The claims, so far as they relate to the sector, are not open to this objection, nor do I find it anticipated in the prior art. Figure 4 in Annin's patent of January 21, 1884, forming the bottom of the wheelbarrow disclosed, is a part, it is true, of a built-up toy; but the scope of the Annin patent is so narrow and its purposes so limited that I am unable to say that figure 4 would suggest the sector of complainant's patent. In any event, the sector with its variety of designed and possible uses is so great an improvement of Annin's device as to rise to the dignity of invention. This improvement, its utility and its different forms adapting it to uses of which Annin's device is not capable, together with the prima facie quality, warrant the finding of patentable invention.

[18] If this conclusion with respect to the rectangular plates is wrong, I find from the evidence that, even if the testimony of Wagner, his wife, and brother-inlaw is true, since Hornby's invention was as early as February 4, 1911, and actual Meccano models were in the United States in June, 1911, and Meccano outfits made up in form for the trade were in the hands of the Meccano United States agency on July 29, 1911, it does not avail Wagner, because he did not exercise reasonable diligence in the actual reduction of his conception to practice. (Automatic, etc., Co. v. Pneumatic, etc., Co., 166 Fed. 288, 294, et seq., 92 C. C. A. 206.) Nor did the application of defendant Wagner of March 27, 1912, for a patent amount to a reduction to practice, because his application did not claim a patent on the plates, although in his specifications he says:

The body 1 of the car is built up in the usual manner from the plates and strips of metal bolted together.

And figure 1 in the drawing shows a perforated plate. It does not, however, show the flanged plate, perforated or otherwise. Of course, in any event he must be confined to his claims, and it is reasonably clear that the plate referred to in the specifications and shown in the drawings was not the flanged plate of complainant's patent or the flanged plate of complainant's copyright of 1910. If the story of defendant's conception of the flanged rectangular plate is true, it is strange, since he used a plate at all in the drawings in his application of March, 1912, he did not disclose a flanged plate.

Hornby's claim 8 refers exclusively to the sector. Claims 1 to 7, inclusive, cover both the sector and the flanged plate. Neither defendant's application nor his Page 926. drawings included the sector. Whatever may be disclosed by the contents of the file wrapper of the Hornby patent in suit, there is nothing in the evidence in the case to sustain the defendant's contention of the disclosures in the file wrapper. No attention is here given to the patents cited by the defendant subsequent to the date of complainant's patent for the reason that they are not regarded as of consequence.

I find claims 1 to 7, inclusive, so far as they embrace the sector, to be valid. Claim 8, covering only the sector, is valid. Claims 9 and 10, covering new and useful combinations, are held to be valid. Defendants infringe all of these.

In view of these conclusions, defendants' counterclaim has no merit.

[19] Defendants assert that complainant comes not into court with clean hands, because for some years it marked its toys "Patented in the United States January 16, 1906," when that patent was only for a special fastening clip. It did so mark them, but it does not appear that the purpose was to deceive the public. This is an essential element in the offense. (Walker v. Hawxhurst, Fed. Cas. No. 17071; Lawrence v. Holmes, D. C., 45 Fed. 357, 360, 361; London v. Dunbar Corporation, 179 Fed. 506, 103 C. C. A. 130, C. C. A. 1.) When Hornby was advised "that it was doubtful if his early United States. patent longer covered the Meccano outfits as then marketed, he immediately gave instructions to the assembling department at Liverpool, where all the marking was done, to discontinue it."

[20] But in any event, the wrong was not in connection with the controversy with the defendant, and defendant takes nothing by it. (Shaver v. Heller & Merz Co., 108 Fed. 821, 834, 48 C. C. A. 48, 65 L. R. A. 878, C. C. A. 8; Camors-McConnell Co. v. McConnell, C. C., 140 Fed. 412, 417; Bentley v. Tibbals, 223 Fed. 247, 252, 138 C. C. A. 489, C. C. A. 2.)

Defendants' counterclaim will be dismissed. An order to that end may be taken; also sustaining the copyright and charges of unfair competition, and the patent, so far as it covers the sector and the combination in claims 9 and 10.

The court requests counsel, when the decree is presented for entry, to again call the court's attention to the matter of the taxation of the costs under rule 58 incurred in obtaining the testimony of Brennan and Read. [234 Federal Reporter, pp. 912-926.]

G. & C. Merriam Co. v. Syndicate Pub. Co., June 1, 1915.

Page 619.

G. & C. MERRIAM COMPANY v. SYNDICATE PUBLISH-
ING COMPANY.

(Appeal from the Circuit Court of Appeals for the Second Circuit. Argued April 14, 1915. Decided June 1, 1915.)

In a case where diverse citizenship exists, the decree of the circuit court of appeals is final unless in addition to the allegations of diverse citizenship, the bill contains averments of a cause of action, and consequent basis of jurisdiction, arising under the Constitution or laws of the United States.

