ee ee mI Gornell Law School Library pss. University Library KD 1365.3.F53 glish cases r ‘ui | A DIGEST OF THE REPORTED ENGLISH CASES RELATING TO PaTENTs, TRADE Marks CoPryRIGHTS Determined in the House of Lords and the Courts of Common Law and Equity, with reference to the Statutes ; Sounded:on the Analytical Digest by Har- rison, and adapted to the present Practice of the Law By R. A. "RI ER Of the Middle emple EDITED AND BROUGHT DOWN TO THE PRESENT TIME, WITH INDEX, TABLE OF CASES, ETC. wt La 4 ossedaN By HENRY HOOPER figs i ah Mey f a iecl Sy CINCINNATI oe : er Ss 2 , ROBERT CLARKE & CO < Couns” NEW YORK: BAKER, VOORHIS & CO 1872 J3 42000 Entered according to Act of Congress, In the year one thousand eight hundred and seventy-two, By ROBERT CLARKE & CO, In the office of the Librarian of Congress,-at Washington. PREFACE TO THE AMERICAN EDITION. 4 Tus work contains a digest of the existing law, equity, and practice relating to Patents, Trade Marks, and Copyrights, as determined in the English Courts of Common Law and Equity, including the House of Lords. To the Analytical Digest of Har- rison and the later Digest of R. A. Fisher have been added all the contemporaneous reports of English cases upon the above branches of the law, down to the present year. The English statutes upon these subjects, when short and comprehensive in their terms, have been introduced in the lan- guage of the legislature. Overruled cases have been omitted, as well as obsolete law. In short, it is believed that all rulings and decisions, from the earliest period until the present time, upon Patents, Trade Marks, and Copyrights, are here collated and presented for the use of the profession. Cincinnati, May 3, 1872. (iii) Ons AM PW DY - yb n pow 9D DATANAPW DNA CONTENTS. PATENTS. I. FOR WHAT GRANTED. . Statutes, 1. . Subject-matter generally, 2. . New Inventions, Mariufactures, and Discoveries, 4. . Importations from abroad, 6. Combinations of old and new Matters or Processes, 6. . Chemical Combinations and Processes, 10. . Prior Publication and User, 14. . Particular Instances of Inventions, new and old, 17. Il. LETTERS PATENT. . Grant, 23. Amendment, 27. . Stamp Duty, 27. . Reservation of Right of User by the Crown, 28. . Scotch, 28. Foreign, 28. . Expunging Entries in Register of Proprietorship, 29. . Penalty for imitating or using Name or Mark of Patentee, 30. . Assignees, 30. . When Void, 31. III. SPECIFICATION. . Provisional, 32. . Variance between Provisional, and Complete Specification, 33- . Construction and Interpretation, 34. . Comparing with others, 37. . Correction by Disclaimer, 39. vi CONTENTS. 8 9 . Explanations by Drawings, 4o. . General Sufficiency, 4o. Title of Invention, 42. Description of Invention, 43. 10. Specification or Claim larger than Invention, 52. II. 12 Inspection of Provisional Specification, 55 Filing, 56. IV. DISCLAIMER, 57. V. ASSIGNMENTS, LICENSES, SALE, AND ROYALTY. . Assignments, 61. 2. License to use and vend, 64. \o pw Com AM PW bY Sale, 68. . Royalties, 72. VI. INFRINGEMENT. . What is an Infringement, 76. . Where Infringed, 81. . Actions by and against Parties, $1. . Pleadings, 81. . Particulars of Breaches and Objections, 86. . Interrogatories and Discovery, 89. . Inspection, go. . Evidence of Infringement, 92. . Questioning Validity of Patent Infringed, 95. 10. Damages and Costs, 95. 11. Injunction to Restrain, 98. 12, Account of Sale and Profits, 99. VII. CONFIRMATION, RENEWAL, AND EXTENSION OF LETTERS PATENT. 1. In what Cases, 102. 2. Grounds, Terms, and Conditions, 109. 3. Practice on, 115. VIII. REPEAL OF LETTERS PATENT, 117. IX. PROOF OF PATENT DOCUMENTS, 120. CONTENTS. vii An pW nN 4 oO COTW AKN PWD TRADE MARKS. TRADE MARKS. . Principle of Right, 125. . Action for Infringement or Imitation, 127. - Restraining Use or Imitation by Injunction, 130. . Practice, 132. . Assignment, 133. . Forging and Costs, 134. COPYRIGHT. I. BOOKS. . Statutory Enactments, 139. . Subject-matter of Copyright, 141. . In Periodicals and Serials, 147. . In Plays and Novels, 148. . In Songs, 148. By Foreigners, 151. . Free Copies, 152. Entry of Proprietorship at Stationers’ Hall, 153. . Expunging or varying Entry, 155. . Assignment of Copyright, 157. . Proof of Registry, 159. . Penalties on Importation of Prohibited. Works, 160. . Rights of Authors, Editors, and Publishers, 160, . Piracy, 166. (a) What amounts to, 166. (b) Proceedings by Action, 169. (c) Notice of Objections, 170. (d) Proceedings by Injunction, 172. ° (e) Destroying or delivering up Pirated Copies, 173. II. III. Iv. VI. VI. VIII. CONTENTS, INTERNATIONAL AND COLONIAL COPYRIGHT, 174. DRAMATIC PRODUCTIONS AND MUSICAL COMPOSITIONS, 177. LECTURES, 184. PRINTS AND ENGRAVINGS, 185. PICTURES, PAINTINGS, DRAWINGS, AND PHOTOGRAPHS, 188. BUSTS, 190 DESIGNS, 190. LINENS, CALICOES, AND MUSLINS, 195. TABLE OF CASES. A. Abernethy v. Hutchinson, 185. Adamson’s Patent, in re, 16. Ainsworth v. Walmsley, 127. Albert (Prince) v. Strange, 140, 174. Allan’s Patent, in re, 112. Allen v. Rawson, 2. Amies v. Kelsey, 91. Archbold v. Sweet, 160. Arnold v. Bradbury, 55, 119. Aube’s Patent, in re, 107. Avanzo v. Mudie, 175. B. Bach v. Longman, 144. Baird v. Neilson, 66. Barber v. Grace, 50. Barfield v. Nicholson, 141, 146. Barley v. Walford, 195. Barnett v. Glossop, 159. Baskett v. Cunningham, 141. Bastow, ex parte, 154, 156. Bateman v. Gray, 84. Baxter’s Patent, 110. Beard v. Egerton, 23, 42, 47. Beckford v. Hood, 155. Bedells v. Massey, 82. Bennett v. Smith, 83. Bell v. Walker, 166. Benning v. Dove, 161. Bentley v. Fleming, 15. Bentley v. Goldstrop, 82. Bentley v. Keighley, 82, 88. Berenger v. Wheble, 186. Berry’s Patent, in re, 107. Bessell v. Wilson, 191. Betts’ Patent, in re, 104, 108, IIO, 113, 121. Betts v. Devitre, 81. Betts v. Gallais, 99. Betts v. Menzies, 2, 15, 16, 23, 35) 37° Betts v. Neilson, 78. Betts v. Walker, 84, 87. Betts v. Wilmott, 93, 94. Bewley v. Hancock, 64. Bickford v. Skewes, 36. Blamoud, in re, 27. Blofeld v. Payne, 130. Bloxam v. Elsee, 23, 31, 40, 45, 61. Bodmer’s Patent, in re, 105, 107, II0. Bogue v. Houlston, 188. Bohn v. Bogue, 167. Boosey v. Davidson, 151, 158, 169, 171. Boosey v. Jeffreys, 151, 158. Boosey v. Purday, 151, 171. Boosey v. Tolkiens, 169. xX TABLE OF CASES. Booth v. Kennard, 10, 22, 38, 84. Bottle Envelope Co. v. Sey- mour, 8. Boucicault v. Delafield, 175. Boulton v. Bull, 17. Bovill v. Finch, 106, Bovill v. Hadley, 97. Bovill v. Keyworth, 