Page 209

name. The fact that he insisted upon this right does not justify the defendant in withholding payment to him of the amount due under the contract. The failure to publish the story as agreed was a breach of contract by the defendant.

Judgment reversed and a new trial ordered, with costs to the appellant to abide the event.

LEHMAN, J. (dissenting). The plaintiff on August 3, 1909, sold a story to the defendant for publication in the World. Nothing was stated as to whether the article was to be printed with the plaintiff's name, but both parties appear to have assumed that the name was to be added to the article. The article was placed in type, but before it was published the defendant notified the plaintiff that it must be printed as an unsigned article, and the plaintiff apparently assumed the attitude that the advertisement to be derived from the publication with his name was an important part of the agreement, and refused to permit its publication without his name. The attitude of the parties points clearly to the view that they regarded the contract of August 3 as either incomplete or ambiguous in regard to the question of the right to demand that the article be printed with the plaintiff's signature.

Upon the whole evidence I am brought to the conclusion that the negotiations after the 3d day of August show an intent on both sides to consider this question de novo, and to regard the contract of August 3 either as incomplete or rescinded if the parties failed to come to a conclusion. If this contract was incomplete, obviously the plaintiff has no right of action; if the contract was complete, and thereafter rescinded because both parties were doubtful of their rights, the rescission was a compromise of doubtful rights, and therefore a contract founded upon a good consideration. I find no insuperable objection to the view that the contract was rescinded because the plaintiff did not return the 25 galley proofs furnished him by the defendant, nor did the defendant return the original manuscript furnished by the plaintiff. The defendant's editor testified that the galley proofs were furnished as a courtesy for distribution to other newspapers, and with copies of the story in his possession the plaintiff may well have considered the manuscript as of no value. Upon a rescission of a

contract by one party, not with the consent of the other, but in reliance on a legal right to rescind, the party rescinding must, of course, return the consideration; while, upon a rescission by mutual consent, the necessity for the return of the consideration depends upon the mutual understanding of the parties.

I think that the judgment should be affirmed.

[122 New York Supplement, pp. 206-209; 67 Miscellaneous Reports, pp. 183-187.]

ALFRED DECKER COHN CO. v. ETCHISON HAT CO. ET AL.

(District Court, E. D. Virginia. June 28, 1915.)

COPYRIGHTS-INFRINGEMENT ACTS CONSTITUTING.

Alfred Decker Cohn Co. บ.

Under copyright act March 4, 1909, ch. 320, sec. 20, 35 Etchison Hat Co., June 28, Stat. 1080 (Comp. St. 1913, sec. 9541), providing that where 1915. a copyright proprietor has sought to comply with the act with respect to notice, the omission by accident or mistake of the notice from a particular copy or copies shall not invalidate the copyright, or prevent a recovery of damages against a person who after actual notice of the copyright Page 136. infringes it, but shall prevent recovery of damages against any innocent infringer misled by the omission of the notice, a copyright proprietor, whose notice of copyright is defective because of the characters or symbols therein being so small that an average observer may discover nothing therefrom, may not recover damages against one innocently infringing the copyright, and on ascertaining the facts promptly discontinuing the use thereof; but he will be enjoined from future use, if injunction is desired by the proprietor, for the defects in the notice do not invalidate the copyright.

In equity. Bill by Alfred Decker Cohn Company against the Etchison Hat Company and another to enjoin infringement of copyright. Relief granted in part.

Pines & Newmann, of Chicago, Ill., and Jo Lane Stern, of Richmond, Va., for complainant.

George C. Fitzhugh, of Richmond, Va., for defendants. WADDILL, District Judge (orally). The court can dispose of this case now, and assumes that it will be more satisfactory to all parties for it to do so.

Congress, by act of March 3, 1909, has sought most comprehensively to make plain all matters we are considering. It passed an act with 64 sections, dealing with almost every phase of this case. Among other things, it provided for publication of a copyright to make it valid;

Page 137.

it must be registered with the authorities in Washington; and the copyright, when issued, shall contain a certificate with specific symbols attached. The purpose of having publication of the symbols is that no one shall be misled as to the existence or nonexistence of the copyrighted article. Copyright is a very valuable privilege; it runs for 28 years. Just how it shall be procured, and of what it shall consist, and what shall be done respecting its publication, is sought to be covered by this act. Damages are allowed for infringing, pirating, or copying it. It provides for a minimum and maximum allowance of damages, and also for costs, and for attorney's fees in the discretion of the court, in favor of the party owning the copyright. Whether the allowance of damages is discretionary or not is not entirely clear. The court is inclined to think that the interpretation of section 25 of the act leaves it within the discretion of the court to allow or refuse damages entirely. But it is not necessary to determine that question. Section 20 bears materially on this case. It provides that, where a copyright proprietor has sought to comply with the provisions of the act with respect to notice, the omission by accident or mistake of the prescribed notice from a particular copy or copies shall not make invalid the copyright, or prevent recovery of damages against a person who, after actual notice of the copyright, begins an undertaking to infringe, but shall prevent the recovery of damages against an innocent infringer, who has been misled by the omission of notice, and in a suit for infringement no permanent injunction shall be had, unless the copyright proprietor shall reimburse the innocent infringer his reasonable outlay innocently incurred, if the court in its discretion shall so direct. That section seems to be reasonably clear.

