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23 F.(2d) 159

The defendant's answer denied the validity of plaintiff's copyright, both on the ground that the subject-matter of the picture was not original, and on the ground that plaintiff had not complied with the copyright law, and denied that defendant's picture was an infringement. The District Court found that the defendant's picture was purposely made in close imitation of plaintiff's, found infringement, and granted an injunction pendente lite.

Munn, Anderson & Munn, of New York City (T. H. Anderson and Albert J. Clark, both of New York City, of counsel), for appellant.

Edwards & Henry, of New York City (O. Ellery Edwards, Augustus M. Henry, and Arthur G. Previn, all of New York City, of counsel), for appellee.

Before MANTON, L. HAND, and SWAN, Circuit Judges.

SWAN, Circuit Judge (after stating the facts as above). [1,2] The parties will be referred to as plaintiff and defendant. One of the errors assigned by the defendant is the finding of infringement. The memorandum of the judge states, not only that the defendant purposely made its picture in close imitation of the plaintiff's, but also that the slight differences which exist were put in merely for the purpose of attempting to make it possible for defendant to appropriate the essential features of the copyrighted picture. The two pictures appear from inspection to be so similar in subject, coloring, and general effect that we regard the contention that the decree should be reversed on the ground of noninfringement as wholly untenable. It is no defense that close scrutiny may detect slight differences. See Gross v. Seligman, 212 F. 930 (C. C. A. 2); Dymow v. Bolton, 11 F. (2d) 690 (C. C. A. 2). Most of the assignments of error are of a highly technical nature, and relate to the alleged failure of plaintiff in its pleadings and proof to make out a prima facie case of the validity of its copyright.

[3-5] It is objected that the bill alleges certain of the allegations essential to plaintiff's right only upon information and belief, rather than upon direct affirmation, and that the verification by plaintiff's president, Gerlach, is similarly limited. A bill for a preliminary injunction is one for special relief pending the suit, within the meaning of federal equity rule No. 25, which requires such a bill to be verified. Scheuerle v. One-Piece Bifocal Lens Co., 241 F. 270, 273 (D. C. Pa.). But verification by a party upon information and 23 F. (2d)-11

belief of such matters as are not within his knowledge is a sufficient compliance. Coty, Inc., v. Parfums De Grande Luxe, 298 F. 865 (C. C. A. 2). That artist Kenyon's painting was a new and original work of art, and as such copyrightable, is necessarily a matter of opinion, and Gerlach's averment of this fact upon information and belief was sufficient.

[6-8] To determine whether plaintiff proved a prima facie case, the affidavits and exhibits, as well as the bill, must be examined. That Kenyon was the author of a painting entitled "Song of the Bluebird" is established by Exhibit C, the certificate of registration, which by section 55 of the act (USCA, title 17, § 55) is made prima facie proof of the facts stated therein. See Berlin v. Evans, 300 F. 677 (D. C. Pa.); Fisher v. Dillingham, 298 F. 145 (D. C. N. Y.). Defendant's affidavits allege that plaintiff's president had admitted that the theme of its picture was taken from another picture entitled "Spring Song." Very likely it was, but works of art, to be copyrightable, do not, like patents, need to disclose the originality of invention. While a copy of something in the public domain will not, if it be merely a copy, support a copyright, a distinguishable variation will, even though it present the same theme. See Gross v. Seligman, supra. Kenyon's picture is a sufficient variant to be the subject of copyright under the act.

[9-14] Plaintiff must next prove that he is the "proprietor" of the painting. It is objected that the averment upon information and belief that Kenyon sold and assigned to plaintiff all her right in said picture, and any reproductions of the same, is insufficient to make such proof. But the bill also alleges affirmatively that, "after receiving the aforesaid picture," plaintiff duly copied and published the same and gave notice of copyright. This is equivalent to a direct averment that plaintiff obtained possession of the picture by means of what was believed to be a sale and assignment, and proceeded as proprietor to publish and copyright it. Possession of a chattel is prima facie evidence of title. See Wigmore, § 2515. Ownership of an unpublished composition presumptively includes all the rights which the common law recognized therein, among them being the privilege of publication and of securing a statutory copyright. See Drone, Copyright, 239; Turner v. Robinson, 10 Ir. Ch. 121, affirmed 510; Parton v. Prang, Fed. Cas. 10,784 (С. С. Mass.). The plaintiff made a prima facie case of title, and the burden of going forward with evidence to show that plaintiff's title was defective then shifted to defendant. See Drone, op. cit. 498, 499; Reed v. Carusi, Fed. Cas. 11,642. Defendant's denial upon information and belief cannot be regarded as evidence overcoming plaintiff's prima facie case. Farmer v. Calvert Lith. Co., Fed. Cas. 4,651 (C. C. Mich.); Lake Shore & M. S. Ry. v. Felton, 103 F. 227 (C. C. А. 6).

