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Duane, Morris & Heckscher, for complainant.
J. B. McPHERSON, District Judge. Upon the hearing of this motion I enjoyed the advantage of listening to the examination and crossexamination of the witnesses in open court; and I believe, therefore, that the case is practically presented as if on final hearing. In my opinion the facts and the proper legal conclusions therefrom may be briefly stated as follows: 1. The plaintiff is the owner of a secret process for extracting alcohol from empty whisky barrels. 2. This process is not patented, and has been employed by the plaintiff for several years. Reasonable precautions have been taken to insure secrecy; and, among these, the plaintiff's servants who were necessarily intrusted with knowledge of the process have been enjoined not to disclose any of its steps. 3. Davies, one of the defendants, learned the process fully during a service of two years as engineer. While still in the plaintiff's employ he determined to use his information by going into the business upon his own account. In the effort to attain this object he interested the other two individual defendants in his plan, and Christopher Koch furnished the capital with which the defendant corporation was organized and has been carrying on business. 4. The process by which the defendants extract alcohol from barrels is essentially the secret process that was thus betrayed by Davies, although it may perhaps be combined with the use of a jet of steam. This combination, however, if it exists at all, does not need special attention. It does not constitute a new method of operation, although in one particular—the better protection of the barrels—it may be an improvement on the secret hot air process of the plaintiff. 5. I do not think that the plaintiff is chargeable with laches. But, even if laches be assumed to exist, the plaintiff should not be estopped from enjoining the use of its secret process in the future. Whether damages may be recovered for infringement in the past is a question that need not now be decided; but it seems to me that the plaintiff's right to restrain the continuance of the defendants' flagrant misconduct has not been impaired. 6. The evidence does not prove that the process has in effect been thrown open to the public, or has been so negligently guarded that o persons have probably discovered it by means that were not una1 r. 7. In my opinion the disclosure by Davies was a clear breach of trust, by which neither he nor the other defendants should be allowed to profit. . Upon the plaintiff's filing of a bond in the sum of $2,500, a preliminary injunction will be awarded.
ENDERS v. SUPREME LODGE KNIGHTS AND I, ADIES OF HONOR. (Circuit Court, E. D. New York. March 1, 1910.)
1. Counts (§ 328*) — FEDERAL Counts — JURISDICTIon — AMoUNT IN CoNTRO
Where a suit against a mutual benefit association to invalidate an assessment involved a certificate for $2,000 and benefits, and defendant's allegation as to the amount involved was not traversed, the amount was sufficient to confer federal jurisdiction, notwithstanding a tender of premium.
[Ed. Note.—For other cases, see Courts, Cent. Dig. §§ 890–896; Dec. Dig. § 328.*
Jurisdiction of Circuit Courts as determined by the amount in controversy, see notes to Auer v. Lombard, 19 C. C. A. 75; Tennent-Stribling Shoe Co. v. Roper, 36 C. C. A. 459.]
2. REMoval of CAUSEs (§ 106*)—RIGHT To REMAND–WAIVER, Plaintiff, by noticing a demurrer for argument after the removal of cause, waives his right to remand. [Ed. Note.—For other cases, see IRemoval of Causes, Cent. Dig. § 216; Dec. Dig. § 106.”]
Action by Fred Enders against the Supreme Lodge Knights and Ladies of Honor. On motion to remand. Denied.
Norbert Blank, for complainant.
CHATFIELD, District Judge. Motion to remand will be denied. The plaintiff has not traversed the allegation by the defendant of amount involved (Weaver v. Nor. Pacif. [C. C.] 125 Fed. 155); but the points appear on the pleadings, and no testimony seems to be required.
The amount involved is $2,000 and benefits, which of itself would seem to be sufficient. The premium is only a tender, and is not what is involved by the action. Further, the relief asked is a decree against the validity of an assessment, which would affect as stare decisis all similarly situated who could under the federal laws join in the suit or who are subject to this court's jurisdiction, even if the question did not become res adjudicata as to the other parties who did not come in.
If a patentee with a fixed license rate should seek to restrain in equity an infringement, and thereby stop a business involving thousands of dollars, it would scarcely seem that the license value alone could be held as the amount involved, even if it were all the damage recoverable.
The plaintiff has noticed a demurrer for argument, and this is certainly a waiver of his right to remand, in the face of the allegations of the record. But on all the reasons the result reached, must be the San 1c.
*For other cases see same topic & 3 NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes
WEST PUB. CO. v. EDWARD THOMPSON CO.
(Circuit Court of Appeals, Second Circuit. March 7, 1910. On Petition for
1. CopyRIGHTs ($ 29*)—SUBSEQUENT EDITIons of Book—Notice of CoPY-
2. CoPYRIGHTs ($ 5*)—SUBSEQUENT EDITIONs of Book—ADDITION of NEw
c. 320, 35 Stat. 1075 (U. S. Comp. St. Supp. 1909, p. 1289), as well as by
the express provision of section 6 of such act, the addition of new matter
to a copyrighted book in a second or subsequent edition makes it a “new
book” subject to copyright as an original work.
§ [Ed. Note.—For other cases, see Copyrights, Cent. Dig. § 3; Dec. Dig. 5.*]
8. CopyRIGHTs (§ 29*)—ORIGINALITY of Wook—AGGREGATION of PRIoR PUB-
4. CopyRIGHTs (§ 29*)—ORIGINALITY of Work—CoMPILATION of CopyRIGHTED
[Ed. Note.—For other cases, see Copyrights, Cent. Dig. §§ 29, 30; Dec. Dig. § 29."]
b. Copyrights ($ 61*)—INFRINGEMENT—Use of CopyRIGHTED Marter.
