lary proceeding a bill interposed for the purpose of obtaining a decree in personam against a party upon the ground that he had participated in the defense of a previous action against another party so as to become bound upon the doctrine of res judicata. (Kelley v. T. L. Smith Co., C. C. A. 7, 117 C. C. A. 240, 196 Fed. 466, is referred to.) In that case Kelley, a citizen of New York, and McConnell, a citizen of Illinois, had commenced an action in a Wisconsin State court to compel the secretary of the Smith Company to transfer certain shares of stock standing in Kelley's name to McConnell, as his assignee. A firm of Milwaukee attorneys brought the action, and an attorney connected with that firm was in possession of the certificate as agent of McConnell. Thereupon the company and its secretary filed in the United States circuit court a bill asserting that the equitable title to the shares was involved in a suit already pending in that court, to which the company was a party defendant; that thus different parties, in different courts, were insisting that complainants transfer the same shares to each, and if complainants should comply with the demand of either they would be unable to transfer the shares to the other if so ordered by a court decree, and that they had no interest in the shares and were willing to transfer them to the party found to be the owner. On the showing that Kelley and McConnell were not to be found in the district, and that the stock certificate was within the district, in the hands of their attorneys and agent having authority to assert and preserve their rights, the court ordered the subpoena and the notice of application for an interlocutory injunction to be served, and they were served, upon said attorneys and agent. The circuit court overruled a demurrer, and the court of appeals sustained this decree, not, however, upon the ground that the suit was an ancillary proceeding in aid of the court's jurisdiction in a pending suit, but upon the ground that, as an independent and original bill, it presented a subject cognizable in a circuit court of the United States, and that although jurisdiction in personam could not be acquired by service of process under equity rule 13, because of the absence of the defendants, substituted service was permissible under the then equity rule 90 by analogy to the English practice. Without intimating any view as to the correctness of this reasoning, it is sufficient to say that the decision has no pertinency to the question here presented.

Upon these grounds we are of opinion that substituted service of process against Ogilvie was inadmissible, and that the district court did not err in quashing the service and setting aside the proceedings based thereon, nor in refusing appellant's petition for enforcement of the decree against him.

Final orders affirmed.

[36 Supreme Court Reporter, pp. 477-481.]

F. A. MILLS v. STANDARD MUSIC ROLL CO.

(District Court, District of New Jersey. July 1, 1915.)

Mills v. Stand- 1. COPYRIGHTS - LICENSE AGREEMENT FOR USE OF COPYRIGHTED ard Music Roll WORKS-CONSTRUCTION "MUSICAL COMPOSITION."

Co., July 1, 1915.

A license agreement which recites that plaintiff is the owner of a copyrighted musical composition, that defendant desires to secure the privilege of using it in the manufacture of its music rolls, and which declares that plaintiff gives to defendant the privilege to use the copyrighted musical composition in the manufacture of its sound records in any form, and consents to extending the original copyright to the instruments serving to reproduce mechanically the musical work, does not permit defendant to print, and distribute without additional charge, on separate sheets of paper the words of the composition in the boxes containing the rolls, though the words and music were not copyrighted separately; the words "musical composition" having a more limited meaning in the license agreement than in the copyright statute, where the expression means both words and music.

2. COPYRIGHTS-INFRINGEMENT-DEFENSES.

Copyright act March 4, 1900, ch. 320, sec. 1, 35 Stat. 1076 (Comp. St. 1913, sec. 9519), giving any person entitled thereto, on complying with the act, the exclusive right to print, reprint, publish, copy, and vend a copyrighted work, to perform the copyrighted work publicly for profit, and requiring a copyright owner using the musical composition himself for the manufacture of parts of instruments serving to reproduce mechanically the musical work, or licensing others to do so, to file notice thereof, and providing that any failure to file notice shall be a defense to any suit for any infringement of such copyright, does not prevent an owner of a copyrighted musical composition from maintaining an action for protection of his exclusive right to print, reprint, publish, copy, and vend the copyrighted work, merely because he has licensed others to use the copyrighted work on parts of instruments serving to reproduce mechanically the musical work and has failed to file a notice thereof.

Where a licensee of the right to use a copyrighted musical composition in the manufacture of sound records infringed the copyright by distributing free with the perfo rated rolls copies of the words of the composition, but discontinued the practice almost immediately after it was begun, and he realized no profits from the practice, nor damaged the licensor, the court, in a suit for infringement, would only allow nominal damages under copyright act 1909, sec. 25.

4. COPYRIGHTS-INFRINGEMENT COSTS.

A defendant, unsuccessful in a suit against him for infringement of a copyright, is liable to reasonable counsel fees awarded to plaintiff, as provided by copyright act 1909, sec. 40.

In equity. Two suits, tried together, by F. A. Mills, Page 850. Incorporated, against the Standard Music Roll Company, for alleged infringements of copyrights. On final hearing. Decree for complainant.

