tional copies.'' 26 But it has been declared that this rule is not applicable in all cases,27 and it may be doubted whether it is applicable in any, unless aided by further proof, for obviously it permits the recovery of purely speculative damages.28 It has also been said that the measure of damages is the profits made by the infringer;29 but this is a confusing and incorrect use of the terms "profits". and "damages," for there is no necessary relation between profits gained by defendant and losses suffered by plaintiff,30 and in addition, the right to recover defendant's profits from the use of plaintiff's property rests on a wholly different principle from that underlying an award of compensatory damages. Of course the extent of defendant's sales is relevant on the question of damages.32 A statement by one of defendants that he had disposed of a certain number of copies of the work is not available against the other defendant, 31 26. Pike v. Nicholas, L. R. 5 Ch. 251, 260, 7 ERC 108. 27. Huebsch v. Arthur H. Crist Co., 209 Fed. 885; Scribner v. Clark, 50 Fed. 473 [aff 144 U. S. 488, 12 SCt 734, 36 L. ed. 514]; Smiles v. Belford, 23 Grant Ch. (U. C.) 590. 33 a corporation, although the former is an officer of such corporation. A diminution of sales consequent on the publication of the infringement may be shown as a basis for estimating damages.34 [432] 6. Of Profits. The burden of proving profits sought to be recovered rests on plaintiff.35 The present statute provides that in proving profits plaintiff shall be required to prove sales only, and that defendant shall be required to prove every element of cost which he claims.36 In the absence of statute it has been held that plaintiff makes a prima facie case by showing the selling price and the usual manufacturer's cost. Where there is no proof of the gross receipts there can be no recovery. In cases of partial infringement, the burden of segregating the profits due to the infringement from those due to noninfringing parts of the work is on defendant,39 or at least plaintiff satisfies the burden resting on him when he estabtion against an author for breach of contract to supply a manuscript, a witness was allowed to testify what the probable profits would have been, and judgment was given on that basis. Gale v. Leckie, 2 Stark. 107, 3 ECL 337. 38 | the damage sustained by the proprietor of an expensive work from the invasion of his copyright by the publication of a cheaper book. It is impossible to know how many copies of the dearer book are excluded from sale by the interposition of the cheaper one. The Court, by the account, as the nearest approximation which it can make to justice, takes from the wrongdoer all the profits he has made by his piracy, and gives them [all] to the party who has been wronged. In doing this the Court may often give the injured party more, in fact, than he is entitled to, for non constat that a single additional copy of the more expensive book would have been sold if the injury by the sale of the cheaper book had not been committed. The Court does not give anything more than] the account." Colburn v. Simms, 2 Hare 543, 560, 24 Eng Ch 543, 67 Reprint 224. 28. Woodman v. Lydiard-Peterson Co., 192 Fed. 67 [aff 204 Fed. 921, 123 CCA 243 (reh den 205 Fed. 900, 126 CCA 434)]; Colburn v. Simms, 2 Hare 543, 24 EngCh 543, 67 Reprint 224. [a] Illustration.-"It is suggested that, a thousand of these maps of the defendant having been distributed, the complainant has lost a thousand purchasers. That is on the assumption that, if the defendant has not given away a map to each one of these thousand men, the complainant would have gone to each of them and sold him a map for a dollar or 50 cents, and thereby made a profit. But such a presumption is altogether too violent. There is no presumption that each of these men would have gone to the complainant and paid him a dollar or 50 cents for his map, and there is no showing that they would. There is a [a] Cheap infringing editions (1) "The damages, etc., cannot be large. The leaflet sold for 3 cents per copy, while the book sold for $1.60 per copy, and it cannot be inferred that the sale of a leaflet prevented a sale of a copy of the book." Huebsch v. Arthur H. Crist Co., 209 Fed. 885, 894. (2) "I give no account of the damages caused to the plaintiff by the sale, as it seems to me to be impossible to ascertain them. The inquiry could not proceed on the assumption that every one who bought a copy of the cheap edition would have bought one of the more costly, and if some assumption of that kind were not made, there would be no data from which to ascertain the damages." Smiles V. Belford, 23 Grant Ch. (U. C.) 590, 605 (per Proudfoot, V.). (3) "The proof in this case shows, and it is a conceded fact, that the infringing book published by the defendants was a cheap edition intended for popular sale at news stands, a small edition of a little over 9,000 copies having been sold at about 60 cents a copy, and a still cheaper edition having been put upon the market at 10 cents a copy, of which the defendant sold 60,671 copies. While the rule contended for as to the measure of damages may have been a proper one in the case of Pike v. Nicholas, L. R. 5 Ch. 251, 7 ERC 108, it seems to me it is not the proper rule in this case, inasmuch as the defendants only used part of the material of the complainant's book, and as their edition was much cheaper one, and their sales at a very much lower price. If the defendants had put their editions upon the market at the same price at which the complainant sold his books, the rule in Pike v. Nicholas might be adopted here; but it does not follow that if defendants had put upon the market such editions of their book as were published by the complainant they could, or would, have sold over 70,000 copies. The fair and rational presumption from the facts is that is that it was the low price at which the defendants' books were offered in the market that caused these large sales. It seems to me the just and proper rule in this, as in all other cases of this character, is to ascertain the profits the defendants made by their piracy of the complainant's work, and fix that as the measure of the complainant's damages.' Scribner v. Clark, 50 Fed. 473, 475 [aff 144 U. S. 488, 12 SCt 734, 36 L. ed. 514]. (4) "The Court does not, by an account, accurately measure no way of determining whether the complainant could have got into communication with these men so as to have sold them one map." Woodman v. Lydiard-Peterson Co., 192 Fed. 67, 71 [aff 204 Fed. 921, 123 CCA 243 (reh den 205 Fed. 900, 126 CCA 434)1. Speculative profits as element of damage see Damages [13 Cyc 49]. 29. Scribner v. Clark, 50 Fed. 473 [dist Pike v. Nicholas, L. R. 5 Ch. 251, 7 ERC 108]; Muddock v. Blackwood, [1898] 1 Ch. 58; Colburn v. Simms, 2 Hare 543, 24 EngCh 543, 67 Reprint 224; Bernard v. Bertoni, 14 Que. L. 219. 30. See also Patents [30 Cyc 1024]. 37 36. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25); Ginn v. Apollo Pub. Co., 228 Fed. 214. [a] Construction of statute.-"In copyright as in patent cases, the purpose is to find the amount of damages or of profits. The difference in the two classes of cases is a practical one. In patent cases, the profits are found by contrasting the amount of proceeds of sales made with the total cost of production. In copyright cases, under the act of 1912 (Act Aug. 24, 1912, c. 356. § 25 (b), 37 Stat. 489 [Comp. St. 1913 § 9546], the plaintiff may show only the receipts, or debit side of the account, and put upon the defendant the burden of proving the cost of production, or the plaintiff may exact the penalty. A successful plaintiff is thus given something in the nature of certain options. He may take damages and profits or the penalty imposed. If he takes profits, he may avail himself of the method of proving profits given by the act of 1912. This method, however, is not exclusive. Whatever method he adopts, he may apply it by calling upon the defendant to account, or by proving either sales or profits through and by evidence introduced or witnesses called by him. He may require the production of books and papers, and in proper cases offer them as part of his evidence in proof of either sales or profits. He may compel such production either by notice, or through an order to produce, or by a subpena duces tecum. Certain legal consequences follow the method adopted, which differ if some one other than a party is subpoenaed." Ginn v. Apollo Pub. Co., 228 Fed. 214, 215. 37. Myers v. Callaghan, 24 Fed. 636 [mod on other grounds 128 U. S. 617, 9 SCt 177, 32 L. ed. 547]. a [a] Reason for rule.-While court will not presume that all the money received by a piratical publisher on the sale of his books is profit, still, as the proof as to the cost of producing the work is wholly in the control of defendant, the complainant makes a prima facie case of right to recover by showing the selling price and the usual manufacturers' cost. Myers v. Callaghan, 24 Fed. 636 [mod on other grounds 128 U. S. 617, 9 SCt 177, 32 L. ed. 547]. 38. Gilmore v. Anderson, 42 Fed. 267 (where defendant's costs were shown, but not his receipts). 39. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547; Hartford Printing Co. v. Hartford Direct lishes that the infringer has so conducted the affair as to make impossible even an approximate or fairly estimated apportionment, in which case the infringer must account for, and pay over, all the profits earned on the entire work." 43 46 41 57 [§ 434] 2. Reference to Master. Where the determination of the question of infringement involves much labor, the common practice is to refer the matter to a master for examination and report.55 Such a reference may be made for the purposes of a preliminary injunction,56 and ordinarily the reference should be made before the final hearing, although a reference may be ordered even after final hearing, at which infringement has been found, for the purpose of ascertaining the nature and extent of such infringement," assess damages or profits." Cases arise where the court will refuse to order a reference, and will proceed to compare the respective works and to ascertain the details and extent of the infringement for itself, as where it can safely do so without an excessive expenditure of time and labor.62 The opinion of the master on the question of infringe [433] V. Trial or Final Hearing-1. In General. In actions at law for infringement, all questions of fact arising on the evidence are for the jury.2 In equity the court determines both the law and the facts, although formerly equity sometimes refused to act until the rights of the parties had been established at law.* Questions of law are of course for the court.45 Questions of fact include: Questions as to the legibility of the copyright notice as actually used by plaintiff;* as to the artistic quality of pictures; as to whether a photograph is a mere manual reproduction of the subject matter, or an original work of art; as to plaintiff's authorship of the copyrighted work; as to copying of plaintiff's work by defendant;50 as to substantial identity between the two works;" as to substantial similarity between plaintiff's work and ory, etc., Co., 146 Fed. 332. See also | & Co., Ltd., supra (holding, in the supra 354. particular case, that there was no infringement). 40. Westinghouse Electric, etc., Co. v. Wagner Electric, etc., Co., 225 U. S. 604, 32 SCt 691, 56 L. ed. 1222, 41 LRANS 653 [expl Garretson v. Clark, 111 U. S. 120, 4 SCt 291, 28 L. ed. 371 (a leading case)] (a leading case involving infringement of a patent); G. & C. Merriam Co. V. Saalfield, 198 Fed. 369, 117 CCA 245 (unfair competition in use of title "Webster's Dictionary"). 41. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547; Ginn v. Apollo Pub. Co., 228 Fed. 214; Hartford Printing Co. v. Hartford Directory, etc., Co., 146 Fed. 332. See also supra § 354. 42, Planche v. Braham, 4 Bing. N. Cas. 17. 33 ECL 574, 132 Reprint 695. 8 C. & P. 68, 34 ECL 614. 43. Pike v. Nichols, L. R. 5 Ch. 251, 7 ERC 108; Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080; Murray v. Bogue, 1 Drew. 353. 61 Reprint 487; Jarrold v. Houlston, 3 Kay & J. 708, 69 Reprint 1294; Sheriff v. Coates, 1 Russ. & M. 159, 5 EngCh 159, 39 Reprint 61; Spiers v. Brown, 6 Wkly. Rep. 352. 44. See supra § 347. 45. Journal Pub. Co. v. Drake, 199 Fed. 572, 118 CCA 46. [a] Directing verdict."Where plaintiff has clearly made out his case, and there is no evidence to the contrary, it is proper for the court to direct a verdict in favor of the plaintiff." Journal Pub. Co. v. Drake, 199 Fed. 572, 575, 118 CCA 46 [cit Cyc]. 46. Bolles v. Outing Co., 77 Fed. 966, 23 CCA 594, 46 LRA 712 [aff 89 Fed. 1014 mem, 32 CCA 604 mem, and aff 175 U. S. 262, 20 SCt 94, 44 L. ed. 156]. 47. Hegeman v. Springer, 110 Fed. 374, 49 CCA 86 [app 189 U. S. 505, 23 SCt 849, 47 L. ed. 921] (where the question of the artistic quality of theatrical advertising lithographs was left to the jury). 48. Bolles v. Outing Co., 77 Fed. 966, 23 CCA 594, 46 LRA 712 [aff 89 Fed. 1014 mem. 32 CCA 604 mem (aff 175 U. S. 262, 20 SCt 94, 44 L. ed. 156)]. 49. Reed v. Carusi, 20 F. Cas. No. 11,642, Taney 72. 50. Maxwell v. Goodwin, 93 Fed. 665; Chils v. Gronlund, 41 Fed. 145; Blunt v. Patten, 3 F. Cas. No. 1,579, 2 Paine 393 (qui tam action for infringement of chart); Hanfstaengl v. H. R. Baines & Co., Ltd., [1895] A. C. 20. 24 [aff [1894] 2 Ch. 1] (artistic works). "It must always be a question of fact whether what is complained of as an infringement is a copy of the design." Hanfstaengl v. H. R. Baines 49 .51 61 51. Encyclopædia Britannica Co. v. American Newspaper Co., 130 Fed. 460 [aff 134 Fed. 831, 1024, 67 CCA 281]; Maxwell v. Goodwin, 93 Fed. 665. 52. Dam v. Kirk la Shelle Co., 166 Fed. 589 [aff 175 Fed. 302, 99 CCA 392. 20 AnnCas 1173, 41 LRANS 1002]. 53. Planche v. Braham, 4 Bing. N. Cas. 17, 33 ECL 574, 132 Reprint 695, 8 C. & P. 68, 34 ECL 614. 54. Dickens v. Lee, 8 Jur. 183; Sweet v. Cater, 11 Sim. 572, 34 EngCh 572, 59 Reprint 994. Edward 55. West Pub. Co. V. 56. Sampson, etc., Co. v. Seaver- "It is not unusual in such cases to send the motion to a master to take testimony, but nothing would be gained thereby in this case. The testimony which would be produced before the master is the very same testimony which would be produced on final hearing, and it would consume as much time to take it in either 59 way." Dun v. International Mercantile Agency, supra. we [a] When reference dispensed with.