say, identify them with the particular manufacturer or trader, and to distinguish them from similar goods. (United States v. Braun, 39 Fed. 775, 28 Am. & Eng. Enc. Law, p. 346.) The mere advertisement of the words or symbol without application to the goods themselves is insufficient to constitute a trade-mark. It logically follows that an opposer must show a legal damage to authorize him to oppose successfully the registration of a trade-mark. While the provision of section 6 of the trade-mark act (33 Stats. L. 726) permitting "any person who believes he would be damaged by the registration of a mark," to oppose the same by filing a notice of opposition is very broad, it has been steadfastly held that the opposer must establish an injury of a legal character. (McIlhenny's Son v. New Iberia Co., 30 App. D. C. 337, 133 O. G. 995, 1908 C. D. 325; Battle Creek Sanitarium Co. v. Fuller, supra; Underwood Co. v. Dick Co., 36 App. D. C. 175, 163 O. G. 730, 1911 C. D. 298; Tim & Co. v. Cluett, Peabody & Co., 42 App. D. C. 212, 202 O. G. 306, 1914 C. D. 183.) In the Battle Creek case, the rule is concisely stated as follows: It is not sufficient for the opponent to say that he believes he would be damaged. He must allege some fact showing an interest in the subject matter from which damage might be inferred. If he has not used the mark as a trade-mark upon goods of a like description he can suffer no damage from its registration by another. Opposer's difficulty consists in failing to distinguish between a copyright or design patent and a trade-mark. The mere fact that through her literature she has given publicity to this imaginary being called "Kewpie," and by her inventive genius has created a figure for which she has secured a design patent, accords her no trademark right in the name by which this imaginary being is designated. It would hardly be contended, for illustration, that the owner of a copyright on a picture called "Uncle Tom's Cabin," would be heard to object to the use of that title by another as a trade-mark for whisky. Before opposer can be heard, therefore, it must appear that she has used the figure or word "Kewpie" as a trade-mark on goods of the same descriptive properties as the goods of applicant to which the mark is applied and at a date prior to its use by applicant. In this she totally fails. The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed. [216 Patent Office Gazette, pp. 1320-21; 44 D. C. Appeals Reports, pp. 33-39.] M. WITMARK & SONS v. STANDARD MUSIC ROLL CO. (Circuit Court of Appeals, Third Circuit. March 20, 1915.) M. Witmark 1. COPYRIGHTS-INFRINGEMENT-LAW GOVERNING. & Sons v. Standard Mu sic Roll Co., Mar. 20, 1915. Page 377. Under copyright act March 4, 1909, ch. 320, sec. 1, 35 Stat. 1075 (Comp. St. 1913, sec. 9517), providing that any person complying with the provisions of that act shall, in the case of a musical composition, have the exclusive right to perform the copyrighted work publicly for profit, and for the purpose of public performance to make any arrangement or setting of it, or of the melody of it, in any system of notation or form of record, but that the provisions of that act, so far as they secure a copyright controlling the parts of instruments serving to reproduce mechanically the musical work, shall include only compositions published and copyrighted after that act becomes effective, section 3 (Comp. St. 1913, sec. 9519), providing that the copyright provided by that act shall protect all the copyrightable component parts of the work copyrighted and shall give all the rights which the proprietor would have if each part were individually copyrighted, and section 63 (Comp. St. 1913, sec. 9584), providing that nothing therein shall affect causes of action for infringement theretofore committed, then pending or thereafter instituted, whether the distribution of the words of a song by a manufacturer of perforated music rolls infringed a copyright obtained in 1908 on the musical composition, consisting of the words and staff notation, was governed by the prior law, and not by the act of 1909. 2. COPYRIGHTS INFRINGEMENT "MUSICAL COMPOSITION "BOOK." Under Revised Statutes, sec. 4952, as amended by act March 3, 1905, ch. 1432, 33 Stat. 1000, providing that the author of any book, musical composition, etc., by complying with the provisions of that chapter, should have the sole liberty of printing, publishing, finishing, and vending it, under which the copyright office ruled that a "musical composition" covered words and music, and that the words of a song alone could be copyrighted only as a "book," a copyright covering a musical composition, consisting of the 3. COSTS-DIVISION-PARTIAL RECOVERY-SUITS MENT. FOT INFRINGE Where a suit for the infringement of copyrights involved two distinct musical compositions, and complainant prevailed only as to one of such compositions, the trial court did not abuse its discretion in making a division of the costs. Appeal from the District Court of the United States for the District of New Jersey; Edward G. Bradford, judge. Suit by M. Witmark & Sons, a corporation, against the Standard Music Roll Company. From a decree (213 Fed. 532) in favor of defendant, plaintiff appeals. Affirmed. Nathan Burkan, of New York City, for appellant. Louis M. Sanders, of Orange, N. J., for appellee. Before Hunt, McPherson, and Woolley, circuit judges. HUNT, Circuit Judge. Witmark & Sons, plaintiff corporation, has appealed from an interlocutory decree of the District Court in and for the District of New Jersey adjudging that the Standard Music Roll Company, defendant, has not infringed the plaintiff's copyright in the musical composition, "In the Garden of My Heart," and dismissing the complaint, and refusing an injunction with respect to the composition, and decreeing that