#### William W. Burns *v.*The United States.

*On the Proofs.*

*An officer of the army, and patentee of what is known as the Sibley tent, contracts with the government, through the Secretary of War, for the use of the patent-right on the payment of a royalty, anil until notice shall be given by the patentee. The patentee transfers to the claimant, another officer of the army, the one moiety to be paid under the contract. The patentee joins in the rebellion, whereupon ' the government pays the half of the stipulated royalty to the claimant and continues to use the invention. Subsequently the Secretary of War orders no further payments to be made to the claimant, under No.*1002 *of the Army Regulations, ichich provides that*“ *No officer or agent in the military service shall purchase from any other officer in the military service, or make any contract with any such person, to furnish supplies or services, or make any purchase or contract in ichich such person shall be admitted to any share or part, or to any benefit to arise therefrom."*

I. The Secretary of "War is a civil officer, and, therefore, a contract made with him by an officer of the army is not within the terms of the Army Regulation No. 1002 forbidding contracts to be made by ‘ ‘ an officer or agent in the military service with any other person in the military service.”

II. Where a contract between a patentee and the government for the use of an invention provides that it may be determined by notice from the patentee, the government can determine it only by discontinuing the use of the invention. Therefore, the refusal to pay the royalty according to contract, and continuing to use the invention, does not determine the contract to pay for its use.

III. The Court of Claims has jurisdiction of a suit brought on a special contract with a patentee for the use of his invention by the government at a price agreed upon. The difference between this ease and *Pitcher’s Case*(1 C. Cls. R., p. 7) stated.

IV. Where a patentee conveys to another an interest in the royalty agreed to be paid by the government tor the use of a patent-right, .and then engages m the rebellion, and the government treats the interests of the parties as severed *11417 paying to the loyal one his shave of the royalty and continues to use the invention, the loyal partner may maintain his several action for an unpaid balance of his share of the royalty. The *Act 3cl March,*1863, (12 Stat. L., p. 765, $ 12,) bars a disloyal partner of his action, but does not affect by implication the rights of a loyal one. It therefore necessarily severs their joint claims.

*Mr. G. F. Peck,, fov*tbe claimant:

I. Tbe claimant is an officer in tbe regular army, and late a brigadier general of volunteers.

On tbe 22d of April, 1856, letters patent were issued by tbe United States to Major Henry H. Sibley, tbén an officer of tbe regular army, for tbe invention of a conical tent, since known as tbe Sibley tent.

On tbe 16th of April, Sibley assigned to Major Burns one-balf of bis interest in said invention and letters patent.

An agreement was entered into by tbe government with tbe agent of tbe owners for tbe use of tbe said'invention, tbe United States contracting to pay $5 for each and every tent made by tbe government or for its use.

This contract was made by direction of tbe Secretary of War, and when made was approved by bim; and tbe Sibley tent was adopted as tbe regulation-tent for tbe army.

Shortly after tbe rebel hostilities commenced, Sibley, tbe original patentee, joined tbe rank's of tbe enemy, whereupon Major Burns, supposing that tbe half-interest of Sibley bad been forfeited to bis use, preferred a claim for tbe payment to bim of tbe whole royalty.

On tbe 27th of April, A. D. 1861, Quartermaster General Meigs issued an order, in reply to this application, denying Burns’s claim to tbe whole of tbe royalty, and directing tbe quartermaster at Philadelphia to pay to bim $2 50 on each tent made by tbe government or contractors for tbe government, and to withhold tbe other half due to Sibley, on tbe ground that by bis defection all bis right and title thereto reverted to tbe government.

Payment of one-balf of said royalty was duly made by tbe government to Major Burns, under tbe order of General Meigs, from April, 1861, to nearly tbe close of that year.

On tbe 26th of October, 1861, General Meigs called tbe attention of Mr. Cameron, who was then Secretary of War, to *115article 1002 of tbe Army Regulations, in connection witli the moiety of the royalty allowed to the assignee of the patentee of the Sibley tent, and explained how a royalty of $5 came to be granted to Major Sibley, and how Major Burns came to be admitted to an equal share therein.

■ Regulation 1002 is as follows:

“ No. 1002. — No officer or agent in the military service shall purchase from any other person in the military service, or make any contract with any such person to furnish supplies ox-services, or make any purchase or contract in which such person shall be admitted to any share or part, or to any benefits to arise therefrom.”