-"It would have been more satisfactory if the case had gone to a special master for a report as to all those parts of the Miller compilation which were alleged to have been substantially appropriated from Howell's Annotated Statutes. The court below was left to make such comparison for itself, and the labor required in that way has fallen upon this court. Under ordinary circumstances, should remand the cause, with directions to send the case to a master, before the application for an injunction was finally disposed of. But we refrain from adopting that course in deference to the suggestion on behalf of the state that the public interests might be injured by any serious delay in determining the case." Howell v. Miller, 91 Fed. 129, 138, 33 CCA 407. 57. Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1. [a] "The settled practice in equity is, where the works are voluminous and of a complex character, containing, as in this case, much original matter mixed with common prop erty, the cause will, at some stage where the court, under such circum- 58. Lawrence v. Dana, 15 F. Cas. No. 8.136, 4 Cliff. 1; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380. 59. West Pub. Co. V. Edward Thompson Co., 176 Fed. 833, 100 CCA 303. 60. See supra § 355. 61. Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1; Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080; Murray v. Bogue, 1 Drew. 353, 61 Reprint 487; Jarrold V. Houlston, 3 Kay & J. 708, 69 Reprint 1294; Anglo-Canadian Music Pub. Assoc. v. Somerville, 20 CanLT OccNotes 120, 19 Ont. Pr. 113. 62. Sheriff v. Coates, 1 Russ. & M. 159, 5 EngCh 159, 39 Reprint 61. [a] Comparisons of copies and originals.-Notwithstanding Bell V. Whitehead, 3 Jur. 68, if the court is led to the conclusion that there has been a piracy, it will not grudge any labor that may be requisite in order to ascertain how far the injunction should extend. Jarrold v. Houlston, 3 Kay & J. 708, 69 Reprint 1294. 64 ment may be taken in connection with his report 65 63. Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1. [a] The master may give his opinion as to the extent of the injury suffered by plaintiff. Greene V. Bishop, 10 F. Cas. No. 5,763, 1 Cliff. 186; Osgood v. Allen, 18 F. Cas. No. 10,603, Holmes 185. 64. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547; Webb v. Powers, 29 F. Cas. No. 17,323, 2 Woodb. & M. 497. [a] Thus, where the master reported that defendant's work was an abridgment of that of plaintiff, and not piratical, the court found that a part of the work was not an abridgment but a compilation borrowed from plaintiff's work, and granted an injunction. Story v. Holcombe, 23 F. Cas. No. 13,497, 4 McLean 306. [b] Slight variance in two reports. Where one master, accounting for one set of volumes, credited defendants with twelve and seveneighths per cent of the sales for expenses, and another master, accounting for a second set, credited twelve per cent, the conclusions, being so nearly alike, were allowed to stand. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547. 65. Huebsch v. Arthur H. Crist Co., 209 Fed. 885; Hills v. Hoover, 142 Fed. 904; Patterson v. J. S. Ogilvie Pub. Co., 119 Fed. 451; Lawrence V. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1; Cartwright v. Wharton, 25 Ont. L. 357, 20 OntWR 853, 1 Dom LR 392. 66. Huebsch V. Arthur H. Crist Co., 209 Fed. 885; Patterson v. J. S. Ogilvie Pub. Co., 119 Fed. 451, 453. "The usual practice is to enter an interlocutory decree providing for an injunction and sending it to a master to take proof of damages or profits. Upon the return of the master's report a final decree disposes of the question of damages. Complainant apparently tried the case on the theory that he was to make proof of damages at this stage. The record does not entitle him to recover more than the nominal amount, six cents. Nevertheless, if he now elects to take an interlocutory decree, and is willing to pay the master's fees, he may have the opportunity to show, if he can, that he is entitled to recover substantial damages." Patterson v. J. S. Ogilvie Pub. Co., supra. 67. See Equity [16 Cyc 471]; Judgments [23 Cyc 623]. [a] Consent decree in compromise and settlement.-A decree in a suit for the infringement of a copyright entered on compromise discharging liability for the infringement settles all liability therefor. Edward Thompson Co. v. Pakulski, 220 Mass. 96. 107 NE 412. Former adjudication: As a defense see supra § 391. As evidence of copyright see supra § 414. 68. Hills v. Hoover 142 Fed. 904. 69. Act March 4. 1909 (35 St. at L. 1075 c 320 § 40); Hass v. Leo Feist, Inc.. 234 Fed. 105. 109; Mills, Inc. v. Standard Music Roll Co.. 223 Fed. 849 [aff 241 Fed. 360]; Strauss 66 v. Penn Printing etc., Co., 220 Fed. "There must be costs, since the statute requires it; but there will be no attorney's allowance, for that rests in discretion." Haas v. Leo Feist, Inc., supra. But see Bachman v. Belasco, 224 Fed. 817, 140 CCA 263 [aff 224 Fed. 815] (where a successful defendant was denied costs because plaintiff was justified in believing that defendant had infringed). [a] Similar English statutes were construed to give a successful plaintiff an absolute right to costs. See infra 437. 