21. Bovill v. Moore, 45. Bovill v. Pienm, 21, 34. Bower v. Hodges, 75. Bowman v. Taylor, 65. Bradbury v. Dickens, 164. Braham v. Bustard, 128. Bramwell v. Holcomb, 141. Branchardiere v. Elvery, 195. Brennand’s Patent, in re, 26. Bridson’s Patent, in re, 114,116. British Museum v. Payne, 153. Brook v. Aston, 7, 20. Brook v. Wentworth, 160. Brooke v. Clarke, 140. Brooke v. Millikin, 160. Brooks v. Cock, 186. Brown v. Annandale, 28. Brown v. Cooke, 165. Brunton v. Hawkes, 53. Bulnois v. Mackenzie, 87. Bury v. Bedford, 135. Burgess v. Burgess, 132. Bush v. Fox, 38. Buxton v. James, 179. Bynner v. Reg., 120. Cc. Caldwell v. Vanvlissengen, 2, 4, 98. Cambridge University v. Bryer, 153. Campbell v. Scott, 143. Campion v. Benyon, 53. Cannington v. Nutall, 10, 52, 79. Card’s Patent, in re, 109. Carey v. Longman, 141. Carnan v. Bowles, 159. Carpenter v. Smith, 15. Cartwright v. Amatt, 62. Cary v. Fadin, 141. Cary v. Kearsley, 166, Cassell v. Stiff, 175. Chanter v. Dewhurst, 66. Chanter v. Leese, 69. Chappell v. Davidson, 150, 151. Chappell v. Purday, 151, 155, 170. Chappell v. Sheard, 149. Charry v. Henning, 71. Chollett v. Hoffman, 31, 85, 87. Claridge’s Patent, in re, 6, 107. Clark v. Freeman, 127. Clark v. Kenrick, 82. Clark’s Patent, in re, 115. Clark v. Price, 161. Clement v. Maddick, 172. Clementi v. Goulding, 144. Clementi v. Walker, 175. Cobley’s Patent, in re, 25. Cochrane (Lord) v. Swethurst, 53- Cocks v. Chandler, 128. Cocks v. Purday, 151, 158. Colburn v. Simms, 173. Collins’ Co. v. Brown, 126. Colnaghi v. Ward, 187. Cook v. Pearce, 42. Cornish v. Keene, 17. Correspondent News Co. Saunders, 153. Cottula v. Soames, 84. Cox v. Cox, 145, 163. TABLE OF CASES. xi Cox v. Land and Water Jour- nal Co. 142. Crane v. Price, 2, 18. Crawshay v. Thompson, 129. Croll v. Edge, 43, 85. Crookes v. Petten, 164. Crossley v. Beverley, 11, 44. Crossley v. Dixon, 64. Cumberland v. Copeland, 158. Cumberland v. Planche, 180. Curnan v. Bowles, 159. Curtis v. Platt, 78, 80, 98. Cutter v. Bower, 76. Cutler’s Patent, in re, 26. D. Daine’s Patent, in re, 25. D’Almaine v. Boosey, 166. Dangerfield v. Jones, 8, 65. Davidson v. Bohn, 157. Davidson, ex parte, 156. Daw v. Eley, 4, 9, 28, 40, 90. De La Rue v. Dickinson, 77. Delf v. Delamotte, 173. Delondre v. Shaw, 174. Derosne v. Fairie, 46, 52. Derosne’s Patent, in re, 107. Dixon v. Fawcus, 131, 170. Dobbs v. Penn, 32. Dodsley v. Kimersley, 166. Dunnicliff v. Mallett, 31, 81. Duvergier v. Fellows, 62. E. Edelston v. Edelston, 132. Electric Tel. Co. v. Brett, 7, 6. sine Tel. Co. v. Nott, 88. Elliott v. Turner, 34. Elmslie v. Boursier, 94. Elwood v. Christy, 30, 61, 100. F. Farina v. Silverlock, 126. Fawcett’s Patent, in re, 27. Feathers v. Reg. 28. Felton v. Greaves, 48. Fisher v. Dewick, 87. Foarde’s Patent, in re, 106. Foxwell v. Bostock, 41. G. Gahagan v. Cooper, 190, Gambert v. Ball, 188. Gambert v. Sumner, 188. Gamble v. Kurtz, 83. Galloway’s Patent, in re, 113. Gee v. Pritchard, 145. Gibson v. Brand, 20, 78. Gillett v. Green, 97. Gillett v. Wilby, 84, 97. Gittins v. Symes, 99. Goucher v. Clayton, 74, 79, 95. Goucher’s Patent, in re, 104. Graves, in re, 157. Greaves v. East Counties R. R. Co. 98. Green’s Patent, in re, 29. H. Hall v. Condor, 7o. Hancock v. Noyes, 83. Hardy’s Patent, in re, 105. Harmer v. Playne, 56. Harrison v. Taylor, 192. Harwood v. Great Northern R R. Co. 4, 5, 22. Hassell v. Wright, 30. Hasting v. Brown, 48. Hatton v. Kean, 178. Haworth v. Hardcastle, 45. Hayne v. Maltby, 65. xii TABLE OF CASES. Hazlitt v. Templeman, 154. Heath v. Smith, 15. Heath v. Unwin, 87. Heath’s Patent, in re, 104. Heathorn’s Patent, in re, 27. Herbert’s Patent, in re, 112. Hereford (Bishop) v. Griffin, 147. Hersee, in re, 24. Hesse v. Stevenson, 61: Heywood v. Potter, 191. Higgs v. Goodwin, 11, 78. Hill v. Mount, 27. Hill v. Thompson, 2, 43, 52, 99. Hill’s Patent, in re, 111, 113. Hill v. Evans, 3, 4, 34, 37- Hill v. Laming, 67. Hill v. Liverpool United Gas Co. 11. Hill v. London Gas Co. 12, 35. Hime v. Dale, 144. Hogg v. Kirby, 145. Honiball v. Bloomer, 96. Honiball’s Patent, in re, 16, 103, 116. Holdworth v. McCrea, 194. Holland v. Fox, 99, 100. Holmes v. London and North- western R. R. Co. 22. Hornblower v. Boulton, 2, 17. Hornby’s Patent, in re, 116. Horseley and Knighton’s Patent, in re, 30, 62. Horton v. Mahon, 8. Hotten v. Arthur, 143, 163. Houghton’s Patent, in re, 115. Housebill Coal Co. v. Neil- son, 4. Hovenden v. Lloyd, 128. How v. Taunton, 51. Howard v. Gunn, 145. Hudson v. Osborne, 133. Hull v. Bollard, 89. Hull v. Barrows, 131. Hullett v. Hayne, 149. Hutchinson’s Patent, in re, 114, 115. Hyde v. Palmer, 94. I. Ingram v. Stiff, 173. J: Jarrold v. Haywood, 168. Jarrold v. Houlston, 142, 167. Jefferys v. Boosey, 140, 151, 158. Jones’ Patent, in re, 116. Jones v. Berger, 87. Jones v. Leet, 64, go. Jones v. Pratt, 90. Jordan v. Moore; 5. K. Kay v. Marshall, 32, 53. Kay’s Patent, in re, 104. Kelly v. Morris, 144. Kyle v. Jefferys, 158. L. Lacy v. Rhys, 181, 184. Laing v. Gisborne, 16. Lawes v. Purser, 71. Lancaster’s Patent, in re, 112. Latour v. Bland, 159. Lawrence v. Smith, 146. Lazenburg v. White, 134. Leader v. Purday, 158, 171, I 79- TABLE OF CASES. xiii Leader v. Strange, 167. Leaf v. Topham, 88. Leather Cloth Co. v. American Leather Cloth Co. 127. Ledsam v. Russell, 102. Lee v. Haley, 134. Lee v. Simpson, 177, 184. . Levy v. Rutley, 178. Lewin v. Brown, 62. Lewis v. Davis, 17. Lewis v. Fullerton, 143. Lewis v. Marling, 14, 53. Liardet v. Johnson, 44. Lister v. Leather, 8, 39, 41. Longman v. Winchester, 143. Losh v. Hague, 96, 97. Lover v. Davidson, 149, 154. Low v. Routledge, 152, 154, 176. Lowe’s Patent, in re, 26, 115. Lyon v. Knowles, 182. M. Macfarlane v. Price, 40. Mackelcan v. Rennie, 35. Mackintosh’s Patent, 24. Macklin v. Richardson, 177. Macmurdo v. Smith, 196. Macnamara v. Hulse, 19, 47, 77, 88. Mallet’s Patent, in re, 113. McAlpin v. Mangnall, 61. McAndrew v. Bassett, 132. Manceaux, ex parte, 25. Margetson v. Wright, 192. Markwick, in re, 111. Marsh v. Conquest, 181, 182. Marshall v. Ross, 128. Martin v. Wright, 186. Mathers v. Green, 24. Matthewson v. Stockdale, 143. Mayall v. Higbey, 188. Mayhew v. Maxwell, 147. McCormic v. Grey, 22. McCrea v. Holdsworth, 193, 194, 195. Meadows v. Kirkman, 91. Milligan v. Marsh, 6. Millingen v. Picken, 195. Millington v. Fox, 132. Miller v. Taylor, 140. Millner’s Patent, in re, 116. Minter v. Mower, 54. Minter v. Wells, 47. Minter v. Williams, 