[15] It is also argued that the bill does not show compliance with the Copyright Act, which requires in section 12 (17 USCA § 12) the deposit of "two complete copies of the best edition thereof then published." The allegation in the bill omits the italicized words, alleging the deposit of "two copies of the best edition of said picture." A copy of a best edition of a picture must necessarily be a complete copy. That the picture was published is directly averred in the fourth paragraph. While the copyright law must be strictly complied with, no servile following of its exact terminology is required. See Bentley v. Tibbals, 223 F. 247 (C. C. A. 2). We regard the objection as without merit, and mention it merely to show that it was not overlooked.

[16] The plaintiff was requested by defendant to produce the original copies deposited in the Copyright Office. This was not done because, after being returned to plaintiff from the Library of Congress, they had been destroyed when plaintiff's office was moved. The defendant now contends that the plaintiff has failed to establish the identity of its copyright, because neither the original picture nor the copies deposited in the Copyright Office were produced, and because Exhibit A, which purports to be a copy thereof, was not shown to be such by any one having adequate knowledge. Even if we lay aside as a legal conclusion the affidavit of the law clerk that Exhibit A is a print of the copyrighted picture, it remains true that Exhibit A bears the same title and the name of the same author as does the copyrighted picture, and that the description of the copyrighted picture in the bill of complaint correctly describes the picture shown as Exhibit A. The certificate of registration states that the picture is entitled, "Song of the Bluebird," that the author is Kenyon, and that the first publication was December 26, 1924, all as alleged in the bill of complaint. If Exhibit A is not the copyrighted picture, it means that plaintiff has substituted for the copyrighted picture another picture by the same author, with the same title and corresponding in general description, and has fraudulently imprinted a notice of copyright thereon. This is an assumption we should be slow to make, without any proof whatever.

Prima facie, the proof that Exhibit A was a copy of the registered picture was enough. (17-20] It is further contended by defendant that plaintiff has failed to prove compliance with section 18 of the act (17 USCA § 18) in respect to notice. The bill avers that each and every copy of the picture "has carried this legend"-referring to the copyright notice set out in paragraph 4 and further alleges in paragraph 5, upon information and belief, that upon every published copy of the picture there has been inscribed the required notice. The answer denies that plaintiff has complied with the requirements of the act, and asserts it has published copies of the picture without notice of copyright. The affidavit of Mr. Bendien, defendant's president, also states:

"The plaintiff herein is a calendar manufacturer, and when reproductions of plaintiff's said picture were put on the market they were applied to calendars. I remember seeing these calendars for the year 1926, which were without any copyright notice whatsoever. It was for this reason that I took up the matter of obtaining the right to reproduce copies of this picture in print form with the plaintiff.

Five copies of the picture were presented as exhibits by defendant, bearing no notice of copyright. One of these is affixed to a form for a calendar, and on the calendar form is printed plaintiff's name. None of the other copies bears any name. It is not enough to show that the picture was without the statutory notice when it came into the defendant's possession; it must appear that it left the plaintiff's possession in that condition. Falk v. Gast Lith. & Eng. Co., 54 F. 890 (C. C. A. 2). Bendien's affidavit is open to the same objection. It merely shows that the calendars he saw in 1926 lacked the notice. There is no evidence in the record to show where any of these exhibits came from, or to connect plaintiff with them in any way, unless the imprint of plaintiff's name upon the calendar form is sufficient to do so with respect to that one. The appearance of plaintiff's name upon this may be some evidence that it emanated from plaintiff's establishment. See Wigmore, op. cit. §§ 150, 150a. But it is not sufficient, in the absence of other testimony connecting plaintiff with it, to upset the holding of the court below. See Falk v. Gast Lith. & Eng. Co., 40 F. 168 (C. C. N. Y.). No calendar is attached to the calendar form. Indeed, an inspection of it leaves us in some doubt whether it is more than a sample advertisement, from which dealers might place orders for calendars mounting the picture. If merely a

23 F.(2d) 163

sample, it did not require the statutory notice. See Werckmeister v. Springer Lith. Co., 63 F. 808 (C. C. N. Y.); Stecher Lith. Co. v. Dunston Lith. Co., 233 F. 601 (D. C. Ν. Υ.).

