to a valid trademark, and, unless the issue of unfair trade is in the case, plaintiff must fail. Turning to the petition, which we need not here set out in extenso, it appears that his entire cause of action is bottomed on his having the exclusive right everywhere in this jurisdiction to the use of the label described in the Schaden case, because of his having adopted and registered it as a trademark. He is not relying on any secondary meaning of the word, but upon a property right therein growing out of the fact that it has been registered by him as a trademark. The prayer of the petition is for the protection of his trademark, and there is no suggestion of trade name or unfair competition. When a motion was made to dissolve the temporary writ of injunction issued in the case, he stated in his resistance thereto that he was entitled to the use of the label as a trademark, and relied fundamentally on registration of such trademark in Iowa. The complaint does not make a case of unfair trade, and consequently there is nothing here to consider. Plaintiff has admitted his case away, and has nothing to stand upon. Even if he were insisting upon the rule of unfair trade, the case is so different from the Schaden case in its facts regarding the use made of the label by the defendants that we should hesitate to affirm the decree. The label used by the defendants bore such other marks as to clearly distinguish it from the one used by the plaintiff, and it is doubtful if one in the use of ordinary care could have been deceived thereby. But this matter is not before us for decision. Suffice it to say that plaintiff pleads and relies upon a registered trademark, and now concedes in argument that he has no case for the establishment of exclusive, state-wide rights therein. The decree must therefore be reversed, and the cause remanded. Reversed. 188. ILLINOIS WATCH-CASE COMPANY v. ELGIN UNITED STATES CIRCUIT COURT of Appeals, SEVENTH CIRCUIT. 1899 94 Fed. 667 APPEAL from the Circuit Court of the United States for the Northern District of Illinois. The appellee, the Elgin National Watch Company, filed its bill in equity in the Court below, setting forth that it was a corporation organized under the laws of the State of Illinois, and having its principal place of business at Elgin, and its office at Chicago, in that State; that the defendant, the Illinois Watch-Case Company, is a corporation created and organized under the laws of the State of Illinois, and having its principal place of business at Elgin, in that State; that the other defendants named were citizens of the State of Illinois, and were, respectively, the defendant Duncan, president, treasurer, and superintendent, and the defendant Abrahams, secretary, of the Illinois Watch-Case Company; that prior to April 11, 1868, the complainant engaged in manufacturing watches at Elgin, then a small town containing no other manufactory of watches or watch cases; that the complainant built up a large business in such manufacture; that the watches and watch movements so made by complainant have become known all over the world, and have been largely sold and used both in the United States of America and in foreign countries; that before that date the complainant had adopted the word "Elgin" as a trademark for its watches and watch movements, which word was marked upon the watches and watch movements, both those which entered into commerce in this country and those exported to and sold in foreign countries, and that the complainant's watches became known all over the world as Elgin watches, which word declared their origin and source as a product of the complainant's manufacture, and they became known from those of all other watches by the distinguishing word or trademark "Elgin," which word, at the time of its adoption, had been appropriated by no other person, firm, or corporation as a trademark or designation of goods; that this trademark the complainant caused to be registered on the 19th day of July, 1892, under the Act of Congress, relating to the registration of trademarks, approved March 3, 1881 (21 Stat. 502); that the defendants have infringed upon the rights of the complainant by engraving or otherwise affixing the word "Elgin" to watch cases made and sold by them; that such watch cases are adapted to receiving watch movements of different construction from those made by the complainant; that inferior watch movements are liable to be, and often are, incased in them, and, when so incased, the entire watch, including both movement and case, appears upon the market with the word "Elgin" upon it, thereby leading the public to believe that such watch, as an entirety, was made by the complainant, and enabling parties unlawfully using the word "Elgin" to profit by the great reputation of the complainant, to palm off other and inferior goods as the goods made by the complainant, to injure the reputation of the complainant as a watchmaker, and to deprive it of a portion of the business and patronage which it would otherwise receive from the public. The prayer of the bill is for an injunction to restrain defendants "from directly