Secretary Cameron returned to General Meigs his letter on the 27th of December, 1861, xvith the endorsement, “No • further payment will be made to Major W. W. Burns on account of royalty on the Sibley tent.”

We xvill first consider the objections based upon § 1002 of the Army Regulations.

The undisputed facts must be that Sibley and Burns, who were both officers of the army, held the exclusive right to use, vend, and manufacture the Sibley tent. Second, that the interests of the army, the entire available force of which was then' about to engage in a distant expedition, demanded the use of the tent.

The Regulations are a law to the officers of the army, controlling them in the performance of their duties, but, as they are promulgated by the Secretary of War and the President, they are subject to their revision, control, and explanation. The acts of the Secretary of War xvere those of the President. *('Wilcox*v. Jctokson, 13 Peters, 498; *United, States*v. *JSliason,*16 Peters, 291.)

We deny, however, that article 1002 has any application to this case. The article is to be construed with reference to the mischiefs it was intended to obviate. These were the faxunlng of officers by each other, and it is presupposed that there is a choice of parties xvith whom a contract could be made.

It might also be an answer to this objection to say that this contract xvas made xvith the Secretary of War, who is not an officer of the army, and therefore does not come within the letter or the spirit of the prohibition.

II. There having been a contract with the claimant which *116was valid and binding upon the United States, we are next to consider whether it was ever annulled by competent authority.

The only evidence upon this point is the action of Secretary Cameron on the 27th of December, 1861, when he endorsed the following upon the letter of G-enerai Meigs: “No further payments will be made to Major W. W. Burns on account of ‘royalty* on the Sibley tent.”

A rescission of the contract included something more than merely stopping further payments. It required the government to relinquish the advantages it was deriving under the contract.

This court will never believe that the Secretary of War intended to annul this contract, by which alone he could lawfully obtain the use of the Sibley tent, if he, at the same time, continued to use the patent and manufacture tents under it, unless his language is incapable of any other construction.

The undisputed facts are, as shown by the return of the department, that the government continued to use and manufacture the Sibley tent more than ever; that so far from considering its right to the use of this patent surrendered, it procured 40,000 of the tents after the order had been issued.

In conclusion, we insist that whether the contract was abrogated or not by Secretary Cameron’s order, the government is bound to pay for the -use of the patent, and that the claimant, has a right of action in this court to recover the value of that right.

We rest this upon the following propositions:

1st. That a patent is property of the kind denominated incorporeal personalty.

2d. That although an intrusion upon this class of property is generally regarded as a trespass, and is punished with peculiar statutory penalties, yet it has all of the incidents of other prop-perty, and is regarded and protected as such by the courts irrespective of those penalties; and that the appropriation of a patent-right raises an implied obligation upon the part of the infringer to account to the patentee for the value or benefits of the invention. ■

3d. That the amount of royalty which the infringer or other parties have agreed to pay the patentee is a proper rule for the estimation of such benefits.

*1174tli. That property in the nature of a grant or franchise, called incorporeal personalty, is subject to the right of eminent domain; that such property has often been taken by the state under this right; and the courts have held that it falls within that clause of the Constitution which requires just compensa-sation to be made to the owner, and therefore an agreement to pay for it is implied.

5th. That when an implied obligation has arisen on the part of the government towards an individual, this court has jurisdiction.

The *Assistant Attorney*General, for the defendants:

I. This contract was illegal, and not binding upon the United States. The regulations for the government of the army prohibited it.

The contract upon which the claimant relies was made with the Quartermaster General, “ *an officer in the military service,"*and it was made with a person then in the same service. It was, therefore, within the prohibitions of the regulation.

II. If, however, the court should sustain this contract and hold that the United States are concluded by it, then it will be contended that it might be rightfully terminated by the United States at any time when it should see proper. It was by its terms indefinite, so far as the time for its continuance was concerned. It bound the United States neither to use nor pay for the claimant’s invention for any definite length- of time.

III. The United States are not liable in this proceeding upon an implied contract.

In order to render the United States liable upon an implied contract for the taking of private property for public use, under the Constitution it is essential to prove:

1. That there was an exclusive appropriation of the claimant’s property to the use of the United States.

2. That there was an urgent necessity for such appropriation.

IV. If the coiu’t shall sustain the objection urged against the legality of the special contract, upon which the claimant relies, and put the claimant upon proof of his implied contract, then it will be objected:

*That this court has not jurisdiction of any action resulting from the unauthorized use l>y the United States of the patented invention of the claimant.*

*118The imauthorized use of the claimant’s patent was an infringement. *(Broolcs*v. *Biolcnell,*3 McLean, 262.) By the common law, the remedy for such infringement was by an *action on the case.*

In the case of *Pitcher*v. *The United States,*(1 O. Cls. B., p. 7,) the court holds: That this court has not jurisdiction of an action for the infringement of a patent.