§ * Note.—For other cases, see Copyrights, Cent. Dig. $ 5.7; Dec. Dig.
& CopyRights ($ 56*)—INFRINGEMENT—Use of Law Digest.
$ o Note.—For other cases, see Copyrights, Cent. Dig. § 52; Dec. Dig. *For other cases see same topic & S NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes 176 F.—53
7. CoPYRIGHTs (§§ 86, 87°)—SUIT IN EQUITY FoR INFRINGEMENT—LACHESPoWER of Court To A WARD DAMAGES. Under Rev. St. § 4970 (U. S. Comp. St. 1901, p. 3416), which gives the Circuit Courts power to grant injunctions to prevent the violation of copyrights “according to the course and principles of courts of equity," the fact that a complainant, with knowledge that its copyrights were being infringed by defendant, delayed bringing suit until defendant after 16 years of labor and at large expense had practically completed the publication of its work, constituted such laches as warrants the denial of an injunction or an accounting of profits; but in such a suit, although equitable relief is denied, the court has power to award the complainant damages as compensation for the violation of its rights.
Laches as a defense in suits for infringement of copyrights, see notes - to Taylor v. Sawyer Spindle Co., 22 C. C. A. 211; Richardson v. D. M. Osborne & Co., 36 C. C. A. 613.]
Appeal from the Circuit Court of the United States for the Eastern District of New York.
Suit in equity by the West Publishing Company against the Edward Thompson Company. Decree for defendant (169 Fed. 833), and complainant appeals. Decree modified.
William B. Hale, Henry E. Randall, and Edmund Wetmore, for appellant. Walter Large and Frank P. Prichard, for appellee.
Before LACOMBE, WARD, and NOYES, Circuit Judges.
WARD, Circuit Judge. April 13, 1903, the complainant, a corporation and citizen of the state of Minnesota, filed the bill against the defendant, a corporation and citizen of the state of New York, charging it with infringement of copyright. The complainant is a publisher of reports of cases and of legal digests. It began with the year 1879 the publication of weekly reporters, which gradually grew into what is known as the “National Reporter System,” covering the decisions of all the highest courts throughout the United States. It also published all the decisions of the United States District and Circuit Courts from 1789 to 1880 in a series under one alphabet called the “Federal Cases.” It also became the owner of the United States Digests of decisions known as the First and the New Series, and it published a digest of the Federal Cases, a digest of the Federal Reporter, the American Annual Digest of all the decisions throughout the United States, and the Century Digest, which includes the decisions of all courts throughout the United States from 1858 down to 1896 under one alphabet.
Each weekly number of Reporters was copyrighted. Then several such numbers were aggregated into a volume which was copyrighted. The headnotes of the cases in the National Reporter System were gathered into monthly or bimonthly digests, and these again into annual or semiannual digests; these again into the American Annual Digest; and these again down to 1896 with the syllabi of the United States Digests, First and New Series, into the Century Digest under one alphabet. Speaking generally, these books, consisting of some 600 volumes of reports and 99 volumes of digests, were copyrighted. The defendant from the year 1887 was the publisher of encyclopedias composed of articles alphabetically arranged intended to cover the whole body of the law, known as the “American and English Encyclopedia of Law, First Edition,” “Encyclopedia of Pleading and Practice,” and “American and English Encyclopedia of Law, Second Edition,” comprising in all 78 volumes. When this suit was begun, the American and English Encyclopedia of Law, First Edition, the Encyclopedia of Pleading and Practice, and 23 out of 30 volumes of the American and English Encyclopedia of Law, Second Edition, had been published. A fuller statement of the facts of the case and reference to the authorities may be found in the careful and able opinion of Judge Chatfield, reported in 169 Fed. 833. The defendant contends that the complainant has largely lost the benefits of its copyrights by the method in which it has published its books. This makes an examination of the copyright statutes necessary. Rev. St. U. S. § 4956 (U. S. Comp. St. 1901, p. 3407), provides that no one shall be entitled to a copyright unless he shall on or before a certain day deliver to the Librarian of Congress a printed copy of the title of the book and two copies of the book. Act June 18, 1874, c. 301, § 1, 18 Stat. 78 (U. S. Comp. St. 1901, p. 3411), provides that no person shall maintain an action for infringement of copyright unless he shall have given notice thereof by inserting in the several copies of every edition, as, for example, “Copyright 18— by A. B.” Section 4954 requires a new copyright to be taken out for a further term of 28 years. Section 4959 requires one copy of every subsequent edition containing substantial changes to be delivered to the Librarian of Congress. The provision that books of foreign authors “heretofore” published of which new editions shall thereafter appear are entitled to copyright was enacted by Act March 3, 1891, c. 565, 26 Stat. 1110 (U. S. Comp. St. 1901, p. 34.17), section 13 of which extended the benefit of our copyright laws upon certain conditions to foreigners. Prior to that act no foreign author or assignee of a foreign author could avail of our copyright law. Yuengling v. Schile (C. C.) 12 Fed. 97; Fraser v. Yack, 116 Fed. 285, 53 C. C. A. 563. Taken together, we think these provisions show that there can be but one copyright for the same book for the first term of 28 years. It follows that if there may be a copyright for a subsequent edition the notice of copyright given in it must be either of the date of the original or of the date of the subsequent entry. It would certainly be fair to authors and to the public if improvements of and additions to a copyrighted book should be regarded as mere incidents of the original work covered by the original copyright, so that notice of it only need be given. In this way the public would be relieved of the burden and risk of ascertaining the time at which the copyright of the original work and the copyright of the additions, respectively, expired. No new
*For other cases see same topic & S NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes