CAInE V. EVANS.
affirmed, L. R. 3 Q. B. 223; Boosey v. Fairlie, 7 Ch. Div. 301; affirmed,4 App. Cas. 711; Thomas v. Lennon, 14 Fed. Rep. 849; Drone, Copyr. 176. Tracy's work was done with the consent of the original composers of the opera, and in their interest. There is nothing in our copyright law to prevent one of our own citizens from taking out a copyright of an original work composed by him, even though the work of composition was performed at the procurement and in the employment of an alien; or from assigning his copyright to an alien under an agreement made either before or after the composing of the work. A nonresident foreigner is not within our copyright law, but he may take and hold by assignment a copyright granted to one of our own citizens. The proprietor as well as the author is entitled to enter the work for copyright. The consent of Tracy was sufficient to constitute Browne the proprietor for the purpose, without a formal assignment. Lawrence v. Dana, 4 Cliff. 1, 65. The effect of the transaction was the same as if Tracy had made the entry in his own nama, and then assigned to Carte. The defendants insist that the method of proceeding by which the copyrigh t was procured, and afterwards vested in the plaintiff, a nonresident foreigner, was a mere evasion of our copyright act, and as such is not entitled to the protection of the court. But I am unable to perceive how it can properly be called an evasion, if by that is meant a proceeding by which the letter or spirit of the law is directly or indirectly violated. The thing coIfyrighted was an original work, by an American composer, and therefore the lawful subject of copyright. All the steps taken to secure the copyright, and vest it in the plaintiff, were authorized by our statute. Undoubtedly the plan adopted displayed great ingenuity, and the effect is to vest in these foreign authors valuable American rights in their work; but there is nothing of evasion or violation of law. The plaintiff is therefore entitled to the protection of the court against infringers, if his copyright is otherwise valid. Another question in the case relates to the title of the published book. The act provides that no person shall be entitled to a copyright of a book unless he shall, before publication, deliver at the of· fice of the librarian of congress, or deposit in the mail addressed to him, a printed copy of its title, nor unless he shall also, within 10 . days from the publication, deliver at the office of the librarian, or deposit in the mail, addressed to him, two complete printed copies of the book, of the best edition issued; and the librarian is required to keep a record of the names of all books entered. Rev. St. §§ 4956, 4957, 4959. The act does not say, in so many words, that the pub. lished. book shall bear on its title-page the same title as that registered. But as the object of the registration is to give notice to the world that the author or proprietor has acquired the exclusive right of publication, the inference is that by "two complete printed copies"
is meant two printed copies with a title corresponding with the regist"red title, and that for the purpose of identification the registered title shall be substantially reproduced on the title-page of the published book. On the eleventh March, 1885, Browne, as proprietor, filed with the librarian of congress a title in these words: "Piano.forte Arrangement of the Comic Opera, The Mikado, or The Town of Titipu, by W. S. Gilbert and Sir Arthur Sullivan. By George L. Tracy." On the twentieth April, 1885, the publishers delivered at the office of the librarian two copies of the printed book, which contained the pianoforte arrangement of Tracy, and on another staff the vocal score of the original opera to which the arrangement was an accompaniment, and also contained the songs of the opera, and had this title: "Vocal Score of The Mikado, or The Town of Titipu. Arrangement for Piano-forte, by George Lowell Tracy, (of Boston, U. S. A.,) of the ahove-named opera by W. S. Gilbert and Arthur Sullivan." They also, on the same date, made deposit in the librarian's office of a title corresponding with that on the title-page. Subsequently another edition was issued, containing the piano-forte arrangement and vocal score on the same staff, but without the songs, and bearing the same title as the first edition, except that the words "Piano-forte Score" were substituted for the words "Vocal Score." Two copies and a corresponding title were deposited on the tenth June, 1885. The plaintiff does not rely on the titles entered April 20th and June 10th, which, it appears, 'were filed by the publishers without authority; but he rests his claim on the title entered March 11th, and the deposit of the books made April 20th. The defendants deny that the title of the book is the same as that named in the copyright of March 11th. But it seems clear that there is no such substantial difference between them as would justify the court in declaring the plaintiff's copyright forfeited on that account. The published title indicates with perfect certainty that the musical work contained in it is an arrangement for the piano-forte, composed by Tracy, of Gilbert & Sullivan's opera entitled "The Mikado, or The Town of Titipu," which is what was copyrighted. The only value of the arrangement was in its connection with the vocal score, and they must necessarily be published together, and some slight addition to the title of the book would be allowable on that account. The published title is sufficient to identify it with substantial certainty with the registered copyright, and no one could possibly be misled by the variations between the two. The defendants, who are music dealers in Boston, were selling, when this bill was filed, a book of their own publication, entitled "Vocal Gems from the Mikado, or The Town of Titipu," which can· tains the songs and vocal score of the opera, and a piano-forte accompaniment composed by George E. Jackson, of Boston. On this part of the case it is only necessary to remark that it was clearly
WILLIMANTIC THREAD CO. V. CLARK
proved at the hearing, by the testimony of musical experts of the highest authority, that Jackson's accompaniment is nothing but an ill-disguised imitation of the Tracy arrangement. The conclusion is that the plaintiff has a valid copyright under our law, and is entitled to an injunction to restrain the defendants from infringing .it. So ordered.
WILLIMANTIO THREAD Co. and others v. CLARK THREAD Co.J
(Oircuit Oourt, D.
Jl!J7'sey. June 1, 1886,)
§ 4921. Prior to the act of July 8, 1870, patentees were not authorized to recover in a single suit both profits and damages, but had their election to treat the infringer as a trustee, and by bill in equity recover the profits made by him, or to sue at law for the damages sustained, without reference to the question whether the infringer had gained or lost by his infringemeut. Section 4921, Rev. St., authorizes courts of equity, in suits for infringement, to award. in addition to the profits to be accounted for by the defendant, the damages the complainant has
SAME-DAMAGES-PROFITS, WHEN MEASURE OF.
"Gains and profits are still the proper measure of damages in equity suits. except in cases where the injury sustained by the infringement is plainly greater than the aggregate of what was made by the respondent, in which event the provision is that the complainant shan be entitled to recover, in addition to the profits to be accounted for by the respondent, the damages he has sustained thereby." Birdsall v. Ooolidge, 93 U. B. 69. Where an established license fee for the use of a patent containing six claims was shown, and the defendant had infringed only two of the six claims, held, that it was the duty of the master to ascertain the relative value of the different claims, as nearly as the nature and circumstances of the case allowed, and to charge the defendant, for the use of the claims infringed, such proportion of the whole license fee as the testimony revealed they were relatively worth in their contribution to the efficiency of the machine.
SAME-BURDEN OF PROOF.
Where complainant seeks to recover damages on the basis of an established royalty for the use of several claims, only a part of which have been infrmged, the burden of proof is upon him to show the relative value of the claims which have been infringed.
II. Sum-RELATIVE VALUE OF CLAIMS. Where the claims not infringed are merely structural, and compr'ehended within those infringed, no apportionment of the license fee is proper.
On Exceptions to Master's Report. Livingston Gifford and Edmund Wetmore, for exceptions. Wm. C. Witter and B. F. Thurston, for complainants. NIXON, J. . An interlocutory decree was entered in this case on May 30, 1879, sustaining the validity of the letters patent No. 26,415, granted to Hezekiah Conant; holding that the defendant, the Clark Thread Company, had infringed the first and third claims, and ra1 Edited
by Charles C. Lint.hicum, Esq., of the Chicago bar.