86; Arna', Appeal, 65 Pa. St. 72. But clearly he ha.s no equity as lien, 'and was against Mrs. Chalfant. ld. Her mortgage was the disoharged from the lots sold in bankruptcy. Unquestionably her lien was transferred to the proceeds of sale, and her right to receive the same camiot be gainsaid by a junior mortgagee upon the ground here ' relied on. The court is not dealing with two funds, both subject to the lien of one oreditor, while the other creditor has a lien against one fund only. There is but one fund fOl: distribution, and to it Mrs. Chalfant has a perfect legal right. Moreover, the nndees of the bankrupt are not before the court, a.nd the equities between Shaw and themoannot be settled in this proceeding. Upon general principles, therefore, the register was right in appropriating the fund to Mrs. Chalfant; but his distribution was eminently proper, in view oftha provisions olthe act of' asseinblyof April 22, 1856, (par. 827.) Under that act Shaw was bound to tender Mrs. Chalfant the amount duaher before he could compel her to first levy upon the lots alienated after the recording of his mortgage. Arna', Appeal, supra; Phelpsj, Appeal, 10 W. N. C. 525. This cause came on for hal hearing June 12, 1882, and was argued by counsel; and'i now, 1882, upon tions to the register's repod are overruled and his distribution is COB.'\rmed absolutely. ' ,
P. Oregon. ,JU1I" 10,'1882;)
A demurrer wUl, lie tc? anallegatio,ll in the answer to whIch jeet the defendant to anything in the nature of a penalty or forfeiture; as lUi allegation concerning the number of copies IOld and on hand 01 lit pirated
I. 8A:ME-fnoBINGElIENY-I'BN.u.TUis, AND FOllll'EITt1JlBS. , · The penalties and forfeitlQrtlllgiv,en by section 4965 of the Re.... 8t. (16 8t. 214) for an infringement of a copyright, cannot be enforced in. suit in equity; aMaprayer in a bill that 'the plate'i&nd uJisoldcopies' 01 a pirated map' be delivered up to ,an officer of the court fOl\cancellatio.n and destruction is demurfor the Inch · , , . rabIe, as
. .Qamages well as profits DlIItY noW. be in equity for ulnfrlnpa patent, but not «copyright. . ; . . ....
Suit inEquity for Infringement of Copyright. H. Y. 1'hompson, for plaintiff. Frederick v.. Holman, for defendant. DEADY, D. J. This suit is brought to obtain an i:njunetion restrain. ing the defendants from infringing the copyright ofa "Map of the cities of Portland and East Portland and the town of Albina, Oregon," compiled and published by plaintiff, and for an account of sales. The bill states in detail the steps taken by the plaintiff in 1874-5 to obtain the copyright of the map, and his ownership thereof ever since; the infringement of the same by the defendants on May 10, 1881, by the publiqation of 500 copies 9f a map entitled "Map of the cities of Portland and East Portland and the town' of Albina, Oregon;" and alleges that the same is substantially a copy of the plaintiff's, and an infringement of his copyright; that the defendants have sold 300 copies of said map at five dollars a copy, to the damage of the plaintiff $3,000, and is still the owner of the plate upon which the were printed and the 200 C9piesremaining unsold, which they continue to offer for sale. The prayer ,of the pill is that the defend. ants may "answer all and :ll.nd"things" set forth therein, and that they be requi,red, to s;urrender the copies on hand andthEl plate to an officer of this coud "to be ca,nceUed and d,e. strayed. " , ', The defendants demur to so much and such parts of the bill ll.S seek to have a discovery as to the number of copies of their map sold or on hand, because thedsame will subject them to penalties and forfeitures as provided in section 4965 of the Revised Statutes. It is well established that a defendant may "demur to a discovery which may subject him to anything in the nature of a penalty or forfeiture," (Story, Eq. Pl.,§ 583;) by the section of the Revised Statutes aforesaid the defendants are made liable to forfeit to the plaintiff the plate upon which their map was printed and every sheet thereM, and also to pay a penaIty"of ,one, doUarfor every sheet found in their possession. Apparently, then, the demurrer is well taken; but counsel for the plaintiff contends that this is not a bill of discovery, and that nothfropl, the defendants in that respect. ing is sought to be But it is sllrid,on good ;Authority, that every bill for relie,f.is in reality a bill for discovery, since it asks from the defendant an an· swer as to all thetX):a.tters cha.rged'therein. Story, Eq. PI. §'311. And by the authority an answer must confess, avoid, deny, ortraverse all the material parts of the bill. Id l § The prayer
CHAPMAN V. FERRY.