the costs of the district court be divided between the parties. Witmark & Sons, appellant, is engaged in the publica- Page 378. tion of musical compositions. In the course of its business it published and sold complainant's song, copyrighted in August, 1908, entitled "In the Garden of My Heart." The appellee is a corporation engaged in the manufacture of perforated music rolls. In 1912 it adopted a plan of printing the words of lyrics of certain popular songs and inclosing such printed words with the rolls of perforated music, making no extra charge for the printed words sent to the purchaser. It inclosed. the printed words of the song, "In the Garden of My Heart." Plaintiff objected, and thus arises the present controversy. (1) The learned judge of the district court held that the musical composition, "In the Garden of My Heart," having been copyrighted prior to the copyright act of March 4, 1909, was protected only for the musical composition, consisting of music and words, and that while the copyright of a composition of words or of musical notation extends to all parts of the musical notation or of the words, yet the copyright having been for the music in conjunction with the words-that is, for a "musical composition "the inclosing of the words of the musical composition with the perforated rolls did not infringe the copyrighted musical composition. The appellant contends that this was error because: (1) In all matters concerning the extent of the rights protected by copyright and concerning infringements of such rights, the copyright law of March 4, 1909, controls; and (2) because a copyright acquired under the laws which obtained prior to the act of 1909 protected a musical composition consisting of words and music by securing the exclusive right to copy, publish, and print the work. As the law stood in 1908, the defendant appellee had the right to use the song, "In the Garden of My Heart," on its perforated rolls. This general right was not inhibited by any act of Congress prior to the act of March 4, 1909. In that act, so far as pertinent to this matter, it was provided (sec. 1) that any person entitled thereto, upon complying with the provisions of the act, should have the exclusive right to perform the copyrighted work publicly for profit, if it be a musical composition, and for the purpose of public performance to make any arrangement or setting of it, or of the melody of it, in any system of notation or any form of record in which the thought of an author may be recorded, and from which it may be read or reproduced; but it was expressly provided that the provisions of the act, so far as they secure copyright controlling the parts of instruments serving to reproduce mechanically the musical work, should include only compositions published and copyrighted after the act became effective. In White-Smith Music Publishing Company v. Apollo Company (209 U. S. 1, 28 Sup. Ct. 319, 52 L. Ed. 655, 14 Ann. Cas. 628), decided before the act of March 4, 1909, was passed, the Supreme Court, after a review of the history of the copyright statutes of the United States since 1831, refers to American and English judicial construction of copyright statutes in determining whether or not perforated sheets of paper are copies of sheet music within the meaning of the copyright law. The court said: It may be true that in a broad sense a mechanical instrument which reproduces a tune copies it; but his is a strained and artificial meaning. When the combination of musical sounds is reproduced to the ear, it is the original tune as conceived by the author which is heard. These musical tones are not a copy which appeals to the eye. In no sense can musical sounds which reach us through the sense of hearing be said to be copies, as that term is generally understood, and as we believe it was intended to be understood, in the statutes under consideration. A musical composition is an intellectual creation, which first exists in the mind of the composer; he may play it for the first time upon an instrument. It is not susceptible of being copied until it has been put in a form which others can see and read. The statute has not provided for the protection of the intellectual conception apart from the thing produced, however meritorious such conception may be, but has provided for the making and filing of a tangible thing, against the publication and duplication of which it is the purpose of the statute to protect the composer. Again, the court inquires, What is the perforated roll used in playing upon a piano to which is attached a mechanical device where musical rolls consisting of perforated sheets are passed over ducts connected with the operating parts of the mechanism in such a way that by means of perforations in the rolls air pressure is admitted to the ducts which operate the devices to sound the notes? and reasons that even those skilled in making the rolls can not read them as musical compositions as those in a staff notation are read by the performer, holding that it is not intended that these perforated rolls can be read as an ordinary piece of sheet music, which to those skilled in the art conveys by reading, in playing or singing, definite impressions of the melody. The conclusion. reached is that the perforated rolls are parts of a machine to be operated in connection with the mechanism to produce musical tones in harmonious combination, but that they are not copies within the meaning of the copyright act. The argument of the appellant that because the words of the song were distributed with the perforated rolls since the act of March 4, 1909, went into effect there has been an infringement of copyright is not persuasive. It is true, as contended, that under the new law one who can avail himself of copyright may charge infringement Page 379. |