70. Act March 4, 1909 (35 St. at L. 1075 c 320 40); S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37; Haas v. Leo. Feist, Inc., 234 Fed. 105; Gross V. Van Dyk Gravure Co., 230 Fed. 412, 413, 144 CCA 554; Mills, Inc. V. Standard Music Roll Co., 223 Fed. 849, 853 [aff 241 Fed. 360]; Strauss v. Penn Printing, etc.. Co., 220 Fed. 977, 980; Universal Film Mfg. Co. V. Copperman, 218 Fed. 577, 581, 134 CCA 305 [aff 212 Fed. 301]; Huebsch v. Arthur H. Crist Co., 209 Fed. 885; Woodman v. Lydiard-Peterson Co., 192 Fed. 67 [aff 204 Fed. 921, 123 CCA 243] (fifty dollars allowed). [a] Considerations affecting allowance of attorney's fees.-(1) Where the owners of a copyright, which was infringed, did not make objections on first discovering the infringement, and thus allowed defendant to expend large sums of money in advertising, an allowance of attorney's fees, being a matter of discretion, will not, in a suit for injunction and an accounting, be granted. Hass v. Leo Feist, Inc.. 234 Fed. 105. (2) "Under section 40 of the act (Comp. St. 1913 § 9561), the court may in its discretion fix a counsel fee, which I do fix at $350. considering the fact that the case has already once been to the Circuit Court of Appeals and has been tried. However, as this is discretionary, I shall add this to the decree only against Rochlitz, Seligman, and the Seligman Company, because the Van Dyk Company, though concededly an infringer, was an innocent infringer, and it does not seem just to me to charge them with that element. I will make the same disposition as to costs." Gross v. Van Dyk Gravure Co., supra. (3) "The defendant did, however, contest the right of the plaintiff to a preliminary injunction and to recover on final hearing. A motion to dismiss the bills was also made on its behalf. Under these circumstances, I think that the plaintiff's counsel is entitled to a reasonable counsel fee, as provided in section 40 of the act of 1909. This I fix at the sum of $150, to be taxed as part of the costs.' Mills, Inc. v. Standard Music Roll Co., supra. (4) "Under the circumstances in this case the complainant is entitled to a reasonable attorney's fee as part of the costs under the provisions of section 40 or the act. If in the answer the defendant had admitted that the comgranted herein, as was conceded at the trial, it is questionable whether an attorney's fee would have been allowed. The answer, however, compelled the complainant to sustain by proof its right to any relief whatever. Under these circumstances, and taking into consideration, on the other hand, that the issues involved are clearly defined and simple, and raise no intricate questions of law, an attorney's fee of $75 is awarded as part of the costs.' Strauss V. Penn Printing, etc., Co., supra. (5) "The counsel fee provided for in the Copyright Act is merely a revival of old practice. I am not informed that it is known what reasons induced Congress to revive old practice in respect of copyrights only. Having, therefore, nothing but the text of the law to guide me, I do not regard the congressional provision as punitive, and I assume that the intent of Congress was merely to compensate counsel for professional labors. Consequently inquire, not only into the extent of professional labor known to the court, but the importance of the litigation, both as to the principle involved and the pecuniary magnitude of the case. In my judgment the professional labor in this inatter was out of all proportion to the principle or the amount of money involved. Whenever the Legislature makes a new statute on an old subject, it is a hard matter to distinguish between new legislation and laws re-enacted. Therefore, from this standpoint, Mr. Frank's labors have been great. On the other hand, if I am right in my interpretation of the Copyright Act, the future importance of this litigation is but small, and the amount of money involved is certainly trivial. Having looked at the matter from these viewpoints. I conclude that it would be wrong for the court to award to defendants' counsel what it believes would be a larger fee than counsel could charge for his services in such a case had Congress not passed the statute in question. Of course this is delicate ground, for the lack of uniformity among lawyers in respect of their professional charges is notorious. But any judge must be guided by his own, professional faith, and mine is, as applied to this case, that no lawyer could charge a client for this case alone more than $250. It may well be that some association or commercial union regards this case as important for their common interest, but that should not affect decision. If persons other than the legal parties to a cause are interested in its event, let them pay. The counsel fee awarded is therefore $250." Universal Film Mfg. Co. v. Copperman, supra. (6) Where a suit for infringement of a copyright covering a commercial directory required much labor to prove an infringement, and the trial lasted