There has been more or less feeling in this case, for which the court has not seen the slightest reason. The complainant claimed to have a copyright, and the defendants, citizens of Richmond, Va., did put a miniature copy of it in a publication of comparatively limited circulation. They did not take it from what they believed to be a copyrighted article, and the moment their attention was called to it they explained that they did not mean to infringe any copyright, and at once stopped its publication, and have not used it since. That is this case, and it does not impress the court as having much merit in it, but, on the contrary, is one in which an innocent mistake had

been made, which was at once corrected, and from which no serious result or damage occurred sufficient to support a lawsuit other than from a mere technical viewpoint. Theoretically copyright owners may sustain damages by a publication of this character, and it may be difficult to prove the same; but here we are not furnished with evidence of any damage sustained from any standpoint, and the case is one certainly void, from the evidence adduced, of any intentional wrong on the part of the defendants.

The alleged infringement consists in copying a picture illustration in "Men's Wear," which defendants insist contained no symbol or mark or other thing to indicate that it had been copyrighted. Complainant insists that the publication did contain the proper symbols or marks to show that it had been copyrighted. This presents a question of fact, and while, if it be conceded that the rule applicable to the claims of a patent may have general application to that of copyright, that is to say, that such symbols must so appear upon the publication that one ordinarily skilled in the art, as distinguished from a layman, would observe the same, still, to the mind of the court, this publication is so defective in the respects indicated, so absolutely lacking in furnishing what the statute in terms prescribes it shall have, to the end that persons to be affected thereby might secure notice thereof, that the defendants ought not to suffer from such neglect.

The statute, among other things, prescribes that the notice shall contain the letter "C" inclosed within a circle. There is no excuse for any one to make a character so small that you can not see what it is. Perhaps the "C" in the publication of "Men's Wear" might be discovered with a microscope by a person skilled in the art, still an average observer would discover nothing therefrom even with such aid, and what is said in this respect applies likewise to the other symbols on the notice.

The judgment of the court is that the notice published in "Men's Wear" was so defective in the respects indicated as not to convey to any one the existence of a copyright, and its conclusion upon the whole case is that the complainant has a valid copyright; that incidentally these defendants have infringed the same; that by reason. of the improper and defective publication in "Men's Wear," from which the defendants copied the same, no damages will be awarded against them; that, the defend

ants having promptly discontinued the use of the copyrighted illustration, they will be enjoined only from its future use, if such injunction is desired, but without costs to the complainant.

[225 Federal Reporter, pp. 135-137.]

Collier v. Jones, Jan. 19, 1910.

COLLIER v. JONES ET AL.

(Supreme Court, Special Term, New York County. January 19, 1910.)

TRADE-MARKS AND TRADE NAMES-UNFAIR TRADE-INJUNCTION.

66

Where plaintiffs had printed and published and advertised very extensively a set of books selected by Dr. Eliot, former president of Harvard University, under the title of "The Harvard Classics," and designated in advertisements and in labels on the books as Dr. Eliot's Five-Foot Shelf of Books," and had sold many thousand volumes, they were entitled to a temporary injunction restraining defendants from advertising and selling a different set of books under the titles of "Dr. Eliot's Five-Foot Shelf of the World's Best Books" and "Dr. Eliot's Five-Foot Shelf of the World's Greatest Books."

Suit for an injunction by Robert J. Collier against
E. Milton Jones and others. Injunction granted.

Shepherd, Smith & Harkness, for plaintiff.
Henry D. Williams, for defendants.

NEWBURGER, J. The facts in this case are somewhat similar to those in the Eliot case (120 N. Y. Supp. 989). The complaint alleges, as additional facts to those contained in the Eliot case, that the plaintiff entered into the contract with Dr. Eliot, and that in pursuance thereof plaintiff commenced to print and publish the writings so selected by Dr. Eliot in a uniform edition, with three separate styles of binding under the title of "The Harvard Classics," and since October 13, 1909, has been selling the books so published by it with the trademark "Dr. Eliot's Five-Foot Shelf of Books," printed on the outside of all the books; that prior to the 1st day of December, 1909, the plaintiff had published and sold about 30,000 volumes of the said set of books, inclosed in such wrappers; that plaintiff has invested and expended large sums of money in the preparation, printing, advertising, publication, and distribution of said books; that during the month of June, 1909, plaintiff