et al. ,,'.
Oourt. W. D.
November 20, 1891.)
PATENTS lI'OB INvlnfTIONs;...INFRINGEMENT;;";'RES JUDIOATA-EFFEOT dF INTlIlRLOCUTORT DEOREB.
In a snit for infringement of letters patent there was a decree for plaintiffs, awarding an injunction, and for an account, and a reference to a master. The defendants quit u8.ing the .device so..heldto ,infringe, substituting a dUferent device, which ;was openly use,d by other and as to which there had been no adjudication. Then, pendtn'g' 'the reference before the master, the .plaintiffs bl'ought a :. new 8uit in the same against1ihe /!lame defendants. The, answer therein not only denied infringemel1t, but alleged. that one G., and not the patentee, was the original and fir8t inventor of the patented device, "'hicn defense was not 8et up in 1ihe·frst 8uit. BeW, that the de'cree was interlocutlJr.y, and did not, in the second 811it, preclude inquiry into the validity of the patent. .' "
; ... , . I ,
In Equity. Suit for infringement of patent. Heard upon exceptionsto' answer. Excoptiens overruled. ., W. Bakewell Sons, for exceptions. D. F. Patterson and James O. Boyce, for
J. This bill, which is for the infringement of letters patent for an invention, the usual recitals and averments, recites a previoue s,uit in equity by the plaintiffs against the defendants, in this court, for. the infringement of the same patent, in which, there was a decree, in the' qrdinary form, in favor of the Vlaintiffs, aWlJ,rding an injunction, and foran,1\9pount, and a rlilference to a master to take the account. 43 answer to the present bill,the defendants state Fed. Rep.A37 · upon the decision of the court, they abandoned the.useof the device held to, il,lfringe patent, and that they are now using a different device,whicQ they par,HClillj.!ly ,describe, and whicn they deny is an inalleges· that the Plltented improvement fringement. The was nQtthe invention qf,tht1patentee, but, in, fapt,.was invented by George,H."GiJrlbs, whq put the ilevice in public use by sales more than two years the dale. ofthe application for the on. , The plaintiffs Gontend that are the proceedings in, the formeullit from questioning the validity of the letters patent, and they narrow the. to the single questiqn. whether the device the defendants;infringes the patent. now h:ere to be noted: , First,the other case is still pending .p1aster \lnder order of reference; secqnd, the defense that before orill;inaland first inventorof the patented device waslil,qt set llP Or considered in the fornwr suit. It is to be added to us that the particular device involved in tha,t it tbl;lpreSetlt emit ,isopeJ;llYi used by other manufac:turers besides the de, fendantEi;,a,nd has b.,eenn() adjudication affecting the right of the publi(} torrnse;the saJ;ne, por has the question raised until now. here shut up to the single issue of infringeAre the qefen:da,nts, ment? It cannot be, maintained that the present iaa continuation of the earliersuit. It 'is an independent l:iuit in form 'and substance. Nor
, :HARMON V. STRUTHERS.
is it material that both suits are in the same court. Being distinct proceedings, no greater effect is here to be given to the former decree than if it had been made in another court. Neither is it a matter of any moment that, heretofore, for satisfactory reasons, we refused the defendants a rehearing in the first case, for the refusal did not make the decree any more conclusive than it was before. According to the language of all the authorities, to conclude the parties the former judgment or decree must have been final. Now we find, in the opinion of the supreme COllrt in Beebe v. Russell, 19 How. 283, 285, a final decree thus explained: "When a decree finally decides aDd disposes of the whole. merits of the cause, and reserves no further questions or directions for the fnture judgment of the court, so that it will not be necessary to bring the cause again before the court for its final decision, it is a final decree." Adopting this definition, JUdge NIXON held, in Chemical Work8 v. Hecker, 2 Ban. & A. 351, that a decree in another circuit in a suit in equity between the same parties upon the same patent, declaring three claims void for want of novelty, but sustaining one claim,and adjudging the defendant to have infringed it, and ordering an account of the profits realized, was interlocutory merely, and did not so conclude the parties as to prevent an inquiry into the validity of the claims of the patent. It has been expressly ruled by the supreme court tbat a decree in a patent cause, such as the plaintiffs here rely on, is nota final decree from which an appeal will lie. Barnard v. Gibson, 7 How. 650; H'I.