or indirectly making or selling any watch case or watch cases marked with your orator's said trademark, and from using your orator's said trademark in any way upon watches or watch cases, or in the defendant's printed advertisements, circulars, labels, or on boxes or packages in which the said watch cases are put up or exposed for sale." A demurrer interposed to this bill being overruled, defendants answered, denying the legality of the registration of the trademark, denying the right of the complainant to the exclusive use of the word as a trademark. .. By leave of the Court at or immediately after the hearing and before decree, the complainant amended its bill, alleging that the watch cases so manufactured and marked by the defendants in violation of the complainant's right "are intended by the defendants to be sold in foreign countries, and are in fact exported to and sold in foreign counA decree passed for the complainant that the use of the word "Elgin," whether alone or in connection with other words, was a violation and infringement of the complainant's exclusive rights in the premises, and that an injunction issue restraining the use of the word "Elgin" alone or in connection with other words or devices upon watches or watch cases, or upon packages containing watches or watch cases, going into commerce with foreign nations or with the Indian tribes, in such a way as to be liable to cause purchasers or others to mistake said watches or watch movements incased in such watch cases for watches or watch movements manufactured by the complainant. The opinion of the Court below is reported in Elgin Nat. Watch Co. v. Illinois Watch Case Co., 89 Fed. 487. Thomas A. Banning and Ephraim Banning, for appellants. Lysander Hill, for appellee. Before Woods and JENKINS, Circuit Judges, and BUNN, District Judge. JENKINS, Circuit Judge, upon this statement of the case, delivered the opinion of the Court. The appellee, the complainant below, by its bill asserts and seeks to maintain its right to the use of the word "Elgin" as a trademark, claiming that right as one arising under Federal law. It is, of course, clear that this bill cannot be sustained, all of the parties to it being citizens of the same State, unless its right can be sustained as one arising under the laws of the United States. The statute does not define what shall constitute a trademark. To determine, therefore, what that trademark is which is protected by this statute, we must be referred to the common law. It is not now a question that no one can acquire an exclusive right to the use of geographical names as trademarks. Canal Co. v. Clarke, 13 Wall. 323; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 547, 11 Sup. Ct. 396; Chemical Co. v. Meyer, 139 U. S. 542, 11 Sup. Ct. 625; Mill Co. v. Alcorn, 150 U. S. 464, 14 Sup. Ct. 151; Mills Co. v. Eagle, 58 U. S. App. 490, 30 C. C. A. 386, and 86 Fed. 608; Iron Co. v. Uhler, 75 Pa. St. 467; Elgin Butter Co. v. Elgin Creamery Co., 155 Ill. 136, 40 N. E. 616. . . . But, while one cannot obtain the exclusive right to use a geographical name as a trademark, and cannot make a trademark of his own name to deprive another of the same name from using it in his business, that other may not resort to artifice to do that which is calculated to mislead the public as to the identity of the business or of the article produced, and so create injury to the other beyond that which results from the similarity of name. There are a large number of cases in which this principle has been declared. Croft v. Day, 7 Beav. 84; Holloway v. Holloway, 13 Beav. 239; Wotherspoon v. Currie, L. R. 5 H. L. 508; Thompson v. Montgomery, 41 Ch. Div. 35; Reddaway v. Banham (1896), App. Cas. 199; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 11 Sup. Ct. 396; Chemical Co. v. Meyer, 139 U. S. 540, 11 Sup. Ct. 625; Coates v. Thread Co., 149 U. S. 562, 13 Sup. Ct. 966; Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 186, 16 Sup. Ct. 1002; American Waltham Watch Co. v. U. S. Watch Co. (Mass.; March, 1899), 53 N. E. 141. . . . ... This class of cases does not proceed upon the ground of an infringement of a trademark, but upon the ground of fraud, and that equity will not permit one, aside from any question of trademark, to palm off his goods as the goods of another, and so deceive the public, and injure that other. It is not necessary in such cases, in order to give a right to an injunction, that a specific trademark should be infringed (McLean v. Flemming, 96 U. S. 245, 250), but that the conduct of the party should show an intent to palm off his goods as the goods of another. The allegations respecting trademarks are in such cases only "regarded as matter of inducement leading up to the question of actual fraud.” The Court below sustained this bill upon the ground that the word "Elgin" had acquired a secondary signification, and through a course of business had come, as applied to watches, to designate the manufacture of the appellee, and as an article of approved excellence, and that therefore the word in that connection performed distinctly the function of a trademark, and could be