Nathan Burkan; of New York City, for plaintiff. Louis M. Sanders, of Orange, N. J., for defendant. HAIGHT, District Judge. F. A. Mills, Incorporated, the plaintiff, has instituted two suits against the Standard Music Roll Company, a corporation, the defendant, for alleged infringements of the plaintiff's copyrights in two musical compositions entitled, respectively, "Waiting for the Robert E. Lee" and "Take Me to That Swanee Shore." They were copyrighted on May 3, 1912, and August 30, 1912, respectively. The suits were tried. together, as the facts and questions presented in each are the same.

The plaintiff is engaged in the publication of musical compositions, and the defendant in the manufacture of perforated music rolls serving to reproduce mechanically the musical features of such compositions. Prior to the committing of the alleged infringing acts, the plaintiff had licensed the defendant to use the copyrighted musical compositions in the manufacture of its perforated rolls. The defendant inclosed and distributed in the boxes containing the rolls separate sheets or slips of paper on which it had caused to be printed the words or lyrics of the compositions. This, it is claimed, infringed the plaintiff's copyrights.

[1] It is contended primarily on behalf of the defendant that the license agreement permitted the defendant to do this, and consequently that there was no infringe

Page 851.

ment. The license agreement in each case is in writing, and both are in identically the same form. After reciting that the plaintiff is the owner of the copyright, and that the defendant desires to secure the privilege to use "the said copyrighted musical composition, in the manufacture of its music rolls" they each grant the privilege in the following language:

The publisher [the plaintiff] hereby gives to the company [the defendant] the right, privilege, and authority to use the said copyrighted musical composition, , in the manufacture

of its sound records in any form whatsoever, and hereby consents to extending the original copyright of said musical composition to the instruments serving to reproduce mechanically the said musical work.

While it seems that the words" musical composition," used in the copyright statute, mean both words and music (M. Witmark & Sons v. Standard Music Roll Co., 221 Fed. 376, C. C. A., C. C. A. 3d Cir.), still I think that they must be given a more limited meaning in the license agreements in question. The privilege granted was to use the musical composition "in the manufacture of its [defendant's] sound records." The printing of the words on a separate sheet of paper and the distribution of the latter had nothing whatsoever to do with the manufacture of the perforated rolls. They were quite distinct acts. Also by the terms of the license agreements the original copyright is extended to the instruments serving to reproduce mechanically the said musical work." Neither the rolls nor the instruments in which they were to be used reproduced the words of the compositions, nor were they capable of doing so.

I can readily perceive that, if the defendant were manufacturing discs or records for use in phonographs or similar instruments, which produce both the words and the music, the license agreements would permit the use of both the words and the music, because both would then enter into the manufacture of the records. Admittedly, it was not until some months after the license agreements were executed that the scheme of inclosing the printed words in the same packages with the perforated rolls was conceived by the defendant. It could not, therefore, have been contemplated by the parties, at the time the agreements were executed, that the privilege was to extend to the use of the words in the way in which the defendant has used them. If the defendant has the right

to print and distribute the words alone in the way complained of, it would have the same right to print the words and music together on a separate sheet, and distribute it with the perforated rolls. It could thus defeat the plaintiff's exclusive right to publish and sell the musical composition. Manifestly the plaintiff did not, by the license agreements, divest itself of that right. I therefore am constrained to find that the license agreements did not permit the defendant to print and distrib ute the words of the musical composition in the way ir which it did.

It is not questioned by the defendant that, under section 3 of the copyright act of 1909 (35 Stat. 1075), the unauthorized use of either the words or music separately would constitute an infringement of the copyrighted "musical composition," although the words and music. were not copyrighted separately. It has been so held in this district in M. Witmark & Sons . Standard Music Roll Co., D. C., 213 Fed. 532), although this apparently was not the rule in this circuit prior to the act of 1909. (M. Witmark & Sons Co. v. Standard Music Roll Co., 221 Fed. 376, C. C. A. 3d Cir.) It therefore follows that the defendant has infringed the plaintiff's copyrights by the unauthorized printing and distribution of the words of the copyrighted musical compositions.

C. C. A.

[2] But it is further urged on behalf of the defendant that because the plaintiff has licensed others to use the copyrighted works upon parts of instruments serving to reproduce mechanically the musical works, and has failed to file a notice thereof in the Copyright Office, as provided by subsection (e) of section 1 of the act of 1909, it is, by virtue of that section, barred from any recovery for an infringement of its copyrights. It is true that this section makes it the duty of the owner of the copyright, if he uses the musical composition himself for the manu facture of parts of instruments serving to reproduce mechanically the musical work, or licenses others to do so, to file a notice thereof in the Copyright Office, and provides that "any failure to file such notice shall be a complete defense to any suit, action or proceeding for any infringement of such copyright." It is the defendant's contention that this provision bars recovery for any infringement of the copyright; while the plaintiff contends that it only precludes it from instituting a suit for infringe