The opinion
WILSON, Circuit Judge
(dissenting).
Stating briefly my reasons for dissenting : The counterclaim is obviously in effect a bill for specific performance by enforcing affirmative covenants and enjoining negative covenants. It is agreed the affirmative covenants in paragraph 5 are too indefinite and uncertain to warrant a decree of specific performance. The negative covenants in paragraph 7 of the license agreements are also, I think, too indefinite and uncertain to be permanently enjoined for the reason that the licensee might never know when the shoes manufactured by it were so similar to those described in the license agreements that they would be calculated or would tend to impair the production and sale of boots and shoes covered by the license. The licensor might recover damages under this paragraph in an action at law, if he could show that the licensee’s boots or shoes did impair the sale of boots or shoes made according to its inventions and patents; but the licensee could not know when the products of its factories were so similar as to impair the sale of boots or shoes covered by the license.
Again, there does not appear to be a mutuality of rights or remedies. The licensee could not obtain an effective decree in equity of specific performance, as the licensor can terminate the agreements by a six months’ notice at the end of any annual period; but if the licensor has an equitable remedy, the licensee must resort to law to enforce its rights and recover damages for a breach. It has no remedy in equity. 58 C. J. 866, §§ 19, 20; Pomeroy’s Equity Juris., vol. V, §§ 2190, 2191; Electric M. & E. Corp. v. United P. & L. Corp. (C. C. A.) 19 F.(2d) 311, 313, 314 ; Miami Coca-Cola Bottling Co. v. Orange-Crush Co. (D. C.) 291 F. 102 , affirmed (C. C. A.) 296 F. 693 ; Hutchinson Gas & Fuel Co. v. Wichita Nat. Gas. Co. (C. C. A.) 267 F. 35, 39 . The case of Guffey v. Smith, 237 U. S. 101 , page 115, 35 S. Ct. 526 , 59 L. Ed. 856 , referred to in the opinion, was not a bill for specific performance.
There is nothing in the case to indicate that the plaintiff will not conform to the terms of the license agreements, if it fails in its law action. If' the defendant has good title to the inventions and patents which are the subject matter of the agreements, the plaintiff cannot recover the royalties paid, and would be liable in an action at law for the additional royalties still due under the agreements. If the licensee should continue to refuse to fulfill the provisions of the agreements, the licensor could then recover all future damages for a breach of the agreements to be determined by a jury.