[21, 22] Under the former law it was provided that no person should maintain a suit for injunction, unless he affixed to the several copies of every edition the statutory notice. Rev. St. § 4962. Even an ineffectual attempt to affix the notice barred suit against an infringer with knowledge of the plaintiff's claim of copyright. Thompson v. Hubbard, 131 U. S. 123, 149, 9 S. Ct. 710, 33 L. Ed. 76. The act now in force has introduced an amelioration. Section 9 (17 USCA § 9) requires notice to be affixed to each copy. Section 18 gives the form of notice, and section 20 (17 USCA § 20) provides what happens in case of an inadvertent omission of the notice, as follows:

We cannot say the injunction was improvidently granted. This does not preclude defendant from establishing upon final hearing, if it can, that plaintiff has published copies of the picture without notice of its copyright. Whether the effect of such proof will, under the present act, put upon plaintiff the burden of proving the omission to have been inadvertent, or what the effect of failure to prove the omission inadvertent, we need not now say. See Weil, Copyright Law, 349, 350. No decision under the present law has come to our attention.

The decree is affirmed, with costs.

HAM BOILER CORPORATION v. HUGO
et al.

Circuit Court of Appeals, Second Circuit.
December 19, 1927.

No. 63.

"Where the copyright proprietor has sought to comply with the provisions of this 1. Patents 328-1,272,883, claim 1, for ar

title with respect to notice, the omission by accident or mistake of the prescribed notice from a particular copy or copies shall not

rangement of ham boiler parts, held not infringed.

Adelmann patent, No. 1,272,883, claim 1, for certain arrangement and combination of parts

invalidate the copyright or prevent recovery of ham boiler, held not infringed.

for infringement against any person who, after actual notice of the copyright, begins an undertaking to infringe it, but shall prevent the recovery of damages against an innocent infringer who has been misled by the omission of the notice; and in a suit for infringement no permanent injunction shall be had unless the copyright proprietor shall reimburse to the innocent infringer his reasonable outlay innocently incurred if the court, in its discretion, shall so direct."

Under this section, if the plaintiff "has sought to comply," he may enjoin an infringer who had actual knowledge, even though copies of the picture have inadvertently been published without the notice. Plaintiff's averment that each copy has carried the notice justifies a finding that he has sought to comply. Do defendant's affidavits and exhibits raise sufficient doubt, so that the granting of a preliminary injunction was an abuse of discretion? We think not. Defendant's affidavits and exhibits are consistent with the view that any copies omitting notice were published inadvertently or without plaintiff's authority. There is no allegation in answer or affidavit that plaintiff intentionally omitted the notice. None of the exhibits are connected with the plaintiff. Actual notice of the copyright prior to the infringement is brought home to the defendant. Therefore we think the plaintiff made out a prima facie case for the injunction.

2. Patents328-1,497,885, claims 1 and 3, for arrangement of ham boiler parts, held not infringed.

Adelmann patent, No. 1,497,885, claims 1 and 3, for certain arrangement of parts of ham boiler, held not infringed.

3. Patents 167 (11/4) - Where disclosure of specification presents only trivial variation over prior art, patentee should be literally confined to detail he presents.

Where disclosure of specification presents nothing but a trivial variation in detail over prior art, patentee should be literally confined to detail which he presents.

4. Patents 168 (21/4) -Patentee's action in withdrawing claim and substituting other words prevents him from contending for interpretation based on language of original claim in infringement suit.

Action of patentee of arrangement of ham boiler parts in withdrawing claim, embracing in general "an outwardly projected flange," and substituting for that element the words "portions of the flange being deflected downward, forming engagement lips," prevents him from contending in infringement suit for interpretation based on language of original claim,

Appeal from the District Court of the United States for the Southern District of New York.

