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of a patent, instead of resorting to the courts to obtain redress for alleged in. fringements of his patent, threatens all who deal in the goods of a competitor with suits for infringement, thereby intimidating such customers from dealing with such competitor, and destroying his competitor's business, it would seem to inake a widely different case from Kidd v. Horry, and that such acts of intimidation should fall within the preventive reach of a court of equity. It may not be libelous for the owner of a patent to charge that an article made by another manufacturer infringes his patent, and notice of an alleged infringement may, if given in good faith, be a considerate and kind act on the part of the owner of the patent; but the gravamen of this case is the attempted intimidation by defendants of complainant's customers by threatening them with suits which defendants did not intend to prosecute; and this feature was not involved in Kidd v. Horry. I cannot believe that a man is remediless against persistent and continued attacks upon his business, and property righ is in his business, such as have been perpetrated by these defendants against the complainant, as shown by the proofs in this case. It shocks my sense of justice to say that a court of equity cannot restrain systematic and methodical outrages like this by one man upon another's property rights. If a court of equity cannot restrain an attack like this upon a man's business, then the party is certainly remediless, because an action at law in most cases would do no good, and ruin would be accomplished before an adjudication would be reached.”
This case was heard on the merits, and the relief was granted in favor of the complainant in the form of a decree for a perpetual injunction. But it is evident, to bring a case within the doctrine so laid down, it should appear that the threatening letters and circulars should be resorted to in bad faith, which is generally shown, as was in that case, by the complainant neglecting or refusing to bring suit. In the case at bar the complainant has shown its good faith in bringing suit against the defendant, distinctly claiming a right of property in the fanciful designation of "Featherbone" as a trade-mark, and charging the defendants with infringement Complainant in its complaint is not claiming anything under the expired patents which the answer refers to, but makes claim generally to a right at all times and forever to the exclusive use of this term as a trade-mark. It appears from the affidavits and briefs that the complainant has several other patents issued since those of 1883 and 1885. But neither those nor the expired patents have been introduced in evidence, as no evidence has been taken in the case. Under these circumstances, how can the court upon the mere allegations of the answer and petition, which is merely a repetition of the allegations of the answer, restrain the complainant from doing what he has a right to do, provided the allegations of the bill are true that he has a property in the alleged trade-mark which the defendant is infringing?
The following is a specimen of the notices given, which clearly go no further than complainant had a right to do under its bill after suit was brought:
"Warning against Unfair Competition.
"Three Oaks, Michigan, July 13th, 1903. "To the Trade: We desire to warn the trade against the purchase and sale of 'Featherbone' products not made and sold by us. An imitation and inferior article is being offered to the trade under our trade-mark and name 'Featherbone' and in the dress of our goods and in imitation of them.
“We have brought suit against Landauer & Co., of Milwaukee, for dealing in these fraudulent imitations in unfair competition with us, asking for an injunction against such practice on their part and for five thousand dollars ($5,000.00) damages for their acts.
"This imitation article is made in infringement of our patents and trademarks and in unfair and fraudulent imitation of our goods, and we give this public notice so that the trade may understand our rights, our position relative thereto and our intention to stop infringement and all unfair competition.
"The Warren Featherbone Co." It seems clear enough, from an inspection of the circulars sent out to customers by complainant, that the complainant has kept fairly within the scope of its bill; and so long as it does that no charge of bad faith or malice or intent to injure is justly chargeable. If complainant's bill be true, it has an undoubted right to warn the public against the infringement of its trade-mark; and that question should not be determined upon the mere allegations of the parties. It is easy enough to say that complainant has no trade-mark, or that, if it had, it expired with the expired patents in 1900 and 1902; but the proof on final hearing might show otherwise, and that the right to such trade-mark exists independent of such patents. The rule is well laid down in Adriance, Platt & Co. v. National Harrow Co., 121 Fed. 827, 58 C. C. A. 163, by the Circuit Court of Appeals for the Second Circuit, as follows:
**Undoubtedly the owner of a patent is acting within bis rights in notifying infringers of his claims, and threatening them with litigation if they continue to disregard them ; nor does he transcend his rights when, the infringer being • a manufacturer, he sends such notices to the manufacturer's customers, if he does so in good faith, believing his claims to be valid, and in an honest effort to protect them from invasion. When the manufacturer is financially responsible, is accessible, and his infringements readily provable, and when the patent owner is financially able, and is one who makes it his sole business to grant licenses, and is under a duty to his licensees to prosecute extensive infringers, the sending of such circulars to customers would seem to be merely a preliminary or cumulative measure, and the bringing of an infringement action the paramount and imperative proceeding. As, ordinarily, the patent owner would be prompt and zealous to assert his claims, if he balts and purposely procrastinates, and attempts to effect by threats and manifestoes that which he can compel by the strong hand of the law, a strong inference arises that he has not any real confidence in his pretensions. This inference becomes irresistible if he refuses to bring suit during a considerable period of time, when the alleged infringement is open, notorious, and defiant, and so extensive as to threaten destruction to his alleged exclusive rights. The indicia of bad faith are persuasive in the present case. It is impossible to read the communications warning the complainant's customers against selling its harrows, with which the defendant seems to have flooded the country, without being led to believe that they were inspired by a purpose to intimidate the complainant's customers, and coerce the complainant, by injuring its business, into becoming a licensee of the defendant. In view of its failure to bring an infringement action, under the circumstances which made an action practically compulsory, tbe defendant cannot shelter itself behind the theory that its circulars and letters were merely legitimate notices of its rights. We are satisfied that they were sent, not for the purposes of self-protection, but in execution of the de fendant's threat to stop the complainant from building barrows by other means than legal remedies."
A similar rule has been declared in the Third Circuit in Farquhar Co. v. National Harrow Company, 102 Fed. 714, 42 C. C. A. 600, 49 L. R. A. 755.
The petition for an injunction is overruled.
1. COPYRIGHT-INFRINGEMENT-PHOTOGRAPHS OF SCULPTURE.
A photograph of a copyrighted piece of sculpture is a "copy" thereof, within the meaning of Rev. St. § 4952 [U. S. Comp. St. 1901, p. 3406), and, if made without authority from the proprietor of the copyright, is
an infringement thereof. 2. EQUITY-PLEADING-MULTIFARIOUSNESS.
The objection of multifariousness is one addressed to the discretion of the court, and is to be determined with reference to the peculiarities of each particular case, upon considerations of practical convenience to the court and the parties, and of the saving of time and expense.
[Ed. Note.-For cases in point, see Cent. Dig. vol. 19, Equity, $ 340.) 3. SAME_COPYRIGIIT-SUIT FOR INFRINGEMENT.
A bill for infringement of copyrights of different pieces of sculpture will not be held demurrable for multifariousness where the parties and the general method of alleged infringement are the same, and especially where it appears from the bill that all of the acts of infringement were committed pursuant to a common purpose by the defendants.
[Ed. Note.-For cases in point, see Cent. Dig. vol. 19, Equity, 88 341, 344; vol. 38, Cent. Dig. Patents, $ 518.]
In Equity. On demurrer to bill.
KOHLSAAT, Circuit Judge. This cause comes before the court on demurrer to the amended bill to restrain infringement of four copyrights on certain pieces of statuary in bas-relief. The only questions raised on demurrer which the court deems necessary to consider are: (1) Whether a photograph or other picture of the statuary constitutes infringement thereof; and (2) whether a bill seeking to restrain infringement of four different copyrights, and also seeking to set aside a copyright of the defendants as having been obtained by fraud is multifarious. The first ground of demurrer is stated as follows:
"A piece of sculpture protected by copyright as a work of the fine art is not infringed by a photographic or printed design which is in no sense a basrelief."
The authorities cited by defendant do not sustain this ground of demurrer. The case of Hanfstaengel v. Empire Palace, L. R. 1894, 2 Ch. 1, is an English case, arising under the English copyright act, the language of which differs from our copyright law. Moreover, this case might be considered an authority for complainant, for the court in that case declared an infringement to be "such reproductions as would compete in the markets with the original or with authorized copies of them." The other case cited by defendant was Champney v. Haag (C. C.) 121 Fed. 944. This was a suit brought for infringement of a copyright of a painting by certain illustrations. It appeared that the illustrations were copied from a copyrighted photograph of the painting, and the court holds that, inasmuch as no attack was made on the photographer's copyright, it must at least be considered prima facie valid, and that the evidence showed clearly that the illustrations alleged to be infringements of the painting, were copied from the photograph, and not from the painting
Our statute (Revised Statutes U. S. § 4952 (U. S. Comp. St. 1901, p. 3406]), gives to the author, designer, or proprietor of any statue, statuary and of models or designs intended to be perfected as works of the fine arts, the sole liberty, among other things, of "copying" and vending the same. The word “copying" is defined in Murray's New English Dictionary as follows:
"To make a copy of (a picture or other work of art]; also to reproduce or represent [an object] in a picture or other work of art.”
This definition is fully sustained by the authorities quoted by the author, so that it seems clear that the word "copy" may be used to designate a picture of a piece of statuary, without in any way straining the well-established use of the word. It was held in the case of Falk v. Howell (C. C.) 37 Fed. 202, that a copyrighted photograph was infringed by a reproduction of a material part of it in relief on leather to be used as chair backs. If this is good law it should work both ways, and it would follow that a copyrighted chair back in relief would be infringed by a photograph of the chair back, and if a chair back in relief is infringed by a photograph, there seems to be no reason for not holding that a relief tablet or figure in bas-relief, is infringed by a photograph or other picture.
To hold that a piece of statuary may be infringed by a picture of the statuary seems in every way in accord with the reason and spirit of the law; for it has been held that the copyright acts "secure to the author the original and natural rights, and it was said that the various provisions of the law in relation to copyrights should have a liberal construction, in order to give effect to what may be considered the inherent right of the author to his own work.” 7 Am. & Eng. Ency. of Law, -552, citing Hvers v. Callaghan (C. C.) 10 Biss. 139, 5 Fed. 726. The question is not whether the photograph contains artistic elements of its own but whether it also contains any of the artistic ideas and conceptions expressed in the statuary. It is clear that the infringer of a copyrighted book cannot escape liability by mixing original matter of his own with the matter pirated, and it should be equally clear that a photographer of a piece of copyrighted statuary cannot say that because his picture contains some of his own talent he is any the less an infringer of the ideas he has taken from the statuary.
The second ground of demurrer is that the bill is multifarious in that separate and distinct causes of action are set out therein. The objection of multifariousness is one that addresses itself to the discretion of the court, and no rule can be laid down to govern every case. Courts apply the rule to avoid needless expense, complexity of the issues, prolixity, delay, and annoyance, and where it is not apparent that any of these objects can be attained, the objection will not be sustained. This objection is not looked upon with favor by the courts (14 Am. & Eng: Ency. of Pl. & Pr. 214), and a suit “is
not thrown out of court for this fault except in a clear case" (Oney v. Ferguson, 41 W. Va. 568, 23 S. E. 710). And it has also been held that "a bill will not be dismissed for this defect unless the court is so embarrassed that it cannot administer the appropriate relief." Annin v. Annin, 24 N. J. Eq. 181. It was held in Stafford National Bank v. Sprague (C. C.) 8 Fed. 377, that a bill is not demurrable on the ground of multifariousness when the joinder therein of two distinct inatters prevents a needless multiplicity of suits, and neither inconveniences the defendants nor causes them additional expense. In the case of Harper v. Holman (C. C.) 81 Fed. 222, it was held that:
"A bill seeking to restrain the publication of a book, as infringing in its title a trade mark right, and in its text certain rights secured to them by four copyrights is not multifarious.”
The language of the court, in Jaros Hygienic 'Underwear Company v. Fleece Hygienic Underwear Company (C. C.) 60 Fed. 622, is quoted approvingly by the court in that case (Harper v. Holman) that the question “is to be determined with reference to the peculiarities of each particular case, upon considerations which are practical rather than theoretical in their nature," and the language of Mr. Justice Miller, in United States v. American Bell Telephone Company, 128 U. S. 352, 9 Sup. Ct. 90, 32 L. Ed. 450, that "the principle of multifariousness is one very largely of convenience.” It is not apparent in the case at bar what advantage can possibly accrue to either of the parties by requiring separate suits upon each of the copyrights. Theoretically each copyright is a separate and distinct matter, but the parties are the same, the general method of alleged infringement is the same, and in all probability the same witnesses will testify as to all the alleged acts of infringement. Moreover, from the allegations of the bill it appears that these parties are combining and confederating to injure the complainant in her right of property in the four pieces of statuary involved in this suit, and, if this is true, the acts of one may fairly be considered the acts of all. Expense, which seems to be one of the most important considerations in passing upon objections of this kind, will surely be less by one suit than by four suits.
The demurrer, therefore, is overruled.
WEST PUB. CO. V. EDWARD THOMPSON CO.
(Circuit Court, E. D. New York. February 23, 1907.) EQUITY – EVIDENCE - COMPELLING PRODUCTION OF DOCUMENTY BY ADVERSE
The ordinary procedure in equity to compel an adverse party to produce documents is by bill or cross-bill for discovery, on which the materiality of the documents as evidence may be determined, or by a subpoena duces tecum, and the court will not order the production of documents upon motion and an affidavit based solely on information and belief as to the contents of the documents desired, and especially where the moving party has unduly delayed making the application and the granting of it would interfere with the closing of the proot's within the time fixed by order of the
court. In Equity. On motion to require complainant to produce records.