V. The claimant cannot, in his own name and right, maintain an action for the unauthorized use of his invention. The suit should be instituted in the name of the joint owners of the patented invention.

In *Tyler*v. *Tuel*(6 Cranch, 327) the court held that the assignee of a part of a patent-right could not maintain an action for a violation of it.

In *Suyckm*v. *Bay*(2 Blatchford, 23) it was held that an •exclusive right of action exists in favor of an assignee only in two cases, namely, where, he acquires by assignment the whole interest in the patent, or a grant or conveyance of the whole interest within some particular district or territory. (See also upon this question *Broolcs*v. *Bicknell, 3*McLean, *250; Wash-burn*v. *Gould,*3 Story, 131,167.)

It is submitted, in conclusion:

1. That no action can be maintained upon the special contract entered into between the Quartermaster General and the claimant on the 22d of August, 1861, because such contract was illegal.

2. That no action in favor of the claimant can be maintained, as upon an implied contract, for the *use*of the claimant’s invention, because there was no such taking of the claimant’s property as requires compensation to be made therefor.

3. That the court has not jurisdiction of the case made for the infringement of the claimant’s invention by reason of its unauthorized use by the United States.

4. That no action can 'be maintained by the claimant, because it appears from the record that another person is equally interested with the claimant in his invention.

LoriNG-, J.,

delivered the opinion of the court:

The petitioner claims against the United States the amount due on a contract authorizing them to make and use the Sibley tent.

*119And tlie. court find tbe facts to be—

1st. On tbe 22d of April, 1856, letters patent were issued to H. H. Sibley for an improved conical tent, since known as tbe Sibley tent.

2d. On tbe Otb of February, 1858, General Charles Thomas, assistant quartermaster general, at Philadelphia, in a letter addressed to W. E. Jones, esq., agent for the Sibley patent tent, said as follows:'

“Sis: I have received information from the Quartermaster General that the Sibley tent may be adopted into the service provided a satisfactory arrangement can be made for the use of the patent, or for the tent, at a reasonable rate.”

And after stating what he thinks to be for the interest of the parties, he thus proceeds:

> “ Under this view of the case, I have to propose that the department pay you the sum of $5 for each tent made for the use of the army, the number not less than 200 annually, as long as this agreement may be confirmed by the War Department. I will be pleased to receive a reply to this proposition. Should it be accepted, I shall at once stop making any more of the common tents at present in use, until my proposition shall have received the sanction or disapproval of the War Department.

> *UI*think I may state with safety that it will be approved} and should it be, you will be in receipt of thousands of dollars without care or trouble, where you are now of hundreds.”

To this letter Mr. Jones replied as follows:

> “ Philadelphia, *February*6,1858.

> “Sm: In' reply to your letter of this date I would respectfully state that in my opinion the amount you offer ($5 per tent) is not the worth of the right to make the Sibley tent.

> “ I have already made an arrangement with General Jesup by which he pays me $10 per tent, making 50 of them, nor do I believe I have charged him more than the right is worth. I am ready to make a permanent arrangement at this rate, but as you express a belief that the manufacture would be commenced at once, at the rate of $5,1 am willing to enter into a temporary arrangement of that nature; in other words, after the completion of the Sibley tents now being made, you are authorized to make as many of the Sibley tents as the government may require,. by paying me $5 for each tent, and this arrange*120ment bolds good until, the 1st of January, 1859, and longer unless notified to tbe contrary by me.

> “"Very respectfully, your obedient servant,

> “W. E. JONES.

> “ Col. Charles Thomas,

> *“Deputy Quartermaster*General, *TJ. S. Army.”*

3d. On-the 18th day of February, 1858, the terms proposed in the letter of Mr. Jones, above quoted, were approved by the Secretary of War, and, according thereto, a contract was made between the United States and W. E. Jones, as the agent of the Sibley tent patent, by which the United States were authorized to make.and procure as many of the Sibley tents as the government might require by paying $5 for each tent, and this arrangement was to hold good until the 1st of January, 1859, and longer, unless the United States were notified to the contrary. And the Sibley tent was adopted as one of the tents for the army, by the Army Begulations.

