Motion Picture Patents Co. v. Universal Film Manufacturing Co.

Mr. Justice Holmes,

dissenting.

I suppose that a patentee has no less property in his patented machine than any other owner, and that in addition to keeping the machine to himself the patent gives him the further right to forbid the rest of the world from making others like it. In short, for whatever motive, he may keep his device wholly out of use. Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 422. So much being undisputed, I cannot understand why he may not keep it out of use unless the licensee, or, for the matter of that, the buyer, will use some unpatented thing in connection with it. Generally speaking the measure of a condition is the consequence of a breach, and if that consequence is one that the owner may impose unconditionally, he may impose it conditionally upon a certain event. Ashley v. Ryan, 153 U. S. 436, 443. Lloyd v. Dollison, 194 U. S. 445, 449. Non debet, cui plus licet, quod minus est non licere. D. 50, 17, 21.

*520 No doubt this principle might be limited or. excluded in cases where the condition tends to bring about a state of things that there iá a predominant public interest to prevent. But there is no predominant public interest to prevent a patented tea pot or film feeder from being kept from the public, because, as I have said, the patentee may-keep them tied up at will while his patent lasts. .Neither is there any such interest to prevent the purchase of the tea or films, that is made the condition of the use of the machine. The supposed contravention of public interest sometimes is stated as an attempt to extend the patent law to unpatented articles, which of course it is not, and more accurately as a possible domination to be established by such means. But the domination is ■ One only to the extent of the desire for the tea pot or film feeder, and if the owner prefers to keep the pot or the feeder unless you will buy his tea or films, I cannot see in allowing him the right to do so anything more than an ordinary incident of ownership, or at most, a consequence of the Paper Bag Case, on which, as it seems to me, this case ought to turn. See Grant v. Raymond, 6 Pet. 218, 242.

Not only do I believe that the rule that I advocate is right under the Paper Bag' Case, but I think that it has become a rule of property that law and justice require to be retained. For fifteen years, at least since Bement v. National Harrow Co., 186 U. S. 70, 88-93, if not considerably earlier, 'the public has been encouraged by this court to believe that the law is as it was laid down in Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., 77 Fed. Rep. 288, 25 C. C. A. 267, and numerous other decisions of the lower courts. I believe that many and important transactions have taken place on the faith of those decisions, and that for that reason as well as for the first that I have given, the rule last announced in Henry v. Dick Co., 224 U. S. 1, should be maintained.

I will add for its bearing upon Straus v. Victor Talking *521 Machine Co., ante, 490, that a conditional sale retaining the title until a future event after delivery, has been decided to be lawful again and again by this court. Bailey v. Baker Ice Machine Co., 239 U. S. 268, 272. I confine myself to expressing my views upon the general and important questions upon which I have the misfortune to differ from the majority of the court. I leave on one side the question of the effect of the Clayton Act, as the court has done, and also what I might think if the Paper Bag Case were not upheld, or if the question were upon -the effect of a combination of patents such as to be contrary to the policy that I am bound to accept from the Congress of the United States.

Mr. Justice McKenna and Mr. Justice Van Devanter concur in this dissent.