78. Mitchell’s Patent, in re, 26. McKean’s Patent, in re,, 26. Moore v. Clarke, 187. Morey, in re, 29. Morgan v. Seaward, 14, 53. Morrison v. Solomon, 129. Morris v. Wright, 144. Morton v. Copeland, 183. Mullins v. Hart, 15. Mulloney v. Stevens, 193. Muntz v. Foster, 119. Murray v. Boyne, 140, 152. Murray v. Elliston, 177. Murray v. Heath, 187. Myers v. Baker, 30. N. Napier’s Patent, in re, 106. Neilson v. Betts, 94. Neilson v. Harford, 42, 46, 88. Newall, in re, 17, 32. Newall v. Elliott, 81, 95. Newberry v. James, 44. Newton’s Patent, in re, 108, 113. Newton v. GrandJ. R. R, Co. 6. xiv TADLE OF CASES, Newton v. Voucher, 18. Newton v. Cowie, 143, 186. Nickels v. Ross, 6, 18, 83. Nickels v. Haslam, 43. Nicol v. Stockdale, 143. Noble’s Patent, in re, 105. Noton v. Brooks, 72. Normand’s Patent, in re, 109. Normandy’s Patent, in re, 110. Norton v. Nicholls, 193, 194. Norton’s Patent, in re, 106, 111. Novello v. Ludlow, 167, 169, 180. O. Oldham v. Langmead, 65. Oliver v. Oliver, 145. Ollendorf v. Black, 151. Ormson v. Clark, 6. Oxley v. Holden, 16, 33, 54, 78. P. -Page v. Townsend, 175. Palmer v. Cooper, 86, 88. Palmer v. Wagstaff, 22, 88. Parkes v. Stevens, 5, 52. Patent Bottle Envelope Co. v. Seymour, 54, 80. Patent Type Foundry Co. v. Richards, 40. Patent Type Foundry Co. v. Walter, 91. Patterson’s Patent, in re, 105. Penn v. Bibby, 2, 32, 33. Penn v. Jack, 95. Pering, ex parte, 28. Perry v. Skinner, 58. Pike v. Nicholas, 142, 168. Planche v. Braham, 181. Platt v. Button, 144. Platt v. Elce, 82. Poole’s Patent, in re, 109, 114. Power v. Walker, 158. Protheroc v. May, 64. Q. Queensberry (Duke) v. Sheb- beare, 144. R. Ralston v. Smith, 3, 39, 41, 59. Reade v. Bentley, 148, 163, 164. Reade v. Conquest, 140, 178. Reade v. Lacey, 148. Redmond, in re, 56. Reg. v. Bessell, 191, Reg. v. Betts, 117. Reg. v. Cutler, 2, 54, 26, 118. Reg. v. East. Archipelago Co. 120. Reg. v. Hancock, 118. Reg. v. Mill, 39, 43, 58, 89, 118, 119. Reg. v. Prosser, 119. Reg. v. Walton, 118. Rex v. Cutler, 53. Rex v. Metcalfe, 45. Rex v. Wheeler, 32, 51. Ridgeway v. Phillip, 69. Richardson v. Gilbert, 147. Robinson’s Patent, in re, 28, 106. Rogers v. Driver, 192. Rogers v. Nowell, 130. Rooney v. Kelley, 170. Roworth v. Wilkes, 166. Rurdell v. Murray, 158. Rushton v. Crawley, 55. Russell, in re, 23, TABLE OF CASES. Xv Russell v. Briant, 181. Russell v. Cowley, 47. Russell v. Leedsam, 24, 87, 102. Russell v. Smith, 179, 180, 184. S. Saxby’s Patent, 115. Sarazin v. Hamel, 194. Saunders v. Aston, 18. Sayre v. Moore, 166. Schlumberger, in re, 24, 104, 107. Schlumberger v. Lister, 68. Scott v. Young, ex parte, 23. Sealy v. Browne, 85. Seed v. Higgins, 39, 60, 92. Seeley v. Fisher, 172. Seixo v. Provezende, 133. Sellers v. Dickinson, 6, zo. Shaw v. Bank of England, 12, gI. Shepherd v. Conquest, 178. Simpson v. Holliday, 36, 41. Sims v. Marryat, 162. Singleton v. Bolton, 130. Smith’s Patent, in re, 109, 115, 116. Smith v. Buckingham, 72. Smith v. Johnson, 147. ‘Smith v. London and N. W. R. R. Co. 76, 8r. Smith v. Neale, 63, 84. Smith v. Scott, 65. Smith v. Upton, 11g. Southey v. Sherwood, 139, 146. Spence, in re, 24. Spilsbury v. Clough, 58. Stanward v. Lee, 155, 170. Stead v. Anderson, 85. Stead v. Carey, 103. Stead v. Williams, 15. Steedman v. Marsh, 6. Steiner v. Heald, 6. Stevens v. Benning, 162. Stevens v. Keating, 50. Stevens v. Wildy, 172. Stiff v. Cassell, 165. Storace v. Longman, 144. Stockdale v. Onwhyn, 146. Stocker v. Rodgers, 97. Stocker v. Waller, 58. Sturz v. De La Rue, 44, 45. Sweet v. Archbold, 166. ‘| Sweet v. Benning, 144, 148, 165, 167. Sweet v. Cater, 161. Sykes v. Sykes, 130. T. Talbot v. La Roche, 86. Taylor v. Hare, 71. Templeton v. Macfarlane, 7. Tetley v. Easton, 2, 41, 47, 59, 89. Thomas v. Foxwell, 22, 38. Thomas v. Hunt, 65. Thomas v. Welch, 33, 60. Thompson v. James, 3. ‘Thompson v. Stanhope, 145. Thompson v. Symonds, 186. Tielens v. Hooper, 75. Tinsley v. Lacy, 148. Tolhausen’s Patent, in re, 24. Tolson’s Patent, 24, 56. Tonson v. Collins, 139. Trotman v. Wood, 72, ror. Trotman’s Patent, in re, 114. Trusler vy. Murray, 166. Turner v. Robinson, 189. Turner v. Winter, 43. xvi TABLE OF CASES. 7 U. Unwin v. Heath, 11,"93. Upman v. Elkan, 128, 135. V. Vidi v. Smith, 91, roo. Vincent’s Patent, in re, 25, 26. Ww. Walker, ex parte, 157, 189. Wallington v. Dale, 20, 57, 58. Walton v. Bateman, 82, 83. Walton v. Lavater, 31, 68, 78, 81, Io. Walton v. Potter, 19. Wanstead Local Board of Health v. Hill, 126. Watson v. Pears, 57. Webster v. Newsome, 73. West v. Francis, 187. White v. Fenn, 80. White v. Geroch, 141, 144. White v. Toms, 9. Whitehouse’s Patent, in re 105, 109g. Wilkins v. Aikin, 142. Williams v. Nash, 28. Windover v. Smith, 191. Wood v. Chart, 176. Wood v. Zimmer, 44. Woodcraft’s Patent, in re, 115. Wollam v. Ratcliff, 133. Wotherspoon v. Currie, 131. Wright v. Goodlake, 169. Wright v. Hitchcock, 80. Wright v. Tallis, 146. Wyatt v. Barnard, 141, 143. ¥. Young v. Fernie, 10. ( ABBREVIATIONS. A. C.—Full Court of Appeal in Chancery. C.—Lord Chancellor’s Court. B. & S.—Best and Smith, Queen’s Bench Reports. Bank.—Court of Bankruptcy. Cc. C. J.—County Court Judge. C, L.—Common Law. Chanc.—Chancery. C. P.—Common Pleas. De G. F. & J.—De Gex, Fisher and Jones, L. Chancellor and Court of Ap- peal in Chancery. Exch.—Exchequer. Ex, Cham.—Exchequer Chamber. H. L.—House of Lords, Hopw. & C.—Hopwood and Coltman. , of \ Ir, R., C. L.—Irish Reports of 1867, Current Common Law Series. Ir. R. Eq.—Irish Reports, Equity Series of 1867. L, JJ. and L. J.—Lord Justices’ Court, or Lord Justice. L. R.—Law Reports. L, J.—Law Journal, L. T. R.—Law Times Reports. M. C.—Magistrates’ Cases. Moore P. C. C., N. S—Moore’s Report of Privy Council. N. S.—New Series. P. C.—Privy Council and Privy Councillor, Q. B.—Queen’s Bench. R.—Rolls’ Court. V. C. M.—Vice-Chancellor Malin’s Court. V. C. G.—Vice-Chancellor Gifford’s Court. V. C. B.—Vice-Chancellor Bacon’s Court. V. C, J.—Vice-Chancellor James’ Court. V. C. S.—Vice-Chancellor Stuart’s Court. S. C.—Same Case. S. P.—Same Point. W. R.