Page 691. paper enterprises in which William R. Hearst is or may be interested." One of these enterprises was and is known as the International News Service. During substantially the entire period of these contracts Fisher's cartoons appeared daily in the Hearst publications and in other publications under agreements made with the International News Service. The first time that the words "Mutt and Jeff" were employed in the caption of the cartoons was under date of November 20, 1909, as follows: "Mutt and Jeff do a Little Ticket Scalping at the Big Game-by 'Bud' Fisher." As a matter of fact Fisher himself prepared the titles of headings to the cartoons, and they were uniformly published as prepared by him until December 11, 1914, when the words "Mutt and Jeff" were printed for the first time as the heading of the Fisher comic strip, reading as follows: "Mutt and Jeff-The Little Fellow Also Knows Some Law and Proves It." This heading was published without the knowledge of Mr. Fisher, who promptly protested against its use, with the result that the succeeding publications contained only headings or titles as prepared by Fisher in accordance with previous practice. It may here be observed that at about this time ineffectual negotiations had been in progress for plaintiff's renewal of the Fisher contract, and in December, 1914, Mr. Fisher had concluded a contract with the Wheeler Syndicate to commence upon the expiration of the term of the subsisting agreement with plaintiff, and it was therein provided that he was to receive a minimum of $1,000 weekly for his "Mutt and Jeff" cartoons. On January 19, 1915, and down to the end of that month the American again published the Fisher cartoons with the title "Mutt and Jeff-by 'Bud' Fisher." When these titles appeared Mr. Fisher again protested against their use, and upon the plaintiff's failure to discontinue them he ceased furnishing any further drawings for the plaintiff. It may further be noticed that the plaintiff at times during the term of its contract with Fisher extensively advertised that "Mutt and Jeff will appear in the New York American daily." These advertisements were printed in its Sunday editions, and also on cards in subway and elevated stations, on billboards, news stands, and upon plaintiff's newspaper delivery wagons. [1, 2] Broadly stated, the contention of the plaintiff is that being the first one to use the title "Mutt and Jeff " in connection with its comic series, it is entitled to the exclusive right to the use of such title as a trade-mark or trade name. It doubtless is the law that the exclusive right to a trade-mark does not belong to the one who suggested or invented it, but to the party who was the first to appropriate and use it in his business and give it a name and reputation. (Caswell v. Hazard, 121 N. Y. 494, 24 N. E. 707, 18 Am. St. Rep. 833; Columbia Mill Co. v. Alcorn, 150 U. S. 460, 463, 14 Sup. Ct. 151, 37 L. Ed. 1144; 28 Am. & Eng. Enc. of Law, 2d ed., pp. 393, 394.) The plaintiff insists that the facts of this case bring it within the decision in Herald Co. v. Star Co., C. C. (146 Fed. 204, affirmed by circuit court of appeals, 146 Fed. 1023, 76 C. C. A. 678) and Outcault v. N. Y. Herald, C. C. (146 Fed. 205), popularly known as the "Buster Brown 99 case. While the facts in the "Buster Brown" case are quite analogous in some features to those here appearing, yet they may be differentiated in material respects. In the "Buster Brown case the court found as a fact that the New York Herald was the first to use the words "Buster Brown" as the "title of a comic section" of its newspaper. In the case at bar the plaintiff had published the cartoons for about five years without the title of "Mutt and Jeff," and the only titles employed were those prepared by Fisher, which varied from day to day, the captions being appropriate to the subject matter of the given strip. In the "Buster Brown" case it appeared that the New York Herald had used the title for a number of years as a heading to a comic section of its paper. In the case at bar no such situation existed. Under all the circumstances here appearing, it may not be fairly held that the plaintiff had actually used "Mutt and Jeff" as a title of Fisher's comic strips, even if it be assumed that a strip may be regarded as a comic section of the paper. The fact is that during the entire period of its contract with Mr. Fisher plaintiff published these strips without any title of its own. The mere circumstance that in its advertisements the cartoons were referred to in connection with the words "Mutt and Jeff" is of no special significance, since it is also the fact that since September 22, 1910, Fisher published upwards of 300,000 copies of his books of cartoons selected from those which had appeared in Page 692. the American under the title of "The Mutt and Jeff Cartoons, by Bud Fisher." It is thus evident that the plaintiff was not the first user of the words "Mutt and Jeff" as a title or trade-mark, and that these words had not been appropriated by it as a trade-mark or trade name to designate its comic section or a portion thereof, except upon the few occasions during the expiring months of the agreements, after the plaintiff realized