selves but merely terms of general description, the court may see fit to limit their use only so far as necessary to prevent unfair competition. This was accomplished in Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 21 USPQ 405 (CCA 2, 1934), by requiring defendants to announce in their advertisements and upon the film itself that their picture "Gold Diggers of Paris" was not based upon the play "Gold Diggers" by Avery Hopwood or upon the motion pictures of the plaintiff, or some equivalent words of differentiation to be settled by the District Court after hearing the respective parties.

On the other hand, where the original work has fallen into the public domain the title goes with it and may be freely used, subject to certain limitations. If the title has acquired a so-called "secondary meaning", equity acting to restrain unfair competition will prevent the use of such title in a misleading manner.

The term "secondary meaning" necessarily implies that the work shall have acquired a public reputation, otherwise no one would be deceived. Moreover, it must be shown that the defendant has in fact acted so as to lead the public to suppose that his publication is the same as the plaintiff's, thereby damaging the latter by making his work less remunerative. But given these three factors-public reputation, deception, damage-a court of equity will usually grant relief by prohibiting, not necessarily all use of the name or title, but merely its unqualified, unexplained or misleading use. Thus, in the Webster Dictionary cases the right of defendant to publish a facsimile of the 1847 edition upon which the copyright had expired and to call it "Webster's Dictionary" was fully recognized by the court, but he was enjoined from issuing deceptive advertisements and circulars, and also required to print in large type on the title page of the reprint a statement clearly differentiating it from the later revised editions of the plaintiff, whose name had been associated with the famous dictionary from the beginning. Merriam Co. v. Ogilvie, 159 F. 638 (CCA 1, 1908); Merriam Co. v. Saalfield, 238 F. 1 (CCA 6, 1917).

The same principle is applicable to the use of names of businesses and manufactures without regard to whether there is actual market competition between the parties for the same trade, so long as such use of the names will result in injury to one of the parties and tend to mislead the public. Tiffany & Co.

v. Tiffany Productions, 237 N.Y.S. 801, aff'd. 262 N.Y. 482; Yale Electric Corp. v. Robertson, 26 F.2d 972 (CCA 2, 1928).

It seems that titles or names may in some cases qualify for registration as trade marks, especially as applied to periodicals or a series of cartoons and the like, but without thereby extending the term of copyright in the work itself. In Atlas Mfg. Co. v. Street & Smith, 204 F. 398 (CCA 8, 1913), the latter "lost out" on their registered trade mark "Nick Carter" on the technical ground that they had incorrectly specified the class of goods as "a weekly periodical," whereas each issue was a complete story in itself, and the court held it was not a periodical but a "book." Aside from this, the court thought that the use of the name "Nick Carter" alone for a motion picture did not compete with the publication in question. One of the judges strongly dissented. "The defendants," he said, "are engaged in appropriating the fruits of complainants' current endeavors, and are deceiving the public."

So also an arbitrary designation applied to a set or series of books may constitute a valid trade mark, such as "Dr. Eliot's five-foot shelf of books", Collier v. Jones, 120 N.Y.S. 991 (1910). But if it is merely the name of one of the books in the series, it is regarded as descriptive and therefore not subject to trade mark protection. In re Page Co., 47 App. D.C. 195 (1917), the "Pollyanna" case.

In the Mark Twain case, Clemens v. Belford, 14 F. 728 (1883), the author tried unsuccessfully to prevent the use of his pen name upon a reprint of some of his works which were out of copyright; but the court held that once a work has fallen into the public domain, anyone may reprint it and attribute the authorship to the one who wrote it, either by his real name or pen name, or both; for there is no deception. See also Ellis v. Hurst, 128 N.Y.S. 144 (1910).

Under the prior law the copyright was initiated by entering the title in the copyright records, and if upon publication of the work a substantially different title was used the result was likely to be fatal to the copyright. Blume v. Spear, 30 F. 631 (1887). This defense would hardly now be available since, under existing law, the copyright (for a published work) is secured by publication with notice, and the presence of such notice on the copies should be sufficient in itself to warn the public not to infringe,

irrespective of a subsequent change of the title. In the case of books for which ad interim copyright has been secured (section 21) it frequently happens that the American edition is brought out under a wholly different title from that borne by the original English edition. In such cases it would be well for the American publisher to print an explanatory note on the title page of his edition as to the change of title, in order to facilitate searches with respect to the ad interim entry.

Only one reported case under the present law is found in which the question of change of title was touched upon, Collier v. Imperial Films Co., 214 F. 272 (1913). It had to do with an unpublished play which was registered under the title "A White Slave's Love," but the author afterwards adopted a new title, "The Undertow," under which it was produced by his assignee. The defendant sought to take advantage of his change of title as destroying the identity of the copyrighted play, and might have succeeded but for the fact that the evidence disclosed that he had produced the play with full knowledge of the existing copyright. Said the judge: "I am not satisfied that an author can copyright a play under one title, produce it under another, and hold as an infringer a person who has been misled by his action. But I am not called upon to determine that question, as it does not arise upon these pleadings. The bill avers that the defendant produced the complainant's work with full knowledge of all the facts. As to such a person I think it clear that an author or his assignee does not forfeit a copyright by a change of the title of the work." The statute might well be amended so as to permit the author to file in the Copyright Office a notice of change of title to be placed against his original application and published in the Catalogue of Copyright Entries as constructive notice to all the world; and especially with respect to that class of works which, under section 11 of the Act, may be registered for copyright prior to publication (dramas, musical compositions, lectures, motion pictures, etc.).

Toys, Dolls, Game-boards, Fabrics and the Like

Generally speaking, the protection of such articles should be sought under the design patent law as embodied in section 4929 of the Revised Statutes. While an artistic drawing or a printed picture of the article itself (such as fashion illustrations in a

catalog or on separate sheets) may be subject to copyright registration as such, it seems that of itself this does not secure the right to make and sell the article illustrated. This subject will be considered in more detail in connection with the rights secured. Tools, Implements, Devices and Similar Articles of Functional Utility

These as a rule come within the province of the general patent law, if they possess the necessary element of invention or novelty. There may be present incidentally certain features involving authorship, such as pictorial or printed matter not essential to their operation, but that of course does not change the essential nature of such articles. Where the added matter is deemed of sufficient value in itself to invoke the protection of the copyright law, care should be taken to print the copyright notice in immediate proximity thereto, since it would be the only "copyrightable component part of the work copyrighted" (section 3). The Copyright Office has recently established a general rule for the guidance of the public with respect to such material (see Appendix, Regulations of Copyright Office).

Chapter V

Who May Secure Statutory Copyright

Section 9 of the Copyright Act provides: "That any person entitled thereto by this Act may secure copyright for his work by publication thereof with the notice of copyright required by this Act." Here Congress puts it up to the author or proprietor himself to "secure" the copyright; the word "may" implies that the privilege is not compulsory but permissive, yet is to be translated into "must" if copyright is wanted. There is no provision for examination as to priority or originality, as in the case of patents, and probably for that reason the Act elsewhere provides that the protection shall extend to "all the copyrightable component parts of the work copyrighted" (section 3), the inference being that there may be matter in the work to which the protection of the Act does not extend, this being but recognition of well-established law before the present statute. Eggers v. Sun Sales Corp., 263 F. 373 (CCA 2, 1920); Gerlach-Barklow Co. v. Morris, 23 F.2d 159 (1927).

Citizens of the United States

The word "person" is used in this section in the legal sense to include not only individuals but any legal entity capable of holding and defending property rights. The persons "entitled thereto" are mentioned in the preceding section 8: "That the author or proprietor of any work made the subject of copyright by this Act" (meaning "all the writings of an author" referred to in section 4), "or his executors, administrators, or assigns, shall have copyright for such work under the conditions and for the terms specified in this Act." Congress really grants the right under the constitutional obligation to "secure" to authors exclusive rights.

But first there must be created some visible thing in the nature of a "writing." So long as the ideas exist only in the mind of the