— Weekly Reporter. Patent Cases. DIGEST OF English Patent Cases. I. FOR WHAT GRANTED. {. Statutes. By 21 Jac. 1, c. 3, s. 6, patents for the term of fourteen years or under, of the sole working or making of any manner of new man- ufactures within this realm, to the true and first inventor of such manufactures, which others at the time of making such patent shall not use, are good; so also as they be not contrary to the law nor mis- chievous to the state, by raising prices of commodities at home, or the hurt of trade, or generally inconvenient ; the fourteen years to be accounted from the date of the first letters patent. The crown has always exercised a control over the trade of the country ; and though restrained by the common law and the Statute of Monopolies (21 Jac. 1, c. 3) within reasonable limits, the crown might grant the exclusive right to trade with a new invention for a reasonable period. The 21 Jac. 1, c. 3, did not create but controlled the power of the crown in granting to the first inventors the privilege of the sole working and making of new manufactures. Caldwell v. Vanvlissengen, g Hare, 4153 16 Jur. 115; 21 L. J., Chance. 97. 5 and 6 Will. 4, c. 83, amends the law touching letters patent for inventions. 2 DIGEST OF By, 2 and 3 Vict. c. 67, and 7 and 8 Vict. c. 69, the term of letters patent may be extended and new letters patent granted after the expiration of the original term, by Tenieeee the judicial com- mittee of the privy council, By 14 and 15 Vict. c. 82, s. 7, the lord chancellor and secretary of state are to make rules for passing letters patent. 15 and 16 Vict. c. 83 (the Patent Law Amendment Act, . 1852), is amended by 16 and 17 Vict. ¢. 115. By 16 and 17 Vict. c. 5, stamp duties are substituted for fees on passing patents. By 22 Vict. c. 13, provisions are made for protecting inventions for improvements in instruments and munitions of war, by assignment to the secretary of state for war. By 33 and 34 Vict., c. 27, the exhibition of new inventions at international exbibitions in the United Kingdom is not to prejudice patent rights. 2. Subject-matter generally. An invention must be both new and useful, and not confined to the knowledge of the party making it, to be the subject of a patent. Hill v. Thompson, 2 Moore, 424; 8 Taunt. 375; Holt, 636; 3 Mer. 629. An addition to an old invention may be the subject of a patent. Hornblower v. Boulton, 8 T. R. 95. But the application of a known article to a new use, the mode of application not being new, can not be the subject of a patent. Reg. v. Cutter, 3 C. & K. 215; 14 Q. B. 372, n.— Denman. An invention, consisting in no more than the use of things already known, and acting with them in a way already known, and producing effects already known, but producing those effects so as to be more economically or beneficially enjoyed by the public, is properly the subject-matter of a patent. Crane v. Price, 5 Scott, N. R. 338; 4 M. & G. 586; 12 L. J., C. P. 81. ENGLISH PATENT CASES. 3 A patent may be taken out, for that includes the subject- matter of a patent still in force, if the specification properly distinguishes that which is new from that which is old. J. The degree of labor and expense of experiments does not properly enter into the consideration of whether or not an in- vention is the subject-matter of a patent. Jb. The adoption by an inventor of a suggestion, made in the course of experiments, of something calculated more easily to carry his conceptions into-effect, does not affect the validity of the patent. Allen v. Rawson, 1 C. B. 551. The discovery that a particular advantage may be attained by the use of a machine known before, in a manner known before, is not an invention which can be made the subject of a patent. Tetley v. Easton, 2 C. B., N.S. 706; 26 L. J., C. P. 269. The new application of any means or contrivance may be the subject of a patent, if it lies so much out of the tract of the former use as not naturally to suggest itself, but to require some application of thought and study. Penn v. Bibby, 2 L. R., Chanc. 127; 36 L. J., Chanc. 455—C. A patent can not be taken out for one particular use of a known machine, though the patentee may have discovered how to use the machine more beneficially than the owner. Ralston v. Smith, 11 H. L. Cas. 223; 20 C. B., N.S. 28; 13 L. T., N.S. re 95 Le jy C. Peto. Where A. has in a specification described a result, but has not added such a statement of means as to make that result practically attainable, and B. afterward takes out a patent for the same result, but fully explains the means to be employed to at- tain it, the patent of B. is sustainable. Betts v. Adenzies, 31 L. J.. Q. B. 2333 11 W.R. 1; 7 L. T., N.S. 110; 10 H. L. Cas. 117. Where something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent. Hills v. Evans, 8 Jur., N.S. 525; 31 L. J., Chanc. 457; 6 L. T., N. S. go—C. A patent can not be upheld for the mere application of a well- known mechanical contrivance to a purpose which is analogous 4 DIGEST OF to the manner or to the purpose in or to which it has been hith- erto notoriously used or applied. Harwood v. Great Northern Railway Company, 35 L. J.. Q. B. 273 11 H. L. Cas. 654; 12 La TN: S. 9390, 3. Inventions, Manufactures, and Discoveries. A person, to be entitled to a patent for an invention must be the first and true inventor, and there must not be any public use thereof by himself or others, prior to the grant of the patent Housebill Coal Company v. Neilson, 9 C. & F. 788. Trials of an incomplete invention, by way of experiment, are not evidence of a prior use for the purpose of invalidating a pat- ent. Prior use for this purpose, means public use and exercise of the invention. Jd. : Evidence of the existence of a completed invention, once in public use, although abandoned or the use long discontinued, but not altogether lost sight of, is sufficient to invalidate a patent which is subsequently granted for the same invention. Jb. What previous user will invalidate, and what user, if any, can be admitted in contravention of the patent right, are differ- ent questions, depending one upon the extent of previous knowl- edge, and the other upon the effect of the grant. Caldwell v. Vanvlissengen, 9 Hare, 428; 16 Jur. 115; 21 L. J., Chance. g7- To support an allegation of want of novelty, whatever is es- sential to the practical working and real utility of the invention must be found substantially in the prior publication. Hills v. Evans, 8 Jur. N.S. 525; 31 L. J., Chance. 4378 ;6L. T., N. 8. go—C. The antecedent existence of an invention, not shown to have been brought to any successful result, and which was so far similar, that if subsequent in date to a patent, it would have been held a colorable and clumsy imitation, for the purpose of effecting the same result, does not invalidate the patent by antic- ipation. Daw v. Ely, 3 L. R., Eq. 496—V.