4th. And on the 16th day of April, 1858, the following agreement was made between the said Sibley and the petitioner:

> *“*This agreement, made this 6th day of April, 1858, between Major H. H. Sibley, United States army, captain 2d dragoons, of the first part, and Lieutenant William W. Burns, 5th Infantry, United States army, of the second part, wituesseth :

> “That said Henry H. Sibley, in consideration of the covenants on the part of the party of the second part, hereinafter contained, doth covenant and agree to and with the said William W. Burns that he, Henry H. Sibley, has assigned and set over, and does hereby assign and set over, unto the said William W. Burns *the one-half interest*in all the benefits and net profits arising from and belonging to the invention of a certain improved conical tent, known as the *1*Sibley tent/ from and after the 22d day of February, 1856, forever,* and he, the said Henry H. Sibley, will in this partnership do all in his power consistent with his well-being and other interests to advance and promote the interests of the concern. And the said William W. Burns, in consideration of the covenants on the part of the party of the first part, doth covenant and agree to and with the said Henry H. Sibley, that he, the said William W. Burns, has assigned and set over, and does hereby assign and set over, his services, efforts, and labors during the months of December, *121January, February, March, and April, 1855 or 1856, in perfecting the drawings and descriptions of said tent, in superintending the manufacture of two model tents and 21 others, making-such improvements and modification as the nature of the material and other circumstances suggested, so as to give the invention a reputation for durability, utility, and cheapness, and thereby the approbation and notoriety it deserved. And he will in this partnership do all in his power, consistent with his well-being- and other interests, to advance and promote the interests of the concern, considering himself the working member in attending to all the active operations either in the manufacture or sale of the tent. This not being intended, of course, to exclude or exempt the party of the first part from having a general control and direction of all important transactions connected therewith.

> “ In witness whereof, we have hereunto set our hands and seals, this 16th day of April, 1858.

> “ II. H. SIBLEY, [L. s.] ,

> *ilOa/pt. and JBvt. Maj. 2d Dragoons.*

> “WM. W. BURNS,

> *“First Lb 5th Inf ambry?*

5th. Soon after hostilities commenced between the United States and the confederates, Major Sibley resigned his commission in the army of the United States and joined the confederates. Major Burns remained true to his allegiance and served in the army of the Union.

6th. On the 22d day of August, 1861, General Meigs, Quartermaster General, instructed General Thomas, assistant quartermaster general at Philadelphia, under whose directions Sib-ley tents were made and contracted for for the United States, as follows:

> “Quartermaster General’s Oeeice,

> *“*Washington, *D. 0., August*22,1861.

> “ Colonel: The case of the claim of Captain W. W. Burns to the 1royalty of the Sibley tent ’ having been examined by this department, it is considered that Captain Burns is entitled to one-half of the royalty, as originally fixed between the government and Major Sibley, the inventor. It is accordingly directed that you pay to Captain, (now Major) W. W. Burns, United Stares Army, or to his accredited agent, the sum of $2 50 on *122each and every tent of that peculiar description manufactured by the government, whether at its own establishment or through the agency of contractors — of course all contracts to be made with this understanding. The other half of the original royalty, formerly paid to Major H. H. Sibley, United States army, will for the future be withheld, as well as all that may be due him, for in consequence of the defection of that officer it is considered that all his right and title thereto reverts to the government.

> “M. 0. MEIGS,

> *u Quartermaster General.*

> “Col. Chas. Thomas,

> *uAssistant Quartermaster General, Philadelphia?*

7th. And on the 23d day of August, 1861, Quartermaster General Meigs, by the following order addressed, to Colonel Vinton, at New York, under whose direction Sibley tents were then made and contracted for for the United States, instructed him as follows:

> “ QUARTERMASTER GENERAL’S OEEICE,

> “ Washington, *B. G., August*23,1861.

> The royalty will depend on the terms of the contract.

> No man has a right to make a patented article without permission of patentee.

> “No man can sell one without permission. None can use one without permission.

> “Colonel Thomas can inform you of the state of this matter. He has been in the habit of paying the royalty, but he has made the tents. The royalty has been $5 per tent, of which, since the defection of the patentee, only $2 50 have been paid, and that to Captain Burns, who is half owner of the patent.