(,mis(,on v. Stainthorp, 2 Wall. 106. Again: Certainly the court might open sU::b a decree, at a subsequent term, for a rehearing, upon additional proofs; but a final decree cannot be so opened at a subse. quent term,and set aside or modified. McMicken v. Perin, 18 How. 507; BTI;mson v. Schulten, 104 U. S. 410. Once more: In Foumiquetv. Per.:. kin.s, 16 How. 82, the circuit court had made a decree that the plainl tiffs .were entitled to certain property, and referred the matter to a ter, to take and report an account, but at a subsequent term after the coming in of the master'.s report, upon exceptions thereto, reversed its previous decree, and dismissed the bill. The suprerbe court held that the former de<;:ree upon the merits was interlocutory, "and open to ion, and .under the control of the court at the final hearing, upon the exceptions to the master's report. Applying the principle of the decis" ions cited to ,this case., we have no difficulty in holding that our decree in the other suit is interlocutory, and does not bere operate as an pel precluding inquiry into the validity of the patent. Our conclusion is by no meanS inconsistent with the ruling in ThOmson v. Wooster, 114 U. S. 104, 5 Sup. Ct. Rep. 788, for that case merely decides that" while a decree pro confesso establishing the validity of a patent stands' unrevoked, the defendant cannot question the validity of the patent be.: fore the ,master appointed to ,state an account, nor on appeal set up thing to impeach the decree except what appears on the face ohhe bill.. The exceptiQl1S to the answ'Cr are overruled. ,,;': "
LITHOGlUPH, & ENGRAVING CO. j ' Limited.
:(Q£rcutt Court. 8. D.,N&W .York. November SO, 1891.)
In, an action for the infrbigeJ;l1ent ,ot a copyright fo'!' a photograph, in order to reproduced was without the aU8tain the defen8e that ,the coil" "'hich statutory notlqe of copyright, it i8' nbtsUfficient that it was without the statutory notice when it came into defendllDt'e.Vossession, but it must be shown that it lacked . Buch notloewhen it left plaintilf'8 po&seltsion.
01" CoPYRIGHT-:-PHOTOGRAPllsi '
A delay of the publiQati9n of. a photograph f9r tW9 month8 Bnd eighteen daY8 after the title wa& tiied with the librarian of congre&8, 88 required by the copyright law; '18 Inot unrea80nable. :. '
... BAIII.....FoBWHAT ALLOWED-PHOTOGRA.PHS.
The facts that a photographer arranged the light, baokground, and other detail8 for a photograph, and posed the 8ubject BO as as to produce an artistic and pleasing 8ufficient·to austain a copyright for such photograph. picture,
In On final hearing. J. Falk against the Gast Lithograph Bill for .injunction &; Engraving Company, Limited. For opinion' on motion for preliminary injunction, see 40]j'ed. Rep. 168; Isaac N. ,Falkand Rowland Cox, for complainant. William ./J. EUi80n and a. Gill, for defendant.,
COXE, J. This is an equity action to enjoin the infringement of a copyright .for a photograph of iJulia Marlowe. The photograph was taken by the complainant andoopyrighted by him as proprietor. It is admitted that· the photograph was copied by the defendant. The following are the principal defenses: ,Pirst. The complainant failed to inscribe upon each copy of the photograph in question the notice required by law, the.photograph.copied by the defendant being without such notice. Seccmd. The proof is insufficient of the mailing or delivery at the office of the librarian of congress of two copies of the photograph as required by sections 4956, and 4959 of the Revised Statutes. Third. The complainant lost his right to .acopyright by unreasonably delaying the publication of the photograph. Fourth. 'fhe photograph in question is not the proper subjeot ofacopyright, and the complainant has failed to show any, title thereto as proprietor. The testimony relating to the first defense should, be scrutinized with unusual care, for the reason that thevalue of copyl'ights will be greatly It will be observed that the impaired if such defenses are photograph from which the defendant copied the infringing device, the solar print which was subsequently colored by its artist and the negative of the solar print have all been lost or destroyed. The assertion that the photograph in. question was without the statutory notice came from two witnesses who testified from memory: only, after the lapse of a year, during which time they had examined hundreds of similar photographEl. 'Moreover, their testimony does not: agree,. and the principal witness for the defendant has given two conflicting versions of the manner in which