that it can be copyrighted, I see no reason under the statute for denying registration because the feature thereof which imparts originality is used or is capable of use as a trade-mark. The act of 1874 does not prohibit the registration of a print or label which is a trade-mark, but merely provides that for recording a label, not a trade-mark, the fee shall be $6. The label in question is not a trade-mark, and no trade- Page 1346. mark rights are acquired by registering it. I think the label should be registered. The examiner of trade-marks is overruled. [204 Patent Office Gazette, pp. 1345–46.] L. A. WESTERMANN CO. v. DISPATCH PRINTING CO. (Circuit Court of Appeals, Sixth Circuit. June 22, 1916.) PRAYER FOR Westermann v. Dispatch Ptg. Co., June Under copyright act March 4, 1909, ch. 326, sec. 27, 35 22, 1916. 2. APPEAL AND Error-REVIEW-FINDINGS EQUITY CASES. In an equity suit, the appellate court will review questions of fact, subject to the rule that the findings of the trial court will not be lightly disturbed. 3. COURTS-RECORD-STATEMENT OF EVIDENCE. Where, in an equity suit, the defeated party appealed and also brought error, and the evidence was brought up in a so-called bill of exceptions, it will, the intention being clear that it should be treated also as a statement of evidence under equity rule 75 (198 Fed. xl, 115 C. C. A. xl), be so regarded. 4. APPEAL AND ERROR-REVIEW-PRESUMPTIONS. Where defendant did not appeal, and complainant only appealed from the award of damages, claiming it inadequate, it will be presumed that the determination of the trial court that defendant was liable was correct, although such matter might be reviewed. Page 610. 5. COPYRIGHTS-INFRINGEMENT DAMAGES-NEWSPAPER TIONS. PUBLICA Copyright act, sec. 25 (Comp. St. 1913, sec. 9546), declares that if any person shall infringe a copyright he shall be liable to pay the proprietor such damages as may have been suffered, or, in lieu of actual damages, such damages as to the court shall appear just; and in assessing damages the court may, in its discretion, allow the amounts stated, but in case of a newspaper reproduction of a copyrighted photograph, the damages shall not exceed the sum of $200, nor be less than $50, and that such damages shall in no other case exceed the sum of $5,000, nor be less than $250, which shall not be regarded as a penalty. The section supplanted prior statutes making somewhat similar provisions for award of damages. Held that where the copyright proprietor did not seek actual damages, but sought those provided in lieu thereof, he was, in case of a newspaper reproduction of copyrighted drawings, entitled to at least $250 damages for the infringement. 6. COPYRIGHTS" INFRINGEMENT "-WHAT CONSTITUTES. Under copyright act, sec. 25, authorizing recovery of damages for infringement, and providing that if the proprietor does not seek recovery of actual damages, he may recover in lieu thereof fixed damages for each infringement, an "infringement" will be treated as those acts, whether one or many, constituting a connected and fairly unitary invasion of the proprietor's rights. COPYRIGHTS-INFRINGEMENT— -DAMAGES. The proprietor of numerous sketches showing women's styles for an approaching season, who disposed of them to the trade, contracted with a retail dealer at one town, giving him the exclusive right to reproduce any sketches which he desired in his newspaper advertising. The defendant newspaper company published advertisements for other retail dealers, reproducing such copyrighted sketches. The proprietor sued, seeking an injunction, and claimed, under copyright act, sec. 25, that the publication of each separate sketch constituted an infringement entitling him to the minimum damages provided. Held that while the sketches were separately copyrighted, yet as, under the act, the notice of copyright and not registration is all-important, and separate registration would give no greater rights, the several publications constituted only one infringement, entitling the proprietor only to a single award, for the several copyrights involved a related subject-matter, and, if suits for infringement of the copyright of each picture had been brought, they would have been consolidated. Appeal and writ of error from the District Court of the United States for the Eastern Division of the Southern District of Ohio; John E. Sater, judge. Suit by the L. A. Westermann Company against the Dispatch Printing Company. There was a judgment awarding partial relief, and complainant appeals and brings error. Reversed and remanded, with directions. Williams and Nash, of Columbus, Ohio, for appellant. S. W. Bennett, of Columbus, Ohio, for appellee. Before Warrington and Denison, circuit judges, and Killits, district judge. DENISON, Circuit Judge. The appellant was the plaintiff below. Although a corporation, it seems to be the enterprise of Mr. Westermann, and it will be convenient to speak of him as the plaintiff. The defendant was a newspaper publishing corporation. Plaintiff was engaged at New York in the business of selling illustrations of styles for women's dress. Pursuing his longestablished method of business, when the fall season of 1911 approached he employed Mrs. Westermann, as artist and designer, to observe and reproduce and to design sketches of hats and gowns, among other things, illustrative of fall styles. These sketches showed women as they would appear wearing such articles, and were artistic. and attractive. The sketches were then grouped, 8 or 10 together, and printed upon large display sheets. Each sketch was separately deposited with the register of copyrights and copyright claimed thereon; and each Page 611. sketch when published in the group carried independently the copyright notice. Westermann sent these display sheets, as issued from time to time, to his mailing list of 1,200 retail dealers in women's dress throughout the United States, accompanied by an offer to sell to each dealer electroplates of any desired sketch, with the exclusive right to use it in the dealer's town. This record shows that Westermann published and distributed at least six such display sheets, two on August 15, three on September 1, and one on September 19. He made a contract covering the season with Morehouse, a retail dealer at Columbus, Ohio, somewhat varying the general method of business, and whereby it was agreed that Westermann should furnish Morehouse these style sheets, and that Morehouse, in consideration of a fixed sum, should have the exclusive right in Columbus to reproduce any of these sketches which he desired to use in his Columbus newspaper advertising. 