fore, the United States was necessarily a party. In the present case it is not sought to disturb the United States in the possession and use of the guns already manufactured. The court is not asked to deal with property of the United States. The plaintiff simply asks that an officer of the United States be restrained from invading rights granted by the Government itself. The acts complained of are not only not sanctioned by any law, but are inconsistent with the patent laws of the United States.

That "no man is so high that he is above the law " and beyond the coercive process of the courts has long since been definitely determined. (Osborn v. U. S. Bank, 9 Wheat., 738; U. S. v. Lee, 106 U. S., 196; Pennoyer v. McConnaughy, 140 U. S., 1; Tindal v. Wesley, 167 U. S., 204; Amer. School of Magnetic Healing v. McAnnulty, 187 U. S., 94.)

We cannot see that this case differs in principle from the case last cited, which was a suit against the United States postmaster in charge of the United States post-office at Nevada, Mo., to restrain him from carrying out the provisions of a so-called "fraud order" issued by the Postmaster-General. It was held that inasmuch as the Postmaster-General in issuing the order exceeded his authority the plaintiff was entitled to relief. The Court said:

The acts of all its (the Government's) officers must be justified by some law, and in case an official violates the law to the injury of one individual the courts generally have jurisdiction to grant relief.

If an officer, who in good faith is attempting to execute the command of his superiors, a command issued in supposed obedience to express statute, is subject to the injunctive process of the courts, much more ought an officer to be restrained whose only excuse for violating private rights is that he is acting for the benefit of the Government. Assuming for the purpose of this opinion the truth of the allegation of infringement, it is apparent that unless the relief sought is granted, plaintiff's patents will be valueless in the United States since they are of use to the Government alone.

It follows that the decree must be reversed with costs, and the cause remanded for further proceedings not inconsistent with this opinion.

[Court of Appeals of the District of Columbia.]

HORTON V. ZIMMER.

Decided December 1, 1908.

137 O. G., 2223.

1. INTERFERENCE-EVIDENCE-CIRCUMSTANCES AND PRESUMPTIONS.

Where the testimony as to the testing of a device was given by witnesses skilled in the art and is clear and convincing, the fact that no record was kept of such tests does not discredit this testimony.

2. SAME-ADMISSIONS AT HEARINGS.

An admission made at a hearing before a tribunal that was to pass upon the question involved in the case binds the party making it.

Mr. Melville Church and Mr. E. B. H. Tower, Jr., for the appellant.

Mr. A. G. Davis for the appellee.

ROBB, J.:

This is an appeal from three concurrent decisions of the Patent Office tribunals, and the issues are stated in the following counts:

1. In combination, a supply-circuit, a motor-armature connected to said supply-circuit, a motor-field connected to said supply-circuit, a resistance connected in said field-circuit, a second resistance connected in said armaturecircuit, a movable member for controlling said field-circuit and a second movable member for controlling said armature-circuit, said second member movable in one direction to remove the resistance controlled thereby from the armaturecircuit, and said first member movable in an opposite direction to insert the resistance controlled thereby in the field-circuit.

2. In combination, a supply-circuit, a motor-armature connected in said supply-circuit, a resistance connected in said field-circuit, a second resistance connected in said armature-circuit, a movable member for controlling said field resistance and a second movable member for controlling armature resistance, said second member movable in one direction to remove said armature resistance from circuit and said first member movable in an opposite direction to insert said field resistance in circuit, means tending to keep said second member in its initial position, and a magnet for retaining said second member in a predetermined position.

3. In combination, a supply-circuit, a motor-armature connected in said supply-circuit, a motor-field connected in said supply-circuit, a resistance connected in said field-circuit, a second resistance connected in said armaturecircuit, a movable member for controlling said field resistance, a second movable member for controlling said armature resistance, said second member movable in one direction to remove said armature resistance from circuit, and said first member movable in an opposite direction to insert said field resistance in circuit, a spring tending to keep said second member in its initial position, and a magnet for retaining said second member in a predetermined position.

4. In combination, a movable member, a resistance controlled thereby, a second movable member, a resistance controlled thereby, a magnet to retain said second movable member in a predetermined position, means for causing said members to move together until said second member is grasped by said magnet and thereafter permitting said first member to move independently of said second member.

5. In combination, a movable element, a resistance controlled thereby, a second movable element, a resistance controlled thereby, means tending to keep said second movable member in its initial position, a magnet for retaining said second member in a predetermined position, and means whereby said first member will move said second member to a position to be grasped by said magnet and thereafter operate independently of said second member.

Horton's application was filed November 2, 1904, and a patent was issued to him on June 20. 1905. On August 22, 1904, Emerson and

Dorgeloh, who were connected with the General Electric Company, the assignee of Zimmer, filed an application for this invention, which was subsequently put into interference with the Horton patent. The attorney for the General Electric Company subsequently determined that Zimmer and not Emerson and Dorgeloh was entitled to make the application, and on November 16, 1905, filed an application for Zimmer, and he was made the third party to the interference. Thereupon Emerson and Dorgeloh conceded priority of invention to Zimmer, and the case proceeded with Horton and Zimmer as the contending parties.

A patent having issued to Horton before Zimmer's application was filed, the burden of proof is heavily upon Zimmer. All the tribunals of the Patent Office, however, have reached the conclusion that he has overcome that burden and established his claim to priority. We have examined the record with great care, and are impelled to the same conclusion the Patent Office tribunals have successively reached. No good purpose would be subserved by a detailed discussion of the evidence in the case, and we, therefore, content ourselves with a general outline of the facts as they have impressed us.