-C. W. It is not every useful discovery that can be made the subject of a patent, but the words “‘ new manufacture ” in 21 Jac. 1, ¢ 3, will comprehend not only a production, but the means of ENGLISH PATENT CASES. 5 producing it. Ralston v. Smith, 11 H. L. Cas. 223; 13 L. T., N.S. 23 35 L. J., C. PB. 49% 20 C..B., N.S. 28. When a thing has once been used fora certain purpose, no patent is valid for applying that thing toa similar but not an iden- tical purpose. ‘Yordan v. Moore,1 L.R., C. P. 6243 12 Jur. N. S. 766; 35 L. J., C. P. 268; 14 W. R. 769. A patent granted for constructing vessels of an iron frame covered with a wooden planking, and before its date vessels hav- ing been built of iron, or of iron and wood combined, is in- valid. Jb. Where there are two things similar in form used for a similar object, and capable of the same application, one of them having been known to mechanics, the introduction of the other into use will not constitute a good ground fora patent. Harwood v. Great Northern Railway Company, 11 H. L. Cas. 654; 35 L. J., Q. B. 27; 12 L. T., N. S. 771. A slight difference in the mode of application is not sufficient for such a purpose, nor will it be sufficient to take a well-known mechanical contrivance and apply it to a subject to which it has not been hitherto applied. Jd. A valid patent for an entire combination for a process gives protection to each part that is new and material for that process ; but a part which in itself could not have been the subject of a patent, or the advantages of which are merely collateral to the objects of the invention, is not protected. Parkes v. Stevens, 18 W. R. 233; 22 L. T., N.S. 635; 5 L. R., Chanc. 36. The application to a globular lamp of a sliding door instead of a hinged one, can not be the subject of a patent. Jd. The adaptation of a sliding door to a spherical lamp, sliding doors having previously been applied to cylindrical lamps and to other glazed surfaces, can not of itself be the subject of a pat- ent. ib. 6 DIGEST OF j 4, Importations from Abroad. : A party availing himself of information from abroad is an inventor within 21 Jac. 1,c. 3,8. 6. Nickels v Ross, 8 C. B. 679. So, an importer of an invention from abroad is an inventor within 5 and 6 Will. 4, c. 83. Claridge’s Patent, in re, 7 Moore, P. C. C. 394. Semble, that an agent in this country of an inventor abroad receiving a confidential communication of an invention, not in a practically useful state, may take out a patent for his own ben- efit, if he, pursuing the idea thus thrown out, discovers a prac- tical way of carrying it into effect. Adilligan v. Marsh, 2 Jur, N. S. 1083. See Steedman v. Marsh, 2 Jur. N. 8S. 391— V.-C. W. When a patent is taken out as’ for an original invention, the subject of the patent being in fact a communication from a British subject resident abroad, the patent is void. 1d. 5. Combinations of ‘old and new Matters and Processes. When a patent is granted fora combination of several things, some of which are old and some new, the question is, whether, tak- ing the specification altogether, that which is claimed as a whole is new, and the imitation by a chemical or a mechanical equiva- lent of a part of the combination, which is both material and new, is an infringement. Newton v. Grand Function Railway Com- pany, § Exch. 331; 20 L. J., Exch. 427, n. There may be a patent for a combination of old and new mech- anism, and such patent will be infringed by using so much of the combination as is material, and it will not be less an infringe- ment because the result is attained by the substitution of a’ me- chanical equivalent. Sellers v. Dickinson, 5 Exch. 3123; 20 L.. J., Exch. 417. An old mode of operation, more extensively than hitherto ap- plied, toa well-known article, does not afford a ground on which to grant a patent. Ormson v. Clarke, 13 C. B., N. S. 3373 9 Jur., N. S. 749; 32 L. J.. C. P.8; 11 W. RR. 118; 7 L. T., ENGLISH PATENT CASES. 7 N. S. 361. Affirmed on appeal, 14 C. B., N. 8.4753 32 L. J., C. P. 291; 10 Jur. N.S. 128; 11 W. R. 787—Exch. Cham. Casting in iron an article which has never been cast before, if no new method of casting is adopted in the process, is not the subject of a patent. Jb. A claim for a patent for improvements in the mode of doing anything bya known process is sufficient to entitle the claimant to a patent for his improvements when applied either to the process as known at the time of the claim, or to the same process altered and improved by discoveries subsequently published, so long as it remains the same with regard to the improvements claimed and their application. Electric Telegraph Company v. Britt, 10 C. B. 838; 15 Jur. 579; 20 L.J., C. P. 123. A patent was taken out for “a new and improved mode of manufacturing silk, cotton, linen, and woolen fabrics.” The specification anda disclaimer set forth, that the patentees claimed “the mode hereinbefore described of producing or preparing stripes of silk, cotton, woolen, or linen, or of a mixture of two or more of these materials, in such a manner that the weft, or lateral fibres of both cut edges of each stripe are all brought up on one side, and into close contact with each other, and the re- weaving of such stripes with the whole fur or pile uppermost, into the surfaces of carpets,” etc. One of these processes was old. The judge directed the jury, that if one was new, the patent could be supported for the combination of them, and would only be invalid if there had been a public use of both be- fore the date of the patent: Held, that this direction was erro- neous, and that the patent was void. Templeton v..Macfarlane, 1H. L. Cas. 595. A patent can not be supported for the application of a process already known, producing a known result, unless the object to which the process is applied is different from the object to which it was formerly applied ; and the question whether the object is different is one of fact for the jury. Steiner v. Heald (in error), 6 Exch. 607; 17 Jur. 875; 20 L. J., Exch. 410—Exch, Cham. . The application of a known process to a new article, the mode of application not being new, can not be the subject of a patent. 