of a grant by Germany without consideration. By article I Germany undertakes to accord to the United States, for its enjoyment, certain rights and privileges; but there is no grant or promise on the part of the United States. The obligations of Germany are more specifically defined in article II by reference to certain parts of the Versailles Treaty, and it is stated that the United States, in availing itself thereof, will do so in a manner consistent with the rights accorded therein to Germany. Here it is true there is a suggestion that rights are accorded, not only to the United States, but also to Germany. But this very phrase is said to signify that the mutual promises shall become effective only upon election by the United States. The German Patent Office seems to have given the language this construction, relying upon a translation into German, which translated back into English is said to mean in substance that, if the United States shall avail itself of the rights stipulated in the Versailles Treaty, it will do so in a manner consistent with the rights of Germany. See 21 F. (2d) 221. It has been held that the foreign text of a treaty, to which the United States is a party, may be çonsulted to ascertain its meaning. U. S. v. Percheman, 7 Pet. 51, 83, 8 L. Ed. 604. The United States, of course, was in the position of conqueror, and most of the rights and advantages in question were granted by the vanquished nation. Nevertheless an examination of the language of the treaty does not justify the conclusion that no present rights were granted thereby to the United States or its nationals. The events which gave rise to the insertion of the second paragraph of article II (1) of the Treaty of Berlin have already been set out. It was put in, not to indicate that it was optional with the United States to exercise the specified rights, but rather to reassure Germany that these rights would not be enjoyed by the United States without recognizing the cognate provisions of the Treaty of Versailles, which contained qualifications or conditions in favor of Germany. It is noteworthy that the treaty of peace between the United States and Austria, which was signed at Vienna August 24, 1921, and ratified by the Senate on the same day as the Treaty of Berlin (see Treaty Series No. 659, published by the Government Printing Office), contains a precisely similar clause to that under discussion. It is published in English only, without German translation, but there is no reason to believe that it has a different meaning in the Treaty of Vienna than it has in the Treaty of Berlin. In contrast with the action of the German Patent Office, the Austrian Patent Office, it is conceded, by reason of the peace treaty, extended the time for filing patent applications until May 8, 1922; that is to say, for six months after the date from which the ratifications of the United States and Austria were exchanged at Vi enna. Undoubtedly some of the rights granted to the United States under the terms of the Treaty of Versailles were in the nature of options, a fact which has perhaps given rise to the belief in some quarters that all the rights were optional in character. For instance, article 296 (e), in regard to the establishment of clearing offices, is to the effect that article 296 shall not apply to any of the allies, unless, within a period of one month after the ratification of the treaty by the power in question, notice is given to Germany. Article 291 expressly reserves to the allied powers the right to accept or not the enjoyment of the rights and advantages granted by Germany to her allies. Article 289 gives to each of the allied powers the privilege of notifying Germany within a period of six months of the treaties or conventions which it may wish to revive with Germany. On the other hand, there are many provisions of the treaty, particularly part X in regard to industrial property, which in terms create immediate rights; for instance, article 264, as to duties and imports; article 267, as to favors, immunities, or privileges in regard to the importation, exportation, or transit of goods; article 276, as to the exercise by the nationals of the allies of certain occupations and professions in Germany; article 277, as to the protection of nationals in German territory, and their right of access to the courts, etc. Moreover, the Treaty of Berlin contains strong evidence, by the inclusion of certain exceptions, that the United States receives, without further action on its part, specified privileges and advantages. Article II (1) gives to the United States the benefit of part VIII of the Treaty of Versailles, entitled "Reparations," but article II (4) states that, while the United States is privileged to participate in the Reparations Commission, it is not bound to do so unless it shall so elect. Furthermore, it is provided in article II (2) that the United States shall not be bound by any of the provisions of the Versailles Treaty mentioned in article II (1), which relate to the covenant of the League of Nations, unless the United States shall expressly give its assent to such action. These provisions would have been totally unnecessary, if all the rights accorded in article II (1) were optional. Again it is provided in article II (2) and (3) that the United States assumès no obligations with respect to the provisions of part I, part II, part III, sections 2 to 8 of part IV and part XIII of the Versailles Treaty. The plain implication is that the United States did acknowledge the obligations to Germany specified in other parts of the Versailles Treaty under which the United States acquired rights. 25 F.(2d) 146 [3] These considerations have been examined at length, because of the great emphasis placed upon them by counsel for the Commissioner of Patents. The conclusion is that there is no solid foundation for the contention that the rights granted to the United States were merely optional, requiring further action to give them effect. Certain decisions tend to confirm this result. It was held by the Circuit Court of Appeals of the Second Circuit, in Munich Reinsurance Co. v. First Reinsurance Co., 6 F. (2d) 742, at page 748, that where stock in a domestic reinsurance corporation, owned by a German reinsurance corporation, was seized by the Alien Property Custodian under the Trading with the Enemy Act, the alien corporation was not entitled to sue for an accounting against the domestic corporation to which the Custodian had paid, out of the proceeds realized from the sale of the stock, a claim against the German corporation, since the act gave no right of action, and the Treaty of Berlin relegated German nationals to claim against their own government for compensation for confiscated property. See, also, Klein v. Palmer (C. C. A.) 18 F. (2d) 932. The Supreme Court has also held, in United States v. Chemical Foundation, 272 U. S. 1, 11, 47 S. Ct. 1, 71 L. Ed. 131, that the Treaty of Berlin prevents the enforcement of any claim by Germany or its nationals against the United States or its nationals, on account of the seizures and sale of German properties under the Trading with the Enemy Act. There is no suggestion in these decisions that the rights and advantages relied upon have been acquired by an act or election of the United States subsequent to the treaty. On the contrary, the decisions are based on the language of the treaty itself. [4] The final contention of the Commissioner is that there is no provision in the Treaty of Berlin for the extension of the time limit provided by article 308 of the Versailles Treaty, which expired July 10, 1920. The Commissioner points out that there is no declaration in the Treaty of Berlin by which this particular period of time was specifically extended, and contends that there is no general term in the treaty applicable to article 308 and all other provisions of the Treaty of Versailles by which extensions of time are brought about. The only general clause of this character is article II (5). It provides substantially that the periods of time referred to in article 440 of the Treaty of Versailles shall run with respect to any act or election on the part of the United States from the date of the coming into force of the Berlin Treaty. But this extension, it is urged, relates only to acts or elections on the part of the United States; whereas article 308 applies to the acts of individual patentees. Attention is again directed to the objection raised during the negotiations of the treaty by Germany that article II (5) is obscure. Secretary Hughes replied, as already shown, that in drafting this section the United States had in mind those provisions of the Versailles Treaty in respect to acts or elections on the part of the United States, where time would be important, as for instance, article 296 (e) and article 304 (a) above described. Since the illustrations of the Secretary were confined to acts by the United States as a nation, it is contended that article II (5) refers only to such acts, and does not include acts or elections on the part of nationals of either party to the treaty. The argument finds some support in the terms of the section, if taken literally, but takes no account of the fact that it renders article 308 entirely nugatory. The time limit prescribed thereby having expired, it was useless to insert the article, except with the understanding that it be given new life. There were other articles in the Versailles Treaty specified in the Treaty of Berlin in like case. It would therefore be fair to assume, even if the Treaty of Berlin were silent on the subject, that the periods of time provided 'in these articles should run from the date when the later contract came into effect. Such a construction is far more reasonable than one which would require the nullification of provisions of the earlier treaty specified in the later, in order to accord substantial privileges upon nationals of the United States. Furthermore, when article II (5) is read in connection with other parts of the Treaty of Berlin, it becomes clear that it refers, not only to acts or elections on the part of the United States, but also to acts or elections of nationals. It is noticeable that nowhere in articles I, II, or III, which constitute the body of the Treaty of Berlin, is there any mention in terms of the rights of nationals. Article I states that Germany undertakes to accord certain rights to the United States. Article II defines those rights more particularly. Article III refers only to the forms of ratification. Nevertheless it was obviously not the intention of the United States to ignore the rights of nationals, or to forego those parts of the Treaty of Versailles which defined them. Any doubt on this point is removed by the provisions of the Joint Resolution executed before the treaty, and recited therein, and also by the understanding of the Senate, expressed in its resolution of ratification. Section 2 of the Joint Resolution (42 Stat. 105) declares that there are