Action by the Ham Boiler Corporation against Herman Hugo and another. From a decree holding that Adelmann patent, No. 1,272,883, claim 1, and Adelmann patent, No. 1,497,885, claims 1 and 3, were valid and

infringed by defendants, defendants appeal.

Reversed.

Norman H. Gerlach, of Chicago, Ill. (Fritz Ziegler, Jr., of New York City, and Melville Church, of Washington, D. C., of counsel), for appellants.

Wylie C. Margeson and William D. Sporborg, both of New York City, for appellee.

Before MANTON, L. HAND, and AUGUSTUS N. HAND, Circuit Judges.

AUGUSTUS N. HAND, Circuit Judge. The patents in suit relate to inventions in meat, and especially in ham boilers, in which there had long been a substantial development, which had progressed from a press with open ends, in which the juices were lost, to closed receptacles. Earlier patents show a metal box to hold the ham, a telescopic cover, a crossbar over the cover, adjustable and detachable locking devices between the bar and the box, and a cover resiliently held against the ham so that it may rise and fall as the ham contracts and expands in cooking. To produce a ham that is solid, and not stringy, pressure is required. The boiling swells it, and as it cools it shrinks. To keep it under pressure, and preserve its shape to the fullest extent before removal from the receptacle, the cover must not only be under pressure, but must follow responsively the movement of the ham as it rises and recedes.

In boiling hundreds of hams in a large establishment, the convenient adjustment of the receptacle, the bar, and the cover is manifestly important, and each patent states that the "invention consists in the arrangement and combination of parts."

[1] The only claim relied on in the first patent is claim 1, which reads as follows:

"1. In a ham boiler, the combination of a body receptacle having formed as an integral part of each end a vertical series of rack teeth which project outward and downward, a cover for the receptacle telescoping therewith, a bar having ends projecting over and beyond the vertical planes of the racks aforesaid, members pivoted to the ends of the bar and having hooked co-operation with the rack teeth to hold the bar in fixed adjusted position with respect to the body, and resilient means interposed between the cover and the bar."

It is quite clear that in this case the field of invention is very narrow. This is recognized by the specification itself, which not only says that the "invention consists in the arrangement and combination of parts," but refers to Adelmann's earlier patents. The

only differences between patent No. 1,272,883 and Adelmann's patent No. 1,206,494, referred to, are that there were in the earlier patent:

(1) No vertical series of rack teeth integral with the ends of the receptacle body and hooks pivoted to the bar; but, instead, pivoted teeth designed to engage with a series of openings in dogs pivoted to the crossbar.

(2) Instead of a rigid crossbar connected with the cover by bolts and coil springs around the bolts to press the cover, so as to put the ham under pressure, a flexible bar fixed to the cover by bolts which will act resiliently to press the cover downward on the ham.

(3) Instead of having the ends of the bar projected beyond the verticle planes of the racks, so that the dogs are hung to swing by gravity away from the rack teeth, dogs which are pivoted to the ends of the bar, but not beyond the plane of the lugs on the receptacle ends.

It is difficult to see why the operation of the devices called for by these two patents is not the same in result. The difference in details of construction may give the patent in suit certain advantages of convenience, though boilers made under the earlier patent are still on the market in substantial numbers. They have dogs pivoted to a flexible spring bar and adjusted by wing nuts engaging lugs fixed to the box, instead of dogs pivoted to a rigid bar and engaging with rack teeth on the ends of the box. In the earlier patent the flexible bar is the resilient means which responds to the action of the ham under pressure, while in the patent in suit the coiled springs serve this purpose. To be sure, the flexible bar, while a resilient means adapted to the above purpose, is not in the language of claim 1, a "resilient means interposed between the cover and the bar"; for the bar, being flexible, required no such resilient means, but the coil springs around the bolts in the patent in suit were a "resilient means" so interposed, readily suggested by such prior art as the patents to Briggs, No. 1,079,160, and Butz, No. 1,165,223, and the French patents, No. 449,376 to Pavard and No. 510,709 to Chaignet.