for several days, requiring an exhaustive comparison of the two books, and re 79 84 81 duced defendant to incur expense, 90 89 [438] Y. Appeal and Error. Appeals and writs of error in copyright cases are governed by the judicial code,92 the copyright act merely pro [§ 437] 2. Under English and Canadian Statutes. The present English statute provides that the costs of all parties in any proceedings in respect to the infringement of copyright shall be in the absolute discretion of the court.76 This was also the rule under the prior Copyright Act of 1842,77 and under the Musieal Compositions Act of 1888.78 The other copyright acts specifically gave costs to a successful plaintiff as part of the remedy, In and he was entitled to them as of right.78 Canada costs are discretionary in copyright infringement cases.80 In exercising a discretion as to costs, plaintiff may be refused his costs, even though successful, if by his conduct he has insulting in a judgment for plaintiff, tinct musical compositions, and comfor twenty-five hundred dollars, an plainant prevailed only as to one of award of twenty-five hundred dol- such compositions, the trial court lars as attorney's fees was not an did not abuse its discretion in makabuse of discretion. S. E. Hen- ing a division of the costs. Whitdricks Co., Inc. v. Thomas Pub. Co, mark v. Standard Music Roll Co., 242 Fed. 37. 42 (where the court 221 Fed. 376, 137 CCA 184. said: "It has often been held that allowance of counsel fees is a matter peculiarly within the discretion of the court awarding the same. because that court can (and always does) proceed upon its own knowl-fringement edge of the value and extent of the professional service rendered. We have lately approved this rule in New York Central Trust Co. v. U. S. Light, etc., Co., 233 Fed. 420. 147 CCA 356. Discretionary matters are reviewable only when abuse of discretion is shown. Certainly no abuse is here demonstrated, and, having ourselves examined this record, whereof the printed testimony is far less important than the enormous and ill-digested mass of exhibits, requiring much labor to prove an infringement now admitted, we are the less inclined to disagree. There is nothing in Universal Film Mfg., etc., Co. v. Copperman, 218 Fed. 577, 134 CCA 305, especially applicable to this case. In both cases the trial judge inquired as to the value in a particular litigation of the professional services rendered, and fixed them by his own knowledge of the facts and professional custom. [b] Infringement shown but copyright invalid.-Where it appeared that complainants had lost their right to protection by reason of insufficient notices, but the inwas established, defendant was not allowed costs, but each party was required to pay one half of the costs. Record, etc., Co. v. Bromley, 175 Fed. 156. 75. Record, etc., Co. v. Bromley, 175 Fed. 156. See also cases supra notes 72-74. [a] English cases in point. The English decisions in cases where costs are discretionary are in point. See infra § 437. 76. St. 1 & 2 Geo. V c 46 § 6 (2). 77. Upmann v. Forester, 24 Ch. D. 231; Cooper v. Whittingham, 15 Ch; D. 501; Walter v. Steinkopff, [1892] 3 Ch. 489. 78. St. 51 & 52 Vict. c 17 § 2; Carte v. Dennis, 5 Terr. L. 30. 79. Engraving Copyright Act, 1767 (7 Geo. III c 38 § 5), Reeve v. Gibson, [1891] 1 Q. B. 652; Avery v. Wood, [1891] 3 Ch. 115; Hasker v. Wood, 54 L. J. Q. B. 419; Roberts v. Bignall, 3 T. L. R. 552. 80. Church v. Linton, 25 Ont. 131; Music Publishers' Assoc., Ltd. v. Winnifrith. 15 Ont. 164: Allen v. Lyon. 5 Ont. 615. Anglo-Canadian We decline to disturb the award of counsel fees"). 71. See generally Costs [11 Cyc 1]. 72. Record, etc., Co. v. Bromley, 175 Fed. 156; Social Register Assoc. V. Murphy, 129 Fed. 148. 73. Vernon v. Shubert. 220 Fed. 694. [a] Grounds for denial. Where, although [a] Costs awarded.-If, in an action brought under the act relating to copyright, defendant is ordered to render an account or, on default, to pay the sum of one hundred dollars, plaintiff is entitled to the costs of action of the second class. Beullac, Ltd. v. Simard, 12 Que. Pr. 363. 81. Maxwell v. Somerton, 30 L. T. Rep. N. S. 11. an plaintiff's copyright was not infringed, he was led so to believe by a combination of circumstances, and sued for infringement in good faith, costs will not be awarded against him. Vernon V. Shubert, 220 Fed. 694. 74. 82. Walter v. Steinkopff, [1892] 3 Ch. 489. 83. Colburn v. Simms, 2 Hare 543, 24 EngCh 543, 67 Reprint 224; Kelly v. Hodge, 29 L. T. Rep. N. S. 387; Anglo-Canadian Music Publishers Assoc. v. Winnifrith, 15 Ont. 164. [a] Rule applied.-Plaintiff filed a bill to restrain the piracy of a publi Whitmark v. Standard Music Roll Co., 221 Fed. 376, 137 CCA 184; Record. etc.. Co. V. Bromley, 175 Fed. 156; Emerson v. Davies. 