> I am, respectfully,

> “M. C. MEIGS,

> “ *Quartermaster General.*

> “ Col. *D.*H. Vinton,

> *“Deputy Quartermaster General, New Yorlc?*

8th. Ou the 26th of October, 1861, Quartermaster General Meigs submitted to the Secretary of War the following communication :

> “Quartermaster General’s Oeeioe,

> “ *Washington, October*26, 1861.

> “ Sir : I have the honor to call the attention of the honorable *123Secretary of War to paragraph 1002 Revised Regulations of the Army, 1861, and in connection therewith the matter of the ‘royalty’ allowed to Major W. W. Burns, of the commissary department, United States army, on the ‘ Sibley tent.’

> “ The records of this office show that in February of 1858 an arrangement was entered into by Colonel Charles Thomas, assistant quartermaster general, and Mr. W. E. Jones, agent of Sibley, the patentee of the ‘ Sibley tent,’ and approved by the then Secretary of War, that for the use of said patent the government was to pay $5 on each tent manufactured by the government.

> “It is also shown that Major W. W. Burns, United States army, was admitted to an equal share in the profits thus arising from the manufacture of these tents.

> “ The inventor, Major H. H. Sibley, resigned his commission about the beginning of our present troubles, leaving Major W. W. Burns the only loyal citizen invested with the right of this ‘royalty.’

> “ This department, acting under the decision of the predecessor of the honorable Secretary of War, has thus far allowed Major Burns $2 50 ‘ royalty.’

> “ For convenient consultation paragraph 1002 is copied. See below. ■

> “ M. C. MEIGS,

> *“Quartermaster General.*

> “Hon. SIMON Cameron,

> *“Secretary of War.*

> “‘1002. No officer or agent in the military service shall purchase from any other person in the military service, or make any contract with any such person to furnish supplies or services, or make any pinchase or contract in which such person shall be admitted to any share or part, or to any benefit to arise therefrom.’ ”

> “Upon this communication Secretary Cameron indorsed as follows:

> “ ‘ No further payments will be made to Major W. W. Burns on account of “ royalty” on the “ Sibley tent.”

> “‘SIMON CAMERON,

> “ *‘Secretary of War.*

> “ ‘ War Department, *December*26,1861.’”

*1249th. This order was communicated to officers of the War Department as above shown, and was not communicated to the petitioner or the patentee, Major Sibley; and from its date no payments on account of the royalty were made, and the last payment on account of the royalty shown to be made was on September 3,1861, and was of $515, paid to the petitioner, W. ■ W. Biums, for his moiety of the royalty ($2 50) on 206 tents.

10th. After 22d of February, 1856, (the date to which the title of the petitioner in the royalty relates by the terms of the contract made between him and Major Sibley,) the United States made the Sibley tents at their arsenals and caused them to be made by contracts with individuals, 'and the whole number thus procured was. 47,541

Of these the United States, prior to December 26,1861, paid the royalty on. 3,849

Leaving unpaid, and on which one-half of the rojmlty is claimed here.1. 43, 692

Of these the United States made, prior to December 26, 1861.-.. M ^

After December 26,1861. —3 bO

The United States contracted for, prior to December ‘26,1861 .•..;. 38,158

After December 26, 1861.. 588

11th. Of the tents contracted for, 1,600 tents were contracted by Colonel Vinton, on behalf of the United States, with the written stipulation between him and the contractor that the United States retain $2 50 out of the price of each tent, to be paid by the United States to Major Burns in behalf of the royalty thereon. And 10,299 tents were contracted for by Colonel Vinton with the specification and description following, viz: “ 18 feet diameter, 13 feet high, with pole, iron .tripod, and chains complete, (without royalty.”) And 3,195 tents were contracted for by Colonel Vinton, orally, with the understanding between him and the contractors that they were to pay or be responsible for the royalty on the tents furnished by them respectively; and the royalty on the said 3,195 tents is not included in the judgment hereinafter rendered, because *125as to tliese the majority of judges concurring in the judgment differ as to the defendants’ liability.

*Conclusion of fact.*

And on these facts a majority of the court are of opinion that the United States are indebted to the petitioner for one-half of the royalty of $5 on each of 40,497 tents.

*Opinion.*

It was contended, on the part of the United States, that the contract between them and Major Sibley was void by the army regulation No. 1002, which forbids contracts made by “an officer or agent in the military service” “with any other person in the military service.” But this contract was made by the Secretary of War, and he is a civil officer, and all his duties are civil duties, and he is not within the terms or purview of the army regulation referred to.