66

It is established that early in the year 1903 Zimmer, who was employed by the General Electric Company as a skilled mechanic and who was not only very familiar with rheostats for electric motors but had then devised other improvements thereon, exhibited sketches substantially embodying the issue to other employees. It is established beyond question that thereafter, probably early in 1904, Zimmer personally constructed a full-sized rheostat which is in evidence as Exhibit C" in the case. Several witnesses testified to having seen this device while it was being tested and that its operation was a success. Some of these witnesses are highly skilled in the art and their testimony is clear and convincing. The point is made by Horton that it is not likely that the test of this device was satisfactory because no record appears to have been kept of such test. If the evidence of the test was conflicting and unsatisfactory, this point would be entitled to great consideration. The evidence shows that there was some little friction between Zimmer and other employees and it is not unlikely that the value of his discovery was minimized at that time.

About the time Zimmer constructed Exhibit C, Emerson, who was connected with the power and mining department, wrote the designing engineer of the rheostat department that a demand existed for a compound starter and regulator with a device similar to a sketch inclosed with his letter and to be used with one-fourth horse-power 230-volt motors on sensitive drills. This design was passed on to Dorgeloh, who was an electrical engineer in the rheostat department, with instructions to design a rheostat embodying the idea shown in

the sketch. Dorgeloh thereupon designed a rheostat fully embodying the Zimmer Exhibit C. The drawings were passed on to Zimmer who built Exhibits D, E and F, all of which embody the invention in issue. It is from these facts that Emerson and Dorgeloh based their original claim to the invention. It is contended on behalf of Zimmer that the Emerson sketches did not fully disclose this invention, but we do not deem the point of great importance since it is very satisfactorily established that Zimmer's Exhibit C had been constructed and successfully operated before he saw Dorgeloh's drawings. Dorgeloh, who satisfactorily explains why he originally claimed to have had a part in the invention, says he had seen Zimmer's Exhibit C in operation and discussed its features with Zimmer prior to receiving the Emerson sketch. Four other witnesses testified to having seen this exhibit tested early in 1904. Moreover, in the opinion of the Examiner of Interferences, it is stated:

It was admitted by Horton at the hearing that the making and testing of this starter in the first week of January, 1904, constituted a reduction to practice of the issue.

This admission having been made at a hearing before a tribunal that was to pass upon the question involved in this case bound the party making it. But, aside from this admission, we think the record clearly shows that Exhibit C did constitute a reduction to practice. Zimmer testifies that when he constructed Exhibits D, E and F he supposed Dorgeloh had embodied his (Zimmer's) invention in the designs.

After Zimmer's Exhibit C was tested Zimmer accompanied by the superintendent of his department took it to the patent department and left it near the desk of the patent solicitor who was not in his office at the time. Nothing appears to have been done with this exhibit until after the declaration of interference between Emerson and Dorgeloh and Horton. Zimmer protested that he was the inventor when he learned of the Emerson and Dorgeloh application. In preparing for that contest the counsel for the General Electric Company discovered the facts and concluded that a mistake had been made, and thereupon filed Zimmer's application. It appears that Zimmer at all times claimed to have been the originator of the invention. As his date of reduction to practice is earlier than the earliest date claimed by Horton, he is entitled to priority unless it affirmatively appears that he abandoned the invention or secreted it and brought it to light after Horton had given it to the public. Neither of these conditions is shown to have existed. Exhibit C was for a period of several weeks tested in a room to which the public had access. Exhibits D, E and F which, it must be held, embody Zimmer's inven

tion, were also operated in such a manner as to relieve Zimmer and his assignee of the charge of suppressing the invention.

The decision of the Commissioner of Patents is affirmed, and the clerk of this court will certify this opinion and the proceedings in this court to the Commissioner of Patents, as required by law.

[Supreme Court of the United States.]

UNITED DICTIONARY COMPANY v. G. & C. MERRIAM COMPANY.

Decided February 3, 1908.

133 O. G., 515.

COPYRIGHT-PUBLICATION ABROAD WITHOUT NOTICE OF COPYRIGHT-EFFECT ON RIGHTS IN THIS COUNTRY.

The requirement of the act of June 18, 1874, chapter 301, section 1, 18 Stat., 78, (Rev. Stat., sec. 4962,) that "no person shall maintain an action for the infringement of his copyright" unless the required notice shall be inserted "in the several copies of every edition published" does not extend to publications abroad, and the owner of a work copyrighted in this country may restrain the publication thereof by another who has imported for purposes of reproduction copies published by such owner abroad without such notice.

Mr. James H. Peirce, Mr. Geo. P. Fisher, Jr., and Mr. Wm. Henry Dennis for the appellant.

Mr. Wm. B. Hale, Mr. Chas. N. Judson, and Mr. Frank F. Reed for the appellee.

Mr. Justice HOLMES delivered the opinion of the Court.

This is a suit brought by the appellee to restrain the infringement of copyright in a book entitled "Webster's High School Dictionary.' The appellee, a Massachusetts corporation, took out copyrights at the same time in England and here. It published and sold the book in this country with the statutory notice of copyright, and made a contract with English publishers, under which it furnished them with electrotype plates of the work, and they published it in England, omitting notice of the American copyright. The English work has a different title, "Webster's Brief International Dictionary," and has some other differences on the first three and last thirty-four pages, but otherwise is the same. The appellant, an Illinois corporation, sent for the English book with intent to reprint it, and was about to publish it when restrained. The English publishers agreed not to import any copies of their work into this country, and also to use all reasonable means to prevent an importation by others, so that the