8 F. Cas. No. 4,436, 3 Story 768 (where defendant was given the right to elect a trial by jury of the issue of infringement on payment of the cation. After such filing, but before ordinary taxable costs up to such time, the expense of printing the record to be divided between the parties, and the future costs to abide the result of the verdict and decree of the court). [a] Both parties partly successful. Where a suit for the infringement of copyrights involved two dis putting in their answers, defendants burn v. Simms, 2 Hare 543, 24 Eng Ch 543. 67 Reprint 224. 84. Dicks v. Brooks, 15 Ch. D. 22 (where plaintiff was ordered to pay defendant's costs as well as his own). 85. Wall v. Taylor, 11 Q. B. D. 102. 86. Metzler v. Wood, 8 Ch. D. 606. See also Page v. Wisden, 20 L. T. Rep. N. S. 435 (where it was held that, although copyright may be claimed in only part of a work, the whole of which is registered, the part in which copyright is claimed should be distinguished in the bill, as otherwise the costs unnecessarily incurred must be borne by plaintiff). 87. Liverpool General Brokers' Assoc., Ltd. V. Commercial Press Tel. Bureaux, Ltd., [1897] 2 Q. B. 1; Baschet v. London Illustrated Standard Co., [1900] 1 Ch. 73. [a] Rule applied.-(1) Where an action in respect to infringement of copyright fails on the ground of the indecency of the work, and the indecency has been repeated in the infringements, the action will be dismissed without costs. Baschet v. London Illustrated Standard Co., [1900] 1 Ch. 73. (2) Where defendant's work was a flagrant imitation of plaintiff's, he was not allowed his costs, although an injunction was refused because of failure in plaintiff to show title. Cobbett v. Woodward, L. R. 14 Eq. 407. (3) "I have hesitated about costs. It would, perhaps, be unreasonable withhold costs from the defendant, who succeeds; yet there being some cause of action in the plaintiff he should not pay all costs; as a rough way of doing justice, I think that the plaintiff should get his costs on the lower scale." Allen v. Lyon, 5 Ont. 615, 616. to 88. Kelly's Directories, Ltd. V. Gavin, [1901] 1 Ch. 374 [aff [1902] 1 Ch. 631] (where defendant, by lending his name to a publication, led plaintiff to believe that he had "caused" it to be printed); Kelly v. Hodge, 29 L. T. Rep. N. S. 387. 89. Pike v. Nicholas, L. R. 5 Ch. 251, 7 ERC 108; Cobbett v. Woodward, L. R. 14 Eq. 407. 15 90. Cooper v. Whittingham, Ch. D. 501; Weldon v. Dicks, 10 Ch. D. 247; Anglo-Canadian Music. Publishers Assoc. v. Winnifrith, 15 Ont. 164. 91. Cartwright V. Wharton, 25 Ont. L. 357, 20 OntWR 853, 1 DomLR 392; Anglo-Canadian Music Publishers Assoc. v. Winnifrith, 15 Ont. 164. 92 Judicial Code (35 U. S. St. at L. 1087 c 231 §§ 128, 239 240). And see supra § 262. 93 viding for a review on appeal or writ of error in the manner and to the extent provided by law for the review of cases determined in the several courts given jurisdiction in copyright cases. Formerly the supreme court had jurisdiction of appeals and writs of error in copyright infringement cases, ,94 but now the decision of the circuit court of appeals is made final,95 except in cases where the supreme court grants a writ of certiorari,96 or the circuit court of appeals itself certifies questions to the supreme court, in which event that court acquires plenary appellate jurisdiction.97 Of course a constitutional or jurisdictional question, or a question as to the validity or construction of a treaty in respect to international copyright relations, may arise which will support a direct appeal to the supreme court.98 A composite action for injunction and damages, as authorized by the statute,99 will be treated and reviewed on appeal as an equity suit.1 Thus the court will review questions of fact, although subject to the rule that 3 findings of the trial court will not lightly be disturbed. Where the case is taken up by both writ of error and appeal, the bill of exceptions bringing up the evidence may be treated, as also the statement of evidence required by the equity rules.* If it is intended to review findings contained in a master's report, the exceptions to such report must be brought up in the record.5 Where defendant did not appeal, and plaintiff appealed only from the award of damages on the ground of inadequacy, it will be presumed that the finding of liability on the part of defendant was correct, although such matter might be reviewed because necessarily involved in any judgment for plaintiff. An interlocutory order granting or refusing an injunction is appealable. But an order granting a preliminary injunction will not be reversed unless abuse of discretion or mistake is clearly shown. An award of attorney's fees under the statute will not be disturbed unless an abuse of discretion is shown.10 9 XII. IMPORTATION [ 439] A. Prohibition of Importation-1. Piratical Copies. The present statute twice prohibits the importation of any piratical copies of any work copyrighted in the United States,11 but rather curiously does not anywhere provide that such importation shall itself constitute an infringe 13%2 93. Act March 4, 1909 (35 U. S. | arising under the trade-mark laws,, sundry jobbers and dealers who had St. at L. 1075 c 320 § 38). 