It- was also contended, on the part of the United States, that the contract between them and Major Sibley was determined by the order of Secretary Cameron of December 26th, 1861, that no further payments on account of the royalty should be made to Major Burns, and that consequently his claim was limited to the number of tents made and procured before December 26,1861.

But the contract provided how it might be determined, viz : by notice given to the United States by the patentee. This placed the duration of the contract within his control; while the United States might at any time determine their liability by ceasing to make the tents. And this was all the contract provided for.

And Ave think it is not shown that either party sought to determine the contract. It is certain the United States needed the tents they procured, and Major Burns desired the royalty on them. It Avas argued, on behalf of the United States, that the contract Avas determined on the part of the United States by the order of Secretary Cameron to the officers of his departments stopping the payment to Major Burns. But the Secretary’s language does not reach to that; and his action is inconsistent with any such purpose; for he continued to make and procure the tents, and this he could not do, legally or honestly, *126except under tbe contract, because of tbe patent. And it is not to be presumed that be intended to violate tbe law and disregard tbe rights secured by tbe patent, and it is certain that be could not commit tbe United States to any sucb wrongful procedure. And we tbink tbe legal presumption is, that tbe Secretary intended to act according to law and within bis official power; and our inference from bis language and acts is that be intended to secure tbe tents tbe service needed, and leave tbe rights of tbe parties to be determined by tbe judicial tribunals, to whom tbe question belonged; and that be stopped tbe payments on tbe contract to make tbe action of bis department safe to tbeUnited States at all events.

And we tbink that if, in tbe absence of evidence, it could be assumed that the facts that tbe Secretary bad given this order to tbe officers of bis department, and also continued to make tbe tents, bad come to tbe knowledge of Major Bums, it would have been notice to him of nothing more than we have inferred.

It was also contended, on behalf of tbe United States, that this court bad no jurisdiction of this case, because we cannot entertain a suit for tbe infringement of a patent; and Pitcher’s case, 1 O. Cls. B., p. 7, was referred to. But this suit is not brought for tbe infringement of a patent, nor for tbe unauthorized use of a patented invention, but upon a special contract with *a patentee, whereby tbe use of tbe invention by tbe United States was authorized, and agreed to be paid for. Pitcher’s case, therefore, is not like this. In Pitcher’s case there was nothing but an unauthorized use by an officer of tbe United States. And where an officer of tbe United States, without authority from them, uses in their service a patented invention, tbe act being unlawful is bis and not theirs, and be and not they are responsible for it.

It was also contended, on behalf of tbe United States, that by > tbe assignment made by Major Sibley to Major Burns they ' became thereupon joint owners of tbe contract, and joint creditors for all claims arising under it, and as sucb joint creditors must sue jointly and not severally; and that therefore this sole action by Major Burns for bis half of tbe royalty due to him and Major Sibley could not be maintained. But tbe United States themselves severed tbe claims of Major Burns from tbe claim of Major Sibley. For by tbe act of 3d March, 1863, chapter 92, tbe United States barred Major Sibley of any action here *127either joint or several, because of Ms disloyalty. And as the act, does not purport, and cannot, merely to save a rule of pleading here, where we have no rules of pleading, be implied to forfeit or affect the rights or interests of loyal citizens, it necessarily severs their claims from those it makes not suable here.

And in this case our conclusions of law are:

1. That the contract between the United States and Major Sibley made the 18th day of February, 1858, was valid in law, and was not determined by the order of Secretary Cameron of December 26, 1861.

2. That the assignment of Major Sibley to the petitioner, made the 16th day of April, 1858, was valid in law. And that by that and the facts above found, the petitioner became entitled to one-half of the royalty of $5 on 40,497 tents, made and procured by the United States as above stated.

3. That this sole action of the petitioner for said one-half of the royalty is well brought under act of 3d March, 1862, chapter 92.

Judgment is to be entered for the petitioner for one-half of the royalty, or $2 50 on each of 40,497 tents, amounting to the sum of $101,242 50.

Casey, C. J.,

dissenting:

Assistant Quartermaster General Thomas, by direction of the Secretary of War, wrote, on the 6th day of February, 1858, to Sibley’s*agent: “I have to propose that the department pay you the sum of $5 for each tent made for the use of the army, the number not less than 200 annually, *as long as this agreement may he confirmed ly the War*Department.” The agent replies on the same day, and says: “After the completion of the Sibley tents now being made, you are authorized to make as many of the Sibley tents as the government may require, by paying me $5 for each tent; and this arrangement holds good until January 1, 1859, and longer, unless notified to the contrary by me.” The payments were to be made monthly, or quarterly, as the tents should be manufactured.

