Bk., 44 Barb. 175. The invalidity of a patent is no defense to an action like the presTaylor v. Hare, 1 N. R. 260; Lawes v. Purser, 88 E. C. L. 930; Hall v. Conder, 89 id. 20, 39, 40; Smith v. Neale, id. 66; Noton v. Brooks, 7 II. & N. 499; Baird v. Neilson, 8 Cl. & F. 726; Crossley v. Dixon, 10 H. of L. Cas. 293; Kintrea v. Perston, 1 H. & N. 357; Thomas v. Bartow, 48 N. Y. 193; Otis v. Cullum, 2 N. Y. W. Dig. 58; Longridge v. Dorville, 7 E. C. L. 43; Haigh v. Brooks, 3 id. 108; Kinsman v. Parkhurst, 18 How. (U. S.) 289; Bartlett v. Holbrook, 1 Gray, 114; McMahon v. Tyng, 14 Allen. 167; Marsh V. Dodge, 4 Hun, 278.

Esek Cowen, for respondents. The answer substantially denied that the contract set forth in the complaint was in writing. Champlin v. Parish, 11 Paige, 405; Harris v. Knickerbacker, 5 Wend. 638. The contract not being in writing was void within the statute of frauds. Doyle v. Dixon, 97 Mass. 208; Lockwood v. Barnes, 3 Hill, 128; Bartlett v. Wheeler, 44 Barb. 162; Gayler v. Wilder, 10 How. (U. S.) 477; Potter v. Holland, 4 Blatchf. 206; Gibson v. Cook, 2 id. 144. Defendants' promise to pay royalties, being without consideration, cannot be enforced. Cross v. Huntly, 13 Wend. 385; Head v. Stevens, 19 id. 411; McDougall v. Fogg, 2 Bosw. 387; Saxton v. Dodge, 57 Barb. 84, 114: Dickinson v. Hall, 14 Pick. 217; Earl v. Page, 6 N. H. 477; Davis v. Bell, 8 id. 500; Dunbar v. Marden, 13 id. 311; Greiger v. Cook, 3 W. & S. 270; Darst v. Brockway, 11 Ohio, 462; Fallis v. Griffith, Wright, 303; Mulliken v. Latchem, 7 Blackf. 138; McClure v. Jeffrey, 8 Ind. 79; Clum v. Brewer, 2 Curtis, 524.

EARL, J. [After deciding a question of pleading.] It is claimed by the defendants that the agreement is void for want of a consideration, in that the patent was invalid. This defense is very imperfectly set up in the answer, but the pleader evidently intended to set it up, and, therefore, we will assume that it is sufficiently pleaded. It is sufficiently established by the judgment in the United States Circuit Court, in an action in which these defendants were plaintiffs, and this plaintiff and others defendants. That judgment established the fact that this patent was wholly void, in

1

Marston v. Swett.

valid and of no effect, for the reason Elizabeth Hawks, the patentee, was not the original and first inventor of the improvement patented. That judgment was not set up in the answer, but the invalidity of the patent was alleged, and the judgment was, therefore, properly received in evidence to prove the allegation, assuming that the allegation itself was material. Bouchard v. Dias, 3

Den. 238; Castle v. Noyes, 14 N. Y. 329; Rinchey v. Stryker, 28 id. 45. The judgment in such a case is received in evidence, not as a bar of itself to a discovery, but as proof to establish a material fact in controversy. The invalidity of the patent being thus established the further material point to be considered is, whether that furnished a defense to this action. I am of opinion that, upon the facts of this case, it did not.

The plaintiff and defendants were tenants in common of the patent, all believing it to be valid. Each had the right to manufacture and to license others to manufacture under it. Blum v. Brewer, 2 Curtis, 506. The defendants desired the exclusive right to use the invention, and hence made this agreement with the plaintiff. Under it, they actually enjoyed the exclusive right which they sought, and the plaintiff gave up all right to manufacture or to license others to manufacture. There was no fraud, and the defendants got all they bargained for. During the time mentioned in the complaint, they enjoyed all they could have had if the patent had been valid. Under such circumstances, there was abundant consideration to uphold the agreement, whether the patent was valid or invalid.

The parties held a patent, which was respected as valid by everybody. They enjoyed a monopoly of the invention. They could manufacture the patented article without competition; and the possession of the patent, apparently valid, enabled them to license. others, for a consideration, to use it. In consideration of defendants' promise, the plaintiff gave up all the advantage he thus had, and the defendants, by virtue of the agreement, enjoyed the exclusive monopoly. Here there was injury to one party, and benefit to the other, either of which is sufficient to furnish a consideration for a promise. Miller v. Drake, 1 Cai. 45; Converse v. Kellogg, 7 Barb. 590; Freeman v. Freeman, 43 N. Y. 34. Suppose there had been no patent whatever, and the defendants had promised the plaintiff to pay him fifty cents upon every stove which they manufactured, in consideration that he would not, during a given period,