94. Press Pub. Co. v. Monroe, 164 U. S. 105, 17 SCt 40, 41 L. ed. 367; Webster v. Daly, 163 U. S. 155, 16 SCt 961, 41 L. ed. 111. [a] Appeal from decree on mandate from circuit court of appeals.As an appeal will lie from the circuit court to the supreme court only in cases prescribed in the act of March 3, 1891, it will not lie in a copyright case, which may be appealed from the circuit court of appeals, merely because the circuit court by the form of its entry made the decree of the circuit court of appeals, affirming a previous decree of the circuit court, its own decree. Webster v. Daly, 163 U. S. 155, 16 SCt 961, 41 L. ed. 111. [b] Decree based on common-law right. The supreme court has no Jurisdiction to review, on writ of error, the action of a circuit court of appeals in affirming the judgment of a circuit court, rendered in a suit to recover damages for infringement of a copyright, where plaintiff had claimed no right under the copyright laws of the United States, but had maintained the action wholly on the right given by the common law. such case the test of the appellate jurisdiction of the supreme court is whether the case was one arising under the copyright law of the United States, or one in which the jurisdiction of circuit the court wholly depended on the parties being citizens of different states. Press Pub. Co. v. Monroe, 164 U. S. 105, 17 SCt 40, 41 L. ed. 367. In 95. Judicial Code (36 U. S. St. at L. 1087 c 231 § 128). See Street v. Atlas Mfg. Co., 231 U. S. 348, 351, 34 SCt 73, 58 L. ed. 262 (a trade-mark case, where the court said: "Sections 128, 239, 240, and 241 of the Code, as before described, substantially, almost literally, repeat the provisions of § 6 of the Circuit Courts of Appeals Act of March 3, 1891, 26 Stat. 826. c 517. There is but a single change deserving mention here, and it is that cases arising under the copyright laws are in § 128 added to the enumeration of cases in which the decisions of the Circuit Courts of Appeals are declared final. But this has no bearing upon cases save as it indicates that Congress 96. Judicial Code (36 U. S. St. at 97. Judicial Code (36 U. S. St. at L. 1087 c 231 §§ 128, 239). See Hills v. Hoover, 220 U. S. 329, 31 SCt 402, 55 L. ed. 485, AnnCas1912C 562 (for instance of certificate from circuit court of appeals). 98. Judicial Code (36 U. S. St. at L. 1087 c 231 §§ 128, 238); Globe Newspaper Co. v. Walker, 210 U. S. 356, 28 SCt 726, 52 L. ed. 1096. for [a] Jurisdictional question.-Since See supra § 377. 3. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. obtained copyrighted books from the complainants to deliver the same to defendant for sale at retail at less than the prices fixed by the complainants, and in violation of the agreement on which the books were obtained, will not be disturbed by the federal supreme court on appeal, if not clearly erroneous. Scribner v. Straus, 210 U. S. 352, 28 SCt 735, 52 L. ed. 1094. 4. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417 (applying equity rule 75). 5. Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514. 6. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 7. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 8. Historical Pub. Co. V. Jones Pub. Co., 231 Fed. 638, 145 CCA 524. [a] Illustration.-Under judicial code (Act March 3, 1911 [36 U. S. St. at L. 1134, c 231 § 129]) authorizing an appeal from an interlocutory decree granting or refusing an injunction, complainant, in a suit to restrain the infringement of two copyrights, can appeal from a dismissal of his bill as to one copyright. Historical Pub. Co. v. Jones Pub. Co., 231 Fed. 638, 145 CCA 524. 9. Werner V. Co. Encyclopædia Britannica Co., 134 Fed. 831, 1024, 67 CCA 281 [aff 130 Fed. 460]. 10. S. E. Hendricks Co., Inc. Thomas Pub. Co., 242 Fed. 37; Black v. Imperial Book Co., 8 Ont. L. 9. 3 OntWR 467 [dism app 5 Ont. L. 184, 2 OntWR 117, and app dism 35 Can. S. C. 488]. V. see Amount of attorney's fees supra § 436 text and note 70. 11. Act March 4. 1909 (35 St. at L. 1075 c 320 $$ 30. 31). not does 12. Importation alone violate any of the exclusive rights conferred on the proprietor of the copyright. See Act March 4. 1909 (35 U. S. St. at L. 1075 c 320 § 1). [a] Review of facts in supreme court.-(1) Concurrent findings of facts of the courts below in a suit in equity will not be disturbed by the federal supreme court on appeal unless clearly erroneous. Dun v. Lumbermen's Credit Assoc., 209 U. S. 20, 28 SCt 335, 52 L. ed. 663, 14 AnnCas 501. (2) Concurrent findings of the courts below in a suit to restrain the sale of copyrighted publications at less than the fixed price, that there was no satisfactory proof that de- 13. Act March 4, 1909 (35 St. at fendant had induced and persuaded | L. 1075 c 320 § 31). 13. Enforcement see infra § 443. of prohibition |