that a renewal of the Fisher contract was out of the question. It is clear that this is not a case where the plaintiff had been in the habit of labeling its comic strips with a distinctive mark, or where it may be fairly said that it had acquired by user the words "Mutt and Jeff" as against Fisher. Nor is this a case where it may be held that the plaintiff, being entitled to the exclusive services of Fisher in the drawing of the cartoons in question, became entitled to the use of the title "Mutt and Jeff," since these words originated with Fisher before he entered in the employ of plaintiff, and the cartoons had already acquired a reputation as "Mutt and Jeff" cartoons. The facts in this case, too, are different from those appearing in Jaeger's Co. v. Le Boutillier (47 Hun, 521), where it was shown that Prof. Jaeger had never been engaged in the business of selling goods, and therefore had never acquired any proprietary right in a trade-mark. On the other hand, the facts established in this case are that Fisher was most actively engaged for some time prior to his employment with plaintiff in producing the cartoons with "Mutt and Jeff" characters. [3] These cartoons, in effect the products of Fisher's hand and brain, are to be treated as a commodity of barter and sale, the same as tangible goods or merchandise which may be sold under a distinctive mark or name which the vendor may exclusively use as a trade-mark or trade name in the sale of such goods. The mere circumstance that for a period of time Fisher obligated himself to produce his cartoons exclusively for the plaintiff no more deprived him of the exclusive right to use the trademark or trade name of his productions than would a manufacturer of goods known by a trade name be deprived of the exclusive right to such trade name because he had agreed for a definite time to manufacture them exclusively for a given firm. Of course, during the time when Fisher was obliged to furnish his cartoons exclusively to the plaintiff, the latter had the exclusive right to the use of the trade name which went with the FISHER v. STAR CO. (Supreme Court, Special Term, New York County. August 14, 1916.) Action by Harry C. Fisher against the Star Company. Fisher v. Decree for plaintiff. Charles E. Kelly, of New York City, for Fisher. William A. De Ford, of New York City (Bainbridge Colby, David Gerber, and Nathan Burkan, all of New York City, of counsel), for Star Co. GREENBAUM, J. For the reasons stated in the opinion filed in Star Co. v. Wheeler Syndicate (160 N. Y. Supp. 689), a decree will be entered in favor of plaintiff. [160 N. Y. Supplement, p. 693.] Star Co., Aug. 14, 1916. WHEELER SYNDICATE, INC., v. STAR CO. (Supreme Court, Special Term, New York County. August 14, 1916.) Action by the Wheeler Syndicate, Incorporated, against Wheeler Synthe Star Company. Decree for plaintiff. Charles E. Kelley, of New York City, for Wheeler Syndicate, Inc. William A. De Ford, of New York City (Bainbridge Colby, David Gerber, and Nathan Burkan, all of New York City, of counsel), for Star Company. 76228°-17-27 dicate, Inc., v. Star Co., Aug. 14, 1916. GREENBAUM, J. Upon the opinion filed this day in Star Company v. Wheeler Syndicate (160 N. Y. Supp. 689), a decree will be entered in favor of plaintiff. [160 N. Y. Supplement, p. 693.] STECHER LITHOGRAPHIC CO. v. DUNSTON LITHO- (District Court, Western District New York. February Stecher Lith-1. COPYRIGHTS-REGISTRATION IN PATENT OFFICE-LITHOGRAPH— ographic Co. v. Dunston Litho"CHROMO." graph Co., Feb. 23, 1916. Revised Statutes, sec. 4952, as amended by act March 3, 1905, ch. 1432, 33 Stat. 1000, provides that the proprietor of any engraving, cut, print, or photograph, or negative thereof, or of a painting, drawing, or chromo intended to be perfected as works of the fine arts, shall have the sole liberty of vending the same. Act June 18, 1874, ch. 301, sec. 3, 18 Stat. 79, which seems not to have been repealed, declares that no prints or labels designed to be used for any other articles of manufacture shall be entered under the copyright law, but shall be registered in the Patent Office. Held that, as the act of 1874 plainly omits chromos, which are known as chromolithographs and are pictures produced from drawings on stones, each color being represented by a different stone, registration of such pictures in the Patent Office is not necessary to obtain a copyright. 2. COPYRIGHTS-RIGHT TOPICTURES. That chromos were intended for advertising articles of commerce does not prevent the proprietor from obtaining a copyright thereof. 3. COPYRIGHTS-RIGHT TO-PICTURES. That chromos possess little artistic merit will not prevent the proprietor from obtaining a copyright, it being enough that they were originated by the proprietor. 4. COPYRIGHTS-NOTICE OF COPYRIGHT-PURPOSE. The purpose of requiring publication or notice of copyrights is to prevent innocent persons from suffering the penalty of the statutes for reproduction of the copyrighted articles. 5 COPYRIGHTS-NOTICE OF COPYRIGHT-SAMPLES. The sending of samples of chromos out to the trade is not a publication, and the fact that such samples were not stamped with notice of copyright does not authorize another manufacturer to reproduce them. |