76228°-17-31 Page 612. At intervals from September 19 to October 15 the defendant newspaper published six advertisements for five Columbus retailers other than Morehouse, in each one of which six advertisements there was reproduced one of the copyrighted sketches, no one being used twice. November 10 defendant reproduced in its newspaper for still another advertiser the same sketch which it had once published on October 15. No two of these sketches were included by plaintiff in any one of his display sheet groups. In the court below Westermann filed his bill of complaint, setting out these facts, alleging that it was impossible to show by proof the actual damages suffered. and that he elected to take and demand the alternative "just" damages given by section 25 of the copyright law (act Mar. 4, 1909, ch. 320, 35 Stat. L. 1075, Comp. St. 1913, sec. 9546), asking a judgment for the maximum of $5,000 for each of the seven alleged infringing publications and asking also an injunction. Defendant answered; plaintiff replied, proofs were taken in open court; all of the issues were found in favor of plaintiff; and his damages were fixed at $10 for each infringement. The defendant was content; the plaintiff brought the case here on appeal and on writ of error. [1-3] 1. The case must be treated as an equity case here on appeal. Section 27 provides that all proceedings contemplated by the act, including those for injunction, damages, profits, and for the seizure of infringing copies, etc., may be united in one action. It is easy to see that composite actions might be brought which it would be difficult to classify as between equity and law; but there is no such difficulty here. The prayer for damages, in connection with the injunction, does not at all disparage the dominant equitable character of the proceeding. The awarding of such damages is within the customary powers of a court of equity. Plaintiff adopted and defendant accepted all the forms of a proceeding in equity, and the suit must be so considered. It follows that we must decide the questions of fact as well as those of law involved. save that, under familiar rules, the conclusion of the trial court on questions of fact will not be lightly disturbed. Although the testimony is here upon a so-called bill of exceptions, we think the intention is clear enough that it should be treated also as a statement of evidence, under equity rule 75 (198 Fed. xl, 115 C. C. A. xl); and it will be so regarded. [4] 2. Issues as to the necessity of making Morehouse a party, as to the copyrightable character of the sketches, as to the effectiveness of the registration proceedings, and as to the sufficiency of the notice and defendant's knowledge-all were decided against defendant, and defendant has not appealed. While it would be open to us to consider such issues, because involved in any judgment for plaintiff, yet in this case we see no reason for considering them on our own motion, and in the absence of any complaint. We therefore assume that the court below was correct in these particulars, and that the only question. for consideration is the one which alone the parties have presented, viz, the proper measure of damages under section 25, as applied to the facts of this case. [5] 3. Section 25, so far as pertinent, is quoted in the margin.1 By the clause "in lieu of" it contemplates an election or discretionary choice between actual damages and profits on the one side, and, on the other side, an assumed or somewhat arbitrary award of such damages as may be just. Plaintiff claims that the copyright proprietor is entitled to make this election, and to plant his action arbitrarily and absolutely upon one theory or the other; defendant insists that the election or the discretionary choice is to be made by the court upon the trial. 1 SEC. 25. [Infringement-Liability.] That if any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable: (a) To an injunction restraining such infringement; (b) To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or in lieu of actual damages and profits such damages as to the court shall appear to be just, and in assessing such damages the court may, in its discretion, allow the amounts as hereinafter stated, but in case of a newspaper reproduction of a copyrighted photograph such damages shall not exceed the sum of two hundred dollars nor be less than the sum of fifty dollars, and such damages shall in no other case exceed the sum of five thousand dollars nor be less than the sum of two hundred and fifty dollars, and shall not be regarded as a penalty First. In the case of a painting, statue, or sculpture, ten dollars for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees; Second. In the case of any work enumerated in section five of this act, except a painting, statue, or sculpture, one dollar for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees; Third. In the case of a lecture, sermon, or address, fifty dollars for every infringing delivery; Fourth. In the case of a dramatic or dramatico-musical or a choral or orchestral composition, one hundred dollars for the first and fifty dollars for every subsequent infringing performance; in the case of other musical compositions, ten dollars for every infringing performance. |