On the 26th of November, 1861, the Quartermaster General wrote to the Secretary of War reciting the existence of the agreement, the defection of Major Sibley, and that the department, *128acting under the decision of his predecessor, had thus far allowed Major Burns $2 50 “royalty” upon each tent. He then calls the attention of the Secretary to No. 1002 of the Bevised Army Begulations, as follows:

“1002. No officer or agent in the military service shall purchase from any other person in the. military service, or make any contract with any such person to furnish supplies pr services, or make any purchase or contract in which such person shall be admitted to any share or part, or to any benefit to arise therefrom-.”

Upon this communication Secretary Cameron endorsed as follows:

> “ No further payments will be made to Major W. W. Burns on account of ‘ royalty ’ on the *1*Sibley tent.’

> “ SIMON CAMEBON,

> *u Secretary of War.*

> “War Department, *December*26, 1861.”

The opinion of the majority is based upon two points, in neither of which am I able to concur:

1st. That the order of Secretary Cameron was not a suspension, or abrogation, or termination of the contract.

2d. Even if it had been intended by the order to -terminate the contract, it was ineffectual, because no notice of it was given to the claimant.

It must be borne in mind that, by its express terms, the contract was only to continue during the pleasure of the Secretary of War. He had the clear and undisputed right to abrogate or end it any moment he chose to do so. For this purpose no formula of words was necessary. Any order or direction which indicated or implied such a design were as potent and as effectual as the most -formal and technical declaration could have been. This contract was to continue, and the payments to be made, only “ so long as it should be confirmed by the War Department.” I do not see how a want of confirmation, or of continued approval, could be more strongly expressed than in the pithy sentence of the Secretary, “ No further payments will be made to Major Burns on account of ‘royalty’ on the ‘ Sibley tent.’” For, in giving a construction to this order, we are not *129only to consider its terms, but we are to construe tbem in connection with, tbe contract and the letter of the Quartermaster General, to which they specially refer. Now, in this letter the Quartermaster General submits the two facts, that since the making of the contract the person with whom it was made has gone off into rebellion against the United States$ and the regulation prohibiting contracts with or purchases from a person connected with the military service. The opinion of the Quartermaster General as clearly indicated in this letter was, that both Sibley’s defection and the army regulation quoted affected the validity and legality of payments on this contract. The Secretary’s orders affirmed this view. At all events, if it did nothing more, it suspended the operation of the contract until further orders, and none such ever were made. The right to terminate included the right to suspend.

The contract, in express terms, was made subject to the continued approval of the Secretary of War. He could end it at any moment and by a word. This was the first time the Secretary’s attention had been called to the subject since Sibley’s defection — the first time Burns’s attitude and relation to the contract was brought to his notice. Upon this he acts promptly by withdrawing the approval and “ confirmation” of the department to Sibley’s contract. How could a withdrawal of confirmation and approval be more strongly expressed than by directing all payments on its account to be stopped ? The effect of such an order could not be misunderstood. It was intended to end or suspend the contract, and all parties so understood it at the time, and they acted upon that hypothesis. The letter is a complete indorsement and approval of the views of the Quartermaster General of the illegality of the contract. The Secretary was as much bound by the regulation as anybody else while it was in force. He so construes it; and, looking upon the whole arrangement as illegal and unauthorized, he by the clearest intendment determined to put an end to it.

That Burns had no notice of this cannot be maintained. Burns, would find, on the next monthly or quarterly day of payment, that farther payments were forbidden, and by inquiry he would, and did, find out that it was in consequence of this order ending the arrangement. But no notice was required by the *130contract set up. The Secretary bad a right to terminate tbe contract any moment, without notice to anybody, and least of all to Burns, who was no party to it. After December 26, 1861, there was, therefore, no contract in existence, for the Secretary, as he had a clear right to do, had terminated the one made before that time. How stands Major Burns without such a contract ? If he had any interest in the patent, he had a remedy for its infringment against any one who interfered with his rights. For such an injury the law has provided a remedy, and designated a tribunal to enforce it. That tribunal is not the Court of Claims, as we decided in the Pitcher case, (1 0. Cls. Kep., p. 7.) In my opinion the ruling of the majority here is a plain departure from the principles there announced.. The two cases are utterly irreconcilable. So the claimant’s counsel thought, and they directed their main argument to show that it was unsound in principle and unsupported by authority. And while the majority do not overrule it in terms, the effect of this ruling is to so limit and circumscribe its operation as to leave nothing of it worth preserving.

The facts show that before December 26,1861, the government had manufactured and received 4,170 tents. Of these, 3,849 were paid for, leaving unpaid, 321. The evidence also shows that 13,494 tents were bought from various individuals under contracts by which these parties assumed to pay the royalty. Whether these parties had not a right or license to manufacture them has not been shown. If they had not, a complete and perfect remedy was afforded to the owner of the patent. Nor would the contract with the United States have been any answer or defence to such action, for the parties expressly agreed to be responsible for the royalty or patent-right fees.

In the contract with Landellthe United States expressly agreed in the contract to be liable to Burns for $2 50 on each tent, and that sum was deducted from the price of the tents. An action, therefore, for money had and received to his use could probably be maintained for the amount.

The contract upon which this suit is brought is made with Sibley alone. When it was made, Burns, the claimant, was no party to it and had no interest in it. It is made in February, 1858, andhis agreement of partnership with Sibley is not entered into until April 15,1858. That agreement is not an assignment *131or transfer of anyinterest in tbe patent. Tbe parties do not even pretend this, for it is not even acknowledged or recorded as an assignment. It is only wbat it purports on its face to be, a partnership for tbe purpose of introducing into tbe army Sibley’s patent tent, and share *“*tbe benefits and net profits arising from” its manufacture and use. This of itself constitutes them partners. But it is notleftto implication, for tbe parties themselves twice, in tbe agreement, designate them arrangement, as a “ partnership.” Tbis partnership was dissolved by tbe disloyalty of Sibley.-He became a public enemy. And with tbe dissolution of the partnership fell all of Burns’s interest. Could Burns under tbis agreement sue any one manufacturing these tents for in-fringment of bis rights ? Clearly not, because be has no right to tbe patent. He sues here not upon any right in tbe patent, but upon an express contract made with tbe Secretary of War; and gives in evidence one made, not with himself, but with Sibley; and alleges, not an assignment of that particular contract, or an interest in it to him, but a general partnership in respect of these tents entered into after its date with Sibley. Tbe highest effect that could, in view of tbe facts in tbe case, be given to tbis agreement of partnership, is that it operated by way of appointment or assignment of one-half tbe net proceeds. But that be could sue upon such a contract made with- Sibley, in bis own name, no lawyer ever dreamed, no judge ever decided. Against bis right to do so stands the plain and unambiguous provisions of tbe act of February 26, 1853; not only forbidding all such assignments, but making them utterly null and void. But it is said tbe Quartermaster General recognized Burns’s right by directing payment to him for some of tbe tents. But wbat right bad tbe Quartermaster General to change tbe contracts of bis superior, tbe Secretary of War? Wbat possible right could be have to validate an assignment which an act of Congress bad declared should be void *1*But neither tbe one nor tbe other was attempted. Tbe payments were made under a misapprehension, and do not operate by way of estoppel on •the United States. That doctrine has no place against a government when acting by its subordinate officers and agents. *(Sines*v. *The United*States, 1 C. Cls. R., p. 1; *Pierce*v. *The United*States, ibid., 270; *Cote*v. *The United States,*3 ibid., 61.) Whatever equitable right Burns may have in tbe contract with Sibley be derives through Sibley and must sue for it in bis name. And *132when he does so he is confronted by the provisions of the 12th section of the act of March 3, 1863, that not only the claimant but that the original, and every prior owner, must have always borne true allegiance to the United States, &c. The agreement between Sibley and Burns was not proved. Burns filed in the War Department what he alleged to be a copy of it, and the War Department certified it to us. It is a copy of a copy, and has no other proof than the claimant’s allegation that it is a copy of the original in his possession, which he has not produced or proved in any way whatever.

It is true that the attorneys for the United States have not made this objection to the proof. That they should overlook or neglect so vital a matter is rather surprising. But as this forms the whole foundation of the large judgment in the case, it appears to me the court of its own motion should have required other proof.

For these reasons, I think the claimant has no right to maintain this action in his own name for the royalty due under the contract with Sibley, and that in respect to that his petition should be dismissed.

Milligan, J.:

I fully concur in the result of the Chief Justice’s opinion.