8 DIGEST OF Brook v. Aston, 8 El. & BI. 478; 4 Jur., N.S. 279; 27 L. J., Q. B. 145. Affirmed on appeal, 5 Jur., N. S. 1025; 28 L. J., Q. B. 174—Exch. Cham. But this principle does not apply where the process is chem- ical. Young v. Fernie, 10 Jur., N.S. 926; 12 W. R. gor, 10 L. T., N.S. 8615; 4 Giff. 577. The application of a well-known tool to work previously untried materials, or to produce new forms, is not the subject a patent. Bottle Envelope Company v. Seymour, 5 C. B., N.S. 164; 5 Jur, N.S. 174; 28 L. J., C. P. 22. A patent for a combination does not import a claim that each of its parts is new, and the patent may be valid, though each part is old; but the use of a subordinate part only of the combina- tion may be an infringement of a patent for the combination if the part so used is new and material. Lister v. Leather, 8 El. & Bl. 1094; 4 Jur., N.S. 947; 27 L. J., QO. B. 295—Exch. Cham. If, having a particular purpose in view, a person takes the gen- eral principles of mechanics, and applies one or other of them to a manufacture to which it has not before been applied, this is sufficient ground to warrant an application for a patent; assum- ing such manufacture to be new, desirable, and of public utility. Dangerfield v. Fones, 13 L. T., N.S. 142—V.-C. W. Hoops of whalebone, cane, and other substances, suspended from the waist and forming a petticoat, had long since been used by ladies. A person took out a patent for using, for the same purpose, hoops made of steel watch springs: Held, that this was not an invention which could properly be made the subject of a patent. Thompson v. ‘Fames, 32 Beav. 570. The application of a known article to a purpose analagous to that to which it had before been applied, is not the subject of a patent, although the result of the application may be the production in a cheaper and a better manner of a known article. Horton v. Mabon, 12 C. B., N. S. 4373 31 L. J., C. P. 2553; ro W.R. 582; 6 L. T., N.S. 289. Affirmed on appeal, 16 C. B., N.S. 141; 12 W. R. 491; 9 L. T., N.S. 815—Exch. Cham. ENGLISH PATENT CASES. 9 Therefore, a double angle iron being a well-known article, the application of it in the construction of the hydraulic cap joints of gas-holders, instead of constructing them by riveting two pieces of single angle iron toa plate, is not the subject of apatent. Jd. Ladies’ mourning bonnets and hat falls having previously been made with the ornamental folds on the outside only, so that when turned up a “‘ wrong side ” was exposed to view, the plaintiff introduced and patent an improved mode of making them with the folds on the inner side also, so as to form both sides alike, but there was no novelty in the process of manufac- ture: Held, that this was not a subject for a patent. White v. Toms, 37 L. J., Chance. 204; 17 L. T., N. S. 348—V.-C. M. Although a patent includes matters some of which are new, and some old, it may be upheld by limiting the claim to the par- ticular combination in the particular manner described in the specification. Daw v. Eley, 3 L. R. Eq. 496—V.-C. W. A patent was taken out for an improvement inthe mode of manufacturing glass. The old mode had been that of putting the materials which were to form the glass in pots placed on “sieges ” or benches, with the fire underneath, the rising flames of which played around them, and when they became too hot and cracked, they were removed from their position, and the overheated and cracked parts were presented to a current of cooling air and the molten material was thus, partially at least, saved from waste, and the cracks in the pots were stopped up with a portion of it, and were thus preserved from destruction. The new method consisted in adopting some previous improve- ments (such as suppressing the fire-pots, placing the materials in a tank, etc.), to which the patentee laid no claim, and in combin- ing these things with an improved furnace. His invention con- sisted of “ forming the sides of the tank or chamber containing the glass-making materials hollow, in such wise that a current of refrigerating air may circulate and prevent any excessive heating of the sides which retain or inclose the fused materials.” Though all the principles upon which the new method was based were well known, the new form of combining them was shown to make the melting of the materials less subject to danger and 10 DIGEST OF less costly in use: Held, that this new form of combination be- ing useful and valuable constituted a valid ground for a patent Held, also, that a direction toa jury that if the combination was new and useful, the patent could be supported, though each separate process employed in it was previously known, was cor- rect. Cannington v. Nuttall, 5 L. R., H. L. 205. 6. Chemical Combinations and Processes. Inventions in mechanics are as totally different from inventions in economical chemistry as the laws and operations of mechanical powers differ from the laws of chemical affinities, and the re- sults of analysis in the comparatively infant science of chem- istry with its boundless field of undiscovered laws and substances. Young vy. Fernie, 4 Giff. 5773 10 Jur., N.S. 926; 12 W.R. gor; ro L. T., N. S. 868. Where, therefore, prior to the date of a patent, something necessary for the useful application of a chemical discovery for manufacturing purposes remained to be discovered, which the plaintiff’s invention supplied: Held, that the manufacture, with the materials and processes in the specification, was a new man- ufacture not in use at the date of the patent. Jb. The law recognizes the right of an inventor who finds out and supplies for commercial purposes an article known previously only as a chemical curiosity. Jb. Vegetable gas had been obtained from oils which were sep- arated from seeds and other oleaginous substances by pressure. It was discovered that gas might be distilled at once from the seeds and other oleaginous substances, without first separating the oil: Held, that assuming the invention to be new, it was such as might be the subject of a patent. Booth v. Kennard (in error), 1 H. & N. 5273; 3 Jur., N.S. 21; 26 L. J., Exch. 23— Exch. Cham. A person claimed an invention for the purification of gas, by means of hydrated or precipitated oxides of iron, and also a pro- cess of revivification, by which the old materials could again be applied as a purifying element: Held, that an application to the purification of gas of a natural substance called bog ochre, con- taining precipitated oxides of iron, was not an infringement of > ENGLISH PATENT CASES. Ir the patent, but the revivification of that natural substance was. Hills vy. Liverpool United Gaslight Company, 9 Jur., N.S. 140; 32 L. J., Chane. 