The French patent to Le Bourhis, No. 465,708, narrows the field of invention in these ham boilers so much further as to leave little to the inventor beyond his precise structure. The Le Bourhis patent discloses a receptacle with a series of lugs or rack teeth integral with each end. Into them are hooked stirrups or steps at the lower ends of coil springs, at the upper ends of which are similar stirrups, fastened to lugs on the box cover or counterplate. The function of the springs consists in moving the counterplate toward the bottom of the box, and consequently compressing as strongly as may be desired the substances placed therein.

23 F.(2d) 163

Furthermore, the Patent Office referred to the patents to Butz and Briggs, and the French patents to Le Bourhis and Pavard, and rejected all the claims of this patent in the beginning. The first claim was then amended, so as to read that the vertical series of rack teeth formed an integral part of each end of the receptacle, and that the ends of the bar projected "beyond the vertical planes of the racks." This was accompanied by a cancellation of original claim 2, which provided generically for "rack and pawl means acting between the ends of the receptacle and the ends of the crossbar to adjustably interlock the crossbar with respect to the receptacle."

Now, defendants' device consists of a box, a telescopic cover, dogs each with a series of rack teeth adapted to engage a continuous flange forming the lip of the receptacle, links between the upper ends of the dogs, lugs fixed to the cover, and springs coiled around the pivots between the inner ends of the links and the lugs, exerting a resilient pressure against the contents of the receptacle. The link construction makes it possible for the cover to be further tilted, and to adapt itself more exactly to the shape of the ham than in the patent in suit, where the cover is substantially limited by the slidable bolts to a rectilinear movement.

The defendants' device has no rack teeth integral with the body of the receptacle, and also no bar having ends projecting beyond the planes of the racks. Not only was the amendment to the claim inserted to call for a specific structure of rack teeth integral with the box ends, in order to avoid rejection by the Patent Office, but defendants followed the patent to Rispel, No. 1,208,013, and used toothed racks to engage a flange. Moreover, the very reason for inserting by amendment the provision about having the ends of the bar projecting beyond the plane of the racks was to secure the advantage of having the dogs, when released, swing by gravity away from the teeth. (Specification, patent in suit, line 55). The dogs in defendants' device are not hung so that they would so swing.

But more decisive than all this is the indubitable fact that, even if defendants' links, in spite of the history of the art and of the action in the Patent Office, were regarded as the patentable equivalent of a crossbar, yet the "members pivoted to the ends of the bar

and having hooked co-operation with the rack teeth" would not and could not hold such "bar in fixed adjusted position with respect to the body" of the receptacle as called for by the claim. The bar shown in the specification of the patent in suit is rigid, and is in a fixed position as soon as the dogs engage with the rack teeth. The whole framework is then solid and fixed in every sense. The only movement is in the cover and its bolts slidably adjusted to the bar. The coil springs. around the bolts then allow the cover a substantially rectilinear movement up or down, as the relative pressures of the springs and of the substance that is being cooked may cause the bolts to rise or fall through the slots in the bar.

On the other hand, in defendants' structure the links move up and down with the cover like the resilient bar of Adelmann's patent, No. 1,206,494, which responds to the expansion and contraction of the substance cooked. Nor are defendants' resilient means "interposed between the cover and the bar," in the sense called for by the claim in suit. A movable cover and a fixed bar is there required. But the defendants substitute coil springs in the links for the spring bar of the earlier patent. The resilient links cannot at the same time be the equivalent of the bar and the interposed resilient means of the claim. The limitation of the claim to a "series of rack teeth integral with the receptacle ends," to a bar held "in fixed adjusted position," and to bar ends projecting "beyond the vertical planes of the racks," was made to escape rejection in the Patent Office and to secure the patent. Such action, especially in view of the narrow field of invention, requires the severest limitation of the claim to the details indicated. But this is more than a mere technical argument. Swinging links, teeth on the dogs, and dogs not released by gravity, were no part of the invention sought to be covered by claim 1. Defendants have followed other prior art. In Rispel, No. 1,208,013, the rack teeth are shown engaging with a flange, instead of integral with the end of the box. A locking device more like defendants' than that of the patent in suit is also shown in Figures 3 and 4 of the Adelmann patent, No. 1,206,494, and in the patent to Le Bourhis there is, as in defendants' boiler, no crossbar, but lugs on the ends of the cover plate from which the coiled springs are hung, furnishing resilient means responsive to the action of the meats that are being cooked. But these resilient means, like those of defendants', are not interposed between the cover and a bar. Not only are these things

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