If the jurisdiction of the district court was invoked on the ground of diversity of citizenship, and averments as to a Federal right are unsustainable and frivolous, or fore'closed by former adjudication of this court, the appeal from the judgment of the circuit court of appeals must be dismissed.

Where the jurisdiction below rests on diverse citizenship, averments of unfair trade, which do not contain any elements of a cause of action under the Federal Constitution or statutory law, afford no basis for jurisdiction of this court of an appeal from the decree of the circuit court of appeals.

The trade-mark act of 1881 expressly denied the right of an applicant to obtain a trade-mark on his own name, or to acquire in a proper name trade-mark rights not recognized at common law.

The trade-mark act of 1905 does recognize the right to obtain trade-marks in a proper name when the same has been in use under specified conditions for ten years, but makes the judgment of the circuit court of appeals final in cases arising under the act. (Street & Smith v. Atlas Co., 231 U. S. 348.)

As is the case with patents, so after the expiration of copyright securing the exclusive right of publication, the further use of the name by which the publication was known and sold can not be acquired by registration as a trade-mark. (Merriam v. Holloway Co., 43 Fed. Rep. 450, approved; and see Jane v. Singer Manufacturing Co., 163 U. S. 169.)

The word "Webster" was not subject to registration as a trade-mark under the act of 1881, and a contention based on an attempted registration affords no jurisdiction for this court to review a judgment of the circuit court of appeals, having been precluded by prior decisions of this court.

Appeal from 207 Fed. Rep. 515, dismissed.

The facts, which involve the jurisdiction of this court of appeals from judgments of the circuit court of appeals, in cases involving rights under the trade-mark acts of 1881 and 1905, are stated in the opinion.

Mr. William B. Hale for appellant.

Mr. Hugh A. Bayne, with whom Mr. Wade H. Ellis, Mr. R. Golden Donaldson, and Mr. Challen B. Ellis were on the brief, for appellee.

Mr. Justice DAY delivered the opinion of the court.

This suit was brought by complainant to enjoin the defendant from the use of the name "Webster" as a trademark and trade name, when applied to the sale of dictionaries of the English language. A decree was entered dismissing the bill in the United States district court (207 Fed. Rep. 515). This decree was affirmed upon appeal to the circuit court of appeals for the second circuit (207 Fed. Rep. 515), and from the latter decree an appeal was taken to this court.

The original bill set up at great length the origin and history of the Webster dictionary publications, the succession of the complainant to the ownership of the rights of publication, and the various copyrights which had been taken out from time to time to protect the use of the name "Webster," as applied to dictionaries of the English language, and facts were set out in detail concerning the various publications which the complainant and its predecessors had made from time to time. The bill, in its original form, relied upon the secondary meaning which, it was alleged, the history of the publications had established in the name "Webster," as applied to English dictionaries, and it was alleged that the exclusive right to use that name in such connection had become the property of the complainant, and entitled it to protection against those who used the word in such manner as to cause their publications to be purchased as and for the publications of the complainant. It was charged that the respondent belonged to the class of persons wrongfully using the name thus acquired, and facts in detail were set forth to support this contention of unfair competition in trade.

Page 620.

Page 621.

After the bill was filed an amendment was added setting up the ownership in complainant of certain trade-marks, duly registered in the Patent Office of the United States in accordance with the statutes in such case made and provided. The amendment alleges the registration of two trade-marks under the act of March 3, 1881 (ch. 138, 21 Stat. 502), and of eight trade-marks under the act of February 20, 1905 (ch. 592, 33 Stat. 724), and it was charged that the defendant used and imitated the complainant's trade-marks upon Webster's dictionaries by affixing the word "Webster" to dictionaries in a manner closely imitating complainant's registered trade-marks or one of them, the natural tendency of such acts being to deceive the public and to pass off defendant's dictionaries. as and for the dictionaries of the complainant. The prayer of the bill was amended so as to ask relief by injunction against the defendant from in any manner copying, imitating, or infringing any of complainant's registered trade-marks. The bill as amended therefore rested upon (1) allegations tending to establish unfair competition in trade, (2) trade-marks registered under the act of 1881, and (3) trade-marks registered under the act of 1905.

A motion to dismiss the appeal was made and passed for consideration to the argument upon the merits, which has now been had.

The circuit court of appeals' decree affirming the decree of the district court was final unless, in addition to the allegations of diverse citizenship which were contained in the bill, there was an averment of a cause of action and consequent basis of jurisdiction arising under the Constitution or statutes of the United States. (Macfadden v. United States, 213 U. S. 288; Shulthis v. McDougal, 225 U. S. 561.) If the jurisdiction of the district court was invoked on the ground of diversity of citizenship, and the averment as to a right arising under the Federal Constitution or statutes was unsubstantial and without real merit, either because of its frivolous character upon its face or from the fact that reliance was based upon a claim of Federal or statutory right denied by former adjudications of this court, then the appeal to this court must be dismissed. (Newburyport Water Co. v. Newburyport, 193 U. S. 561, 576; Equitable Life Assurance Society v. Brown, 187 U. S. 308, 311.)