28; 7 L. T., N.S. 537—C. The employment of ee of lime for the purpose of pre- cipitating the animal and vegetable matter contained in sewage water, and so producing an agricultural manure, is a good sub- ject-matter for a patent. Higgs v. Goodwin, 5 Jur., N. S. 97; 27 L. J. Q. B. 421; El, Bl. & El. 529. A person using the same process, and obtaining a product, not for the purposes of commercial profit, but for purifying sewage water merely, is not guilty of an infringement of the patent. 1d. A specification is to be understood according to the acceptation of practical men at the time of its enrollment. ‘Therefore, where a specification stated that the apparatus mentioned would extract gas ‘‘from any substance from which gas capable of being em- ployed for illumination can be extracted by heat,” and the appa- ratus was not suited to extract gas from oil : Held, that this did not avoid the patent, oil not then being considered fit for the manufacture of gas for lighting towns, though it was then known as a chemical fact that gas might be produced from oil by heat, and this property has since been applied to the purposes of illumination. Crossley v. Beverly, 9 B. & C. 63; M. & M. 283; 3 C. & P. 513; 1 Russ. & Mylne, 166. When a patent has been obtained for the use of a known sub- stance, described by its specific name, and it is afterward discov- ered that the use of two other and equally known substances will produce the same effect, though the evidence of ‘scientific men may go to show that the two substances became, in the act of so using them, the one substance described in the patent, their use will not constitute an infringement of the patent. Unwin v. Heath (in error), 5 H. L. Cas. 505; 16 C. B. 713; 2 Jur. N. §. 10293 25. L. Ja C. FE. 8, The plaintiff, on applying for a patent, prior to the 15 and 16 Vict. c. 83, delivered to the attorney-general a deposit paper stating that his invention was ‘‘ for absorbing sulphuretted hydro- gen and other gases into porous bodies, and renovating them again either by heat or by taking off the atmospheric pressure.” In 1849, he obtained a patent for ‘tan improved mode of com- i 12 DIGEST OF pressing peat for making fuel or gas, and of manufacturing gas, and of obtaining certain substances applicable for purifying the same, The invention, described in the specification, was, pass- ing the gas through a mixture consisting of the subsulphates, the oxy-chlorides, or the hydrated or precipitated oxides of iron, either by themselves or mixed with sulphate of lime and saw- dust, or peat charcoal, ‘‘ so as to make a porous material, whereby the gas will be deprived of its sulphuretted hydrogen, which will be absorbed into the porous material, water being formed by the union of the oxygen of the oxide with the hydrogen of the sul- phuretted hydrogen. As soon as the material ceases to purify the gas from sulphuretted hydrogen, the gas is to be shut off from the purifier, and a communication opened with the external air, which is to be admitted to the purifying material, and by the agency of which it will be renovated, and the uncombined gases which have been absorbed driven off. The best way to effect this is partially to take off the atmospheric pressure at the top or bottom of the purifier in which the purifying material is con- tained, by connecting it with a pipe toa hot and powerful chim ney, so as to Cause a current of air to pass through the purifier The current of air will drive off the volatile gases, and reoxidize the iron of the sulphuret of iron. As soon as the iron is reoxi- dized, the gas is to be passed through it again.” He claimed, first, purifying gas by passing it through precipitated or hydrated oxides of iron; and secondly, renovating the purifying material by exposing it to the action of the air. The jury found that the invention, in respect of which the plaintiff applied for a patent, and in respect of which his patent was granted, whether aptly described in the deposit paper or not, was the plaintiff’s inven- tion: Held, first, that, assuming the deposit paper delivered to the attorney-general did not correctly describe the matter in respect of which the plaintiff applied for a patent, the defendant was not entitled to have a verdict, on a plea that the invention described in the specification was another and a different inven- tion from that for which the letters patent were granted. Hills v. London Gaslight Company, 5 H. & N. 312; 29 L. J., Exch. 409. In the specification of a prior patent by C. for purifying gas, dated in 1840, after speaking of the use of black oxide of ENGLISH PATENT CASES. 13 manganese for purifying gas, he went on to say, “the same effect may be produced by the application of the oxide of zinc, and the oxides of iron treated precisely in the way above de- scribed: Held, that, assuming that C. meant to claim all oxides of iron for purifying gas, inasmuch as some would not answer, the court could not say, asa matter of law, that a patent could not be had by a person who afterward discovered that pre- cipitated hydrated oxides were those which it was proper to use. Jb. The jury having found that C.’s specification did not disclose the use of hydrated oxides of iron, the court refused to grant a new trial. . Jb. In working for the purpose of completing the specification of his patent, C. had used oxides of iron for the purification of gas, and the gas purified by him to the extent of 20,000 feet a day, had for many days been mixed with the ordinary gas, and sup- plied to the public from the mains of a gas company. He had renovated the material by exposing it to heat on the top of some retort beds. The oxides were originally in a hydrated state, and the heat used by him while so working was not sufficient to render them anhydrous ; but, not knowing the difference between hydrated and anhydrous oxides, and supposing that a better result would thereby be obtained, he directed in his specification that the material should be raised to a red heat, which would render the oxides anhydrous. The jury having found that what C. did was in the nature of an experiment, and not a publication to the world, the court refused to disturb the verdict on that point. Jd. In 1847, F. having obtained a patent for the purification of gas by chloride of calcium, specified a mode of making the chloride of calcium by decomposing muriate of manganese, iron, or zinc, and said, “¢ The oxides or carbonates which result are useful for the said purification of gas, and need not be removed.” The oxides so prepared would be hydrates: Held, that the court, on a comparison of F.’s specification with that of the plaintiff, could not say, as a matter of law, that F. had anticipated the plaintiff’s invention. 