for the surrender of the plate and printed copies on hand is also demurrable. . The forfeiture.s and penalties given by section 4965 of the Revised Statutes (17 St. 214) are not enforceable in a court of eguity, in the absence of an express statute to that effect. To recover the forfeiture and penalties given by this section for the infringement of his cQPYright, the plaintiff must to an action at law. Stevens v; Cady, 2 Stevens v. GladdiT19, 17 How. 4:53. Admitting this, however, cOUDsel for the plltintiff insists that the surrender of these articles as prayed for is not an enforcement of· the forfeiture of them to the plaintiff, but only a of enforcing the decree for a permanent injunction. No authority is cited for this distinction. To require the defendants to surrender their plate and copies of map for destruction will effectually enforce the forfeiture as against them and in favor of the plaintiff, so far and in the mode he desired. In fact, of the articles to the officer. of this court for the npon the purpose desired, the forfeiture is there and thereby enforced against the defendants; their right in and to the 'property 'iE! divested, and it disposed of with the of the plaintiff. On the argument, counsel for the defendants -also assigned, ore tenus, as a cause of demurrer to so much of the bill as alleged the amount of damages sustained by the plaintiff on account of the infringement, that damages are not recoverable iIi a court of equity, and the _ relief is limited to an accou¥t, and recovery of the profits made by the defendants on the sale of the 'infringing mnp. This was the, rule in patent cases until the passage of the act of July 8, 1870, when by section 55 of that act (16 St. 200; section 4921 Rev. St.) it was provided that in a suit of eqt1ity, when a decree is given for an infringenient, the, plaintiff shall be entitled to recover not only profits made by the defendant, but the damages he has sustained thereby. Curt. Pat. § 341; Williams v. Leonard, 9 Blatchf. 476; Andrews v. Creegan, 7 FED. REP. 478. But the provisions of the act of July 8, 1870, concerning patents, do not appear to be applicable to copyrights, which are provided for :separaiely in the sections from 85 to 110, inclusive. By section 106 jurisdiction is given to the courts of the United States of suits and actions arising under "the copyright laws of the United States," and power is given them to grant injunctions according to the course and principles elf courts of equity, an incident of whieh is a right to an accouhtof profits. SteGladll,ing, 17 How. 456. But no provision is madl:l,as in secconcerning cases arising unde,!; "thep/Ltent laws qf the tion 55,
United States," for the recovery of damages as well as profits in a suit in equity. The reason for this distinction between subjects so nearly identical in their nature and origin is not apparent, but the statute has made it and the courts must observe it. The demurrer is sustained.
NOTE. A. defendant cannot be compelled to make discoveries in answer to a bill which seeks to enforce penalties and forfeitures against him by means of such discoveries. Atwill v. Ferrett, 2 Blatchf. 39. The defendant cannot be compelled, under a subpoona duaes tecum, to produce his books and papers. and plates tope used in evidence for plaintiff. .J,oh'48on v. Donaldson, 18 Blatchf. 287: S. C. 3 FEIl. REP. 22. A motion to compel such testimony will not be granted in aid of an action for trespass for the violation of a copyright. AtwiU v. Ferrett, 2 Blatchf.39. The relief will only be to the extent of the part infringed. Story v. Holcombe, 4 McLean, 006. Thevarioris provisions of the law should be liberally construed to give effect to what may be considered the inherent right of the author to his worlc Myers v. Oallaghan; 5 FED. REP. 726. But equity will not;. at of the author, where be has made an assignment forever, restrain the assignee from selling after a renewal taken out by the author.. Paige v. Banks, 7 Blatchf. 152. Tbe right to a chart is violated only when another copies from the chart of him who has secured the copyright. Blunt v. Patten, 2 Paine, 397. Compare (Jray v. Russell, 1 Story, 11: Emerson v. Dames, 3 Story, 768. The pUblication of a map made from materials collected.while in the service of the government as draughtsman belongs to the government. Commonwealth v. Desilvan, 3 Phila.31. See Heine v. Appleton, 4 Blatchf. 125. Compiling maps ofa city of a particular design from public records into an atlas, and without taking out a copyright making several copies and selling them, and placing one copy in the handS of the city for public use, is a dedication to public use, (Rees v. Peltzer, 75 475:) but depositing one chart in the navy department does not make it public property. Blunt v. Patten, 2 Paine, 307. A single sheet containing diagrams is a subject of copyright; the form of the publication is immaterial, (Drury v. Ewing, 1 Bond, 540:) but an advertising card is not, See Eh1'et V. Pierce, 10 FEIl. REP. 553.-[ED.
(Oircuit Court, E. D. Michigan,
Mere words may become valid trade-marks, when they are merely arbitrary, or are indicative of origin or ownership in the original proprietor.
2. BAME-WHEN PROTECTED.
Words which have acquired a significance in the marks as expressive only of the name or quality of an article cannot be appropriated as a trade-mark. But