Page 256.

Encyclopaedia Britannica." Another of the articles had been written by Prof. Alexander Johnston, of Princeton University, who had made a similar assignment to the Blacks, and whose administrator was one of the plaintiffs in the suit.

The defendant printed an American edition of the Britannica, including the twenty-third volume, and as a part of it the matter copyrighted by Walker. Suit for infringement was brought by the Blacks and Walker. The court declared the question to be:

Does the fact that the proprietor of a book copyrighted in this country has permitted an alien publisher of an encyclopaedia to publish his book as part of such encyclopaedia enable another person, without other authority, to publish in this country the copyrighted article as a part of his reprint of such encyclopaedia, the remainder of which is publici juris?

The court answered the question in the negative.

If a poem or an essay for which a copyright had been secured in this country by the author, a citizen of the United States, should be permitted to be inserted in a volume of poems or essays, a part of which was publici juris, it could not reasonably be claimed that the author had thereby abandoned his copyright, and that his book could be reprinted, by itself, without his consent, in this country. It can not be contended that the defendant would have a right to reprint Walker's or Johnston's treaties in separate volumes without the consent of the respective proprietors. Can, then, the poem or essay be printed, without the consent of the author, as a part of an unauthorized reprint of the entire volume?

The defendant based his defense in that case on two grounds. The first was that the work as a whole was a foreign work, and the bulk of the volume publici juris; aliens then not being able to secure copyright in the United States. The second was that the insertion of Walker's and Johnston's articles was for the manifest purpose of preventing citizens of the United States from reprinting that volume, which would have been, but for those articles, publici juris, and therefore was an attempt which should not receive the favor of the court. Neither of these contentions found favor with the court. "If the author has a valid copyright," said Judge Shipman, "it is valid against any unpermitted reprint of his book; and the fact that his book is bound up in a volume with 50 other books, each of which is open to the public, is immaterial." The complainants obtained an injunction and an accounting. (See Black v. Henry G. Allen Co. (C. C.) 56 Fed. 764 (1893).) But the fact is not to be

overlooked that in Black v. Henry G. Allen Co. the Blacks inserted in the several copies of every edition of the encyclopaedia the following notice printed on the title

page.

The following article in this volume is copyrighted in the United States of America, viz.:

United States. Part I. History and Constitution. Copyright 1888 by Alexander Johnson. Part II. Physical Geography and Statistics. Copyright 1888 by Josiah D. Whitney. Part III. Political Geography and Statistics. Copyrighted 1888 by Francis A. Walker.

And in that part of the encyclopaedia in which the matter written by Prof. Johnson appears there is inserted at the head of the article, "Copyright 1888 by Alexander Johnson." A similar notice is, inserted at the head of the article written by Mr. Whitney and at the head of that written by President Walker. It was possible, therefore, for anyone to tell on an inspection of the volume the exact copyrighted matter it contained, and there was no necessity to seek out the original American copyrighted book, and then compare it with the English publication, in order to ascertain what was and what was not copyrighted.

The case at bar involves a different state of facts. In this case the author of the English work is informed that it "includes the Telegraph Cyphers entered according to act of Congress in the year 1906, by E. L. Bentley in the office of the Librarian of Congress, at Washington, D. C." But no one, on inspecting the English work, can tell what portion of it has been taken from the Telegraph Cyphers and what part has not. That he can only ascertain by securing a copy of the Telegraph Cyphers and comparing it word by word with the Code. In other words, there is nothing which indicates to the reader what portion of the work is protected by American copyright and what is not, but he is left to ascertain that fact for himself by a verbal comparison, word for word, of the American and English publications.

The conclusion at which we have arrived is that the complainant is not entitled to an injunction to restrain the defendant from publishing and selling "Bentley's Complete Phrase Code" as prayed for in the bill. We have arrived at this conclusion, not because he reprinted the matter in England without taking out copyright in that country. That he could do without impairing any

Page 257.

of his rights in the United States. But his difficulty arises out of the facts that in his English publication of the Code he embodied the Telegraph Cyphers, or a substantial part of that work, and imported the same into the United States, and sold it here, without any notice in it by which the public could know by inspection the copyrighted from the uncopyrighted matter.

In our opinion, one who so embodies copyrighted with uncopyrighted matter that one reading his work can not distinguish between the two has no right to complain if the book is republished by third parties. It is true that Bentley did insert the statutory notice in the Code by which he directed attention to the fact that the Telegraph Cyphers were included in the new publication, but the statutory notice was intended by Congress to apply to publications as a whole-where the author is copyrighting the work as a whole. It was not intended by Congress that, by inserting notice in an uncopyrighted work that it contains copyrighted matter, the author could thereby prevent the republication by a stranger of the uncopyrighted book. In this case the English book covers more than 200 large pages and the original American work less than 40. One can not ascertain what part of the English book contains the copyrighted matter taken from the American book, unless he is able to obtain from some source a copy of the original work and compare it letter by letter and word by word with the book subsequently published in England. This we do not think he is called upon to do. If one intends to assert his exclusive right to publish and sell copyrighted matter, he must so clearly indicate the matter in which he has the exclusive right that the public upon inspection can determine the question of its own rights therein. He can not require the public to search the markets to find a copy of his copyrighted book, then purchase it, and then compare it word by word with the uncopyrighted work.

We do not decide in this case that Bentley has lost his copyright in the Telegraph Cyphers, so that any one is at liberty to reprint that book. Whether he has or has not lost that right is not before us and is not decided. What we do decide is that he has no standing in court to prevent by injunction the publication of the Complete Phrase Code, which is an uncopyrighted work, the whole of which the defendant was at liberty to reprint, including the matter taken from the Telegraph Cyphers, al

though copyrighted, as there is nothing in the work which indicates the copyrighted from the uncopyrighted

matter.

The decree should be reversed and the bill dismissed, and it is so ordered.

[223 Federal Reporter, pp. 247-257.]

EX PARTE THE BLISH MILLING COMPANY.

[Decision of the Commissioner of Patents.]

Decided March 20, 1911.

TRADE-MARKS-REGISTRABILITY-" COPYRIGHT."

parte The Blish Mill

The word "Copyright" held properly refused registration ing Co., Mar. as a trade-mark, since its use in connection with the words 20, 1911. "Registered in the United States Patent Office" or their equivalent would be likely to convey to the mind of the Page 242. purchasing public the impression that the merchandise upon which the mark is used had received the official approval of the United States Government.

On appeal.

TRADE-MARK FOR WHEAT FLOUR.

Messrs. Taylor & Hulse and Messrs. Steuart & Steuart for the applicant.

TENNANT, Assistant Commissioner. This is an appeal from the decision of the examiner of trade-marks refusing to register the word "Copyright" as a trade-mark for flour.

Although this alleged trade-mark was presented for registration under the ten-year proviso of the act of February 20, 1905, the examiner has refused registration upon the ground that the word "Copyright" is not a word to which the applicant can claim exclusive right.

He has pointed out that the copyright acts of June 18, 1874, and of March 4, 1909, under which prints and labels are copyrighted in the United States Patent Office, require that notice of copyright of a print or label shall be given by the use of the word "Copyright" and name of the owner and date of copyright. He therefore held that this alleged mark is not entitled to registration in view of the principle announced in the decision of the Court of Appeals of the District of Columbia in re Cahn,

Belt & Company (122 O. G., 354; 27 App. D. C., 173), in which the court said:

The applicants' mark would not be a mark within the meaning of this last proviso to section 5, because it was not in actual and exclusive use as a trade-mark for ten years next preceding the passage of this act.

The application in this case admits that the mark we are now considering is a simulation of the arms or seal of the State of Maryland, with variations, it is true, but still a simulation of the coat of arms of Maryland. The coat of arms of Maryland was never in the exclusive use of the applicants during any period, nor could the applicants ever acquire an exclusive use as a trademark of the State coat of arms. In the sense of this proviso, the applicants had the actual but never had the exclusive use of this simulation of the Maryland coat of arms, and for this reason the appellants' trade-mark sought to be registered does not come within the last proviso of the fifth section. The appellants never could acquire such property right in the coat of arms of Maryland, or any simulation thereof, against the State of Maryland.

Reference is also made by the examiner to the decisions of the commissioner in the cases of ex parte Alart and McGuire (131 O. G., 2145), in which registration is refused of a mark containing " Guaranteed under the Food and Drugs Act, June 30, 1906," and ex parte United States Sanitary Manufacturing Company (137 O. G., 227), in which registration of the letters "U. S." was refused. The ground of rejection in such case was that the mark claimed would tend to make the public believe that the goods upon which the mark was used had received the official approval of the United States Government. In the case of ex parte Sieber & Trussell Manufacturing Company (145 O. G., 1249), in which the registration of the word "Government" is refused upon the same ground, the commmissioner said:

Section 28 of the trade-mark act requires that notice be given to the public that a trade-mark is registered either by affixing thereon the words "Registered in U. S. Patent Office or an abbreviation thereof. The association of the words constituting this notice, together with the word "Government," on the mark would be apt to mislead the public into the belief that not only is the mark registered in the United States Patent Office but that the goods have received the approval of the Government.

In the brief filed on behalf of the appellant the reasons for the adoption of the word "Copyright” as a trade-mark by The Blish Milling Company are stated as follows:

Prior to 1883 the predecessors in business of the applicant manufactured flour under the old bur process. About this time