1d. Before the date of the plaintiff’s patent, it was known that hydrated oxides of iron would absorb sulphuretted hydrogen ; 14 DIGEST OF but it was not known that they could be practically used in the purification of coal gas from sulphuretted hydrogen: Held, that a pateht might be had for applying hydrated oxides to absorb sulphuretted hydrogen from coal gas. Jb. Tt was also known that sulphuret of iron produced by the action of sulphuretted hydrogen upon hydrated oxide of iron, would be reoxidized by being exposed to the action of atmospheric air. But it was not known that when the sulphuret was produced by exposure of hydrated oxide of iron to the action of sulphuretted hydrogen mixed with coal gas, the reoxidation of the iron might not be prevented by the cyanogen, compounds of ammonia, and tarry matter which would be mixed with it: Held, that a patent might be had for reoxidizing the iron by exposure to the air after it had been used in the purification of coal gas. Jd. Held, also, that the invention came within the title of his patent as an improved mode of manufacturing gas. Jd. 7. Prior Publication and User, Before a party took out a patent for a machine, a model of a similar machine was made, unknown to him, and a machine was begun to be made from it, but no similar machine was ever used in this country before the patent: Held, that this was not suffi- cient to defeat the patent. Lewis v. Marling, 4 C. & P. 52, 5 M. & R. 66; 10 B. & C. 22. Where, a few months before the date of a.patent for an im- provement in paddle-wheels, two pairs of the wheels were made for a party (to whom the patent was afterward assigned) by an engineer and his workman at his own manufactory, under the directions of the patentee, and under an injunction of secrecy, the engineer being paid for them by the’ party; that when finished they were taken to pieces, packed up, and shipped for a foreign port, where, according to his directions, they were put together and used (after the date of the patent) in steamboats belonging to a company, of which he was the manager and principal share- holder: Held, that this was not such a publication of the inven- tion as to avoid the patent. Aforgan v. Seaward, 2M. & W. 5443; M. & H. 553 1 Jur. 527. ENGLISH PATENT CASES. 15 If at the timea patent is granted for an invention, such inven- tion has already been made public in England by a description contained in a work, whether written or printed, which has been publicly circulated, in such case the patentee is not the first and true inventor, whether he has himself borrowed his invention from such publication or not. Stead v. Wilkams, 7 M. & G. 818 ; 8 Scott, N. R. 440; 8 Jur. 930; 13 L. J., C. P. ars. If the inventor of a machine lends it to another in order to ‘have its qualities tested, and that person uses it for some weeks in a public work-room, this is not giving the invention such pub- licity as to deprive the inventor of his right to obtain letters patent for it. Bentley v. Fleming, 1 C. & K. 587—Cresswell. A machine does not cease to be the subject of a patent, merely because of the length of time during. which the inventor may keep it by him, after it has been made a complete workable ma- chine. Jd. The prior use of an invention which invalidates a patent is a use by persons in carrying on their trade, and without conceal- ment. Heath v. Smith, 2 C. L. R. 1584; 3 El. & BI. 256; 18 Jur. 601; 23 L. J., Q. B. 167: B. applied for a patent for improvements in making capsules. Some delay occurred in the office, and between the time of the application for and the issuing of the letters patent, B. manu- factured a quantity of the articles, in the making of which he had discovered improvements. ‘They were made by his own work- men, and were not intended for sale before the patent was granted, nor were they sold: Held, that this did not invalidate the patent. Betts v. Menzies, 5 Jur., N.S. 1164; 28 L. J., Q. B. 361. The public use and exercise of an invention which prevents it from being considered a novelty, is a use in public, so as to come to the knowledge of others than the inventor, as contradis- tinguished from the use of it by himself in private, and does not mean a use by the public generally. Carpenter v. Smith, g M. & W. 300. The prior deposit of articles of novel manufacture in a ware- house, for sale, is a sufficient publication to defeat a patentee’s claim to novelty in the invention of similar articles. Zullins v. Hart, 3 C. & K. 297—Jervis. 16 DIGEST OF Although a party may believe himself to be the first and orig- inal inventor, yet he can not shelter himself under willful igno- rance, but will be fixed not only with what he knew, but with that which he might have known had he made the inquiries which it was incumbent upon him to make. AHoinball’s Patent, in re, 9 Moore, P. C. C. 378. A first and original inventor means a person who could claim the merit of the first invention without reference to the user. 1d. Where a man, having conjectured a new method of effecting a desired object, takes out a patent for it, but never puts it in practical operation, that will not invalidate letters patent taken out for the same process by a subsequent inventor, who shall of himself discover the same method. Betts v. Menzies, 3 Jur., N. S. 357—V.-C. W. A contractor for harbor works had in the progress of his undertaking invented an apparatus which greatly facilitated the works, but which could only be tested in a place accessible to the public. After having used the apparatus for four months in the progress of the work, he applied for a patent: Held, that such user amounted to a dedication to the public, and that he was not entitled to a patent. Adamson’s Patent, in re, 6 De G., M. & G. 420; 25 L. J., Chanc. 456. An invention was described in a book published in France, copies of which were sent to England toa bookseller for sale: Held, that this was a publication of the invention, and that no valid patent could afterward be taken