registered and upheld as a trademark, under the Act of Congress. In this we think there was error. long The word "Elgin" was not, and could not be, made a trademark. The fact that the word had acquired that signification might be forceful if the word was shown to be used to palm off the goods of one as the goods of another, which, coupled with other evidence evincing intent to mislead and to defraud, would be operative to move a Court of Equity to prevent the wrong. It is said that the evidence in this case is of that persuasive character which irresistibly leads to the conclusion that here was such gross fraud that a Court of Equity should not stay its hand, but should enjoin the guilty party from further deception and wrong. Unfortunately, however, if we should concur with counsel to the full extent of his contention, we are, as we think, without jurisdiction to grant relief; or, to say the least, that jurisdiction is of so doubtful a nature and so limited in extent, and under an act of doubtful constitutionality, that we must decline to exercise it. The right of the appellee arises under the Act of Congress, and is limited to a trademark. By the statute, the right of action is given to him to recover damages "for the wrongful use of said trademark," or he may have his remedy, according to the course of equity, "to enjoin the wrongful use of such trademark used in foreign commerce or commerce with the Indian tribes." It is only by virtue of that statute, and for the protection of a right arising under the Federal law, that the appellee has standing in the Federal Court, for all the parties to this suit are citizens of the same State. The remedy in equity for fraud, to which we first referred, is one which existed before the statute, and is not given by it. It was not applied to protect the infringement of a trademark, but, recognizing the invalidity of the supposed trademark, was applied for the prevention of fraud; and, that a Federal Court may have jurisdiction in such a case, we think there must exist and appear from the record the necessary diverse citizenship of the parties. It may also be remarked that this bill is not framed upon any theory of fraud or fraudulent conduct upon the part of the defendants thereto, except as it is to be inferred from the use of the complainant's registered trademark. It is not alleged that they have ever represented or sold their goods as the goods manufactured by the complainant. The one is a manufacturer of watch movements, the other of watch cases. . . . So that, whether we consider the case from the standpoint of jurisdiction, or from the case made by the bill, we are constrained to the conclusion that the decree below was erroneous. The Courts of the State furnish ample remedy for the wrong, if any, under which the appellee suffers. We have no right to redress or prevent trespass upon the common-law rights of the appellee, the citizenship of the parties forbidding jurisdiction. . . . The decree is reversed, and the cause remanded, with direction to the Court below to dismiss the bill. Topic 4. Diversion of the Relation by Multiplication of Invented Intellectual Products SUB-TOPIC A. COPYRIGHT (AT COMMON LAW) (1) Nature and Duration of Common-law Copyright 189. EATON S. DRONE. A Treatise on the Law of Property in Intellectual Productions. (1879. Introduction, p. 10.) A book consists of two elements, - the corporeal and the incorporeal; the material, - paper, printing, binding, - and the thoughts, ideas, sentiments, conceptions, which constitute the invisible creation of the mind. The former is simply a channel of communication, a vehicle of conveyance, for the latter. The author impliedly says to the reader: "I will grant you the perpetual privilege of using my literary production in return for a small sum of money, but on condition that you do not injure it and render it worthless, as a source of profit to me, by multiplying and circulating copies. . . . This property and the right of multiplying it I reserve to myself. It is worth twenty thousand dollars; but I will admit you to a common use of it for one dollar." These terms are accepted by the buyer, who is willing to pay the named price for the enjoyment, instruction, or information to be derived from reading the book. He thus becomes the owner of the entire property in the material substance of the book; and with the book, as such material substance, he may do as he pleases. But in the intellectual contents of the book - the literary creation he acquires a right not of property, but of use. . . . To multiply copies of the work is a violation of the contract, a direct invasion of the author's rights, an appropriation of his property, which has no warrant in law, no justification in equity. . . . The rights which vest in the purchaser of a book have been aptly compared with those acquired by the buyer of a ticket to a place of public amusement. The latter is entitled to all the enjoyment, instruction, and information to be derived from witnessing the performance. He may, perhaps, give or sell his ticket to another, who may enjoy the same advantages in his stead. He has |