expressly reserved, to the United States and its na ly, the plaintiffs very properly point out that the language quoted from the Senate Resolution is not, strictly speaking, a reservation on the part of the Senate, but an interpretation of the meaning of the treaty, and that, subsequent to the Senate's action, the President ratified the treaty, subject to the understanding recited, and thereafter the treaty was ratified by Germany. The plaintiffs are entitled, in the opinion of the court, to register their patent, as prayed in the bill of complaint, and a decree to this effect will be accordingly signed. ESKIMO PIE CORPORATION v. HONEYMOON PIE CORPORATION et al. 1928. tionals, certain rights and privileges, includ- District Court, E. D. New York. March 21, ing those stipulated in the Treaty of Versailles for its or their benefit. The understanding of the Senate declares "that the rights and advantages which the United 1. Patents 36(2), 45-Commercial success States is entitled to have and enjoy under this treaty embrace the rights and advantages of nationals of the United States specified in the Joint Resolution or in the provisions of the Treaty of Versailles, to which this treaty refers." It seems to follow inevitably that, if the rights conferred upon the United States by article II (1) of the Treaty of Berlin include also the rights of nationals, then the extension of the periods of time provided by article II (5) should be so interpreted as to refer not only to acts of the United States, but also to acts of nationals. Article II (5) should be taken in substance to mean that the periods of time shall run with respect to any act or election on the part of the United States, or its nationals, from the date of the coming into force of the present treaty. Thereby the extension of the period specified in article 308 would inure, not only to nationals of this country, but also to nationals of Germany, since the United States agreed in the second paragraph of article II (1) that, in availing itself of rights and 'advantages stipulated for its benefit in the Versailles Treaty, it would do so in a manner consistent with the rights accorded in Germany. It is true that Secretary Hughes, in explaining article II (5), made no reference to the rights of nationals; but this omission is not controlling, since it is apparent, from an examination of the negotiations, that the representatives of the two governments were chiefly concerned with the more important provisions involving national action. Final No. 2178. does not prove invention, but is to be considered, where question of novelty is in doubt. Commercial success does not prove invention, but is to be considered, where a question of novelty is in doubt. 2. Patents328-1,404,539, for ice cream confection, held invalid for lack of invention. Nelson patent, No. 1,404,539, for a confection primarily a rectangular core of ice cream sealed in a sustaining form-retaining casing of chocolate or other edible casing, held invalid for lack of invention. 3. Trade-marks and trade-names and unfair competition59(5)-Trade-marks "Eskimo Pie" and "Pie," for ice cream confections, held not infringed by word "Honeymoon Pie." Trade-marks "Eskimo Pie" and "Pie," for use on ice cream confection, held not infringed by use of mark "Honeymoon Pie." 4. Trade-marks and trade-names and unfair competition93(3)-That witness, when he asked dealer for plaintiff's confection by name, was given defendant's product, held not to establish unfair competition. Evidence that witness, when he asked retail dealer for "Eskimo Pie," an ice cream confec tion manufactured by plaintiff, was without comment given defendant's "Honeymoon Pie," a similar confection, held not to establish charge of unfair competition. 5. Patents 327(18)-District Court is not bound by opinion of judge of District Court for another district. District Court, in determining validity of patent, is not bound by opinion of judge for another district, but will accord such opinion respectful consideration. In Equity. Suit by the Eskimo Pie Corporation against the Honeymoon Pie Corporation and others. Decree for defendants. Everett & Rook, of New York City (Henry B. Floyd, of Chicago, Ill., Harry B. Rook, of New York City, and Harry C. Alberts, of Chicago, Ill., of counsel), for plaintiff. 25 F.(2d) 154 August G. Klages, of Long Island City, N. Y. (Warren B. Hutchinson, John C. Kerr, and Hoguet & Neary, all of New York City, of counsel), for defendants. CAMPBELL, District Judge. This is a suit in equity for the alleged infringement of patent No. 1,404,539, issued by the United States Patent Office to Christian K. Nelson, assignor of one-half to Russel Stover, for confection, dated January 24, 1922, and for the alleged infringement of plaintiff's registered trade-marks, "Eskimo Pie," numbered 155,844, and "Pie," numbered 162,585, and also for unfair competition. This suit, in so far as the patent is concerned, is based on the first six claims thereof, which read as follows: "1. A confection comprising a core of normally liquid material frozen to a substantially solid state and sealed within an edible, sustaining, and form-retaining casing adapted to maintain the confection in its original form during handling. "2. A confection comprising a core of normally liquid material frozen to a substantially solid state and sealed within a sustaining and form-maintaining casing of hardened chocolate adapted to maintain the confection in its original form during handling. "3. A confection comprising a core of normally liquid material frozen to a substantially solid state and sealed within an edible, sustaining, and form-retaining casing of barlike contour adapted to maintain the confection in its original form during handling. "4. A confection comprising a core of a confection ice frozen to a substantially solid state and sealed within an edible, sustaining, and form-retaining casing of barlike contour adapted to maintain the confection in its original form during handling. "5. A confection comprising a core of ice cream frozen to a substantially solid state and sealed within a casing of hardened chocolate of such thickness and consistency as to maintain the confection in its original form during handling. "6. A confection comprising a core of normally liquid material frozen to a substantially solid state, and a hardened edible coating completely inclosing the core, the whole forming a substantially rectangular solid adapted to maintain its original form during handling." The patent in suit was issued for a confection, primarily a rectangular core of ice cream, sealed in a sustaining, form-retaining casing of chocolate, which has been sold as Eskimo Pie, but the patent is not limited to chocolate coated ice cream. On page 1, lines 47 to 52, inclusive, of the patent, the patentee said: "The article comprises, in its simplest form, a block or brick or frozen confection encased or contained within an edible container or shell. The core or center may be an ice cream, sherbet, sorbet, ice, or other material congealed by refrigeration." And at page 1, lines 61 to 66, inclusive, of the patent, the patentee also said: "This core A is contained and sealed within a shell, wall or coating B, of edible material which may be like that employed in coating chocolate candies, although preferably modified to harden at a lower temperature." Ice cream has been sold in various forms for a long period of time, and various candies, including chocolate creams, unfrozen, have been on the market since a time long prior to the patent in suit and to the filing of the application therefor on December 23, 1921. The patentee says he knew that chocolate creams had, prior to the patent in suit, been made in the shape of the Eskimo Pie. In 1907, 14 years before the patent in suit was applied for, a booklet by Val Miller, entitled "Thirty-Six Years an Ice Cream Maker," was published, to which the public had easy access, and which booklet contained the following recipe: "Mold some round balls extra hard as for individuals, then melt some sweet chocolate, thin it down with cocoa butter, let it cool until the most of the heat is off; now have two wire forks, drop a frozen ice cream ball into the chocolate, turn it upside down quick, and with your two forks, set it out on your tray, and then immediately in your iced cabinet or iced-up can." This is a complete disclosure of the exact thing disclosed in the patent in suit, except as to shape. The change in shape brought about no change in function, and I can find no invention in merely changing the shape. The change in shape was merely the carrying forward of the idea of Miller. Much stress was laid by the plaintiff on reports that Eskimo Pie could be more easily held in the fingers and eaten than a ball. Some of the plaintiff's witnesses went so far as to say the cannon balls could only be eaten with a spoon, but I am convinced by the evidence that they were in error. The pat
entee said that it was impracticable to make The plaintiff makes a point of the fact With Miller's recipe in evidence, it clear- The Tobien German patent, No. 247,709, "A process for producing small, hollow patent is like the product described in the patent in suit, except as to form, and the method of making the product disclosed in the Tobien patent is the same as that of the [1,2] The plaintiff appears to place great reliance on the commercial success of the patent in suit. The success of Eskimo Pie has been marked, but much of it is due to the name, which is peculiarly attractive. Commercial success does not prove invention, but is to be considered, where the question of novelty is in doubt (Potts & Co. v. Crea- ger, 155 U. S. 597, 609, 15 S. Ct. 194, 39 L. Ed. 275), and in this case I am not in doubt; on the contrary, I cannot, in the face of Val Miller's recipe and the Tobien Ger- man patent, find any invention in the patent Before the bankruptcy, the original de- fendant described the product as "Honey- of the defendants is known as "Honeymoon [3] The word "Pie" is of general use, de- In addition to this, although the shapes [4] That the witness Buckley called upon a establish the charge of unfair competition, and this is all the evidence which was pro- duced to prove unfair competition. The plaintiff has cited, as supporting its contentions as to the validity of the patent in suit, Milwaukee Printing Co. v. Stover (C. C. A.) 290 F. 387; but it seems to me that there is not much force to that conten- tion, because that was an appeal from an or- der granting a preliminary injunction, and the case turned almost entirely upon the question of unfair competition. The very questions presented in the case at bar, and upon substantially the same rec- ord, were presented before the United States District Court for the District of New Jer- sey, in Eskimo Pie Corporation v. John Levous & Purity Ice Cream Co., 24 F.(2d) 599, and Judge Bodine found in favor of the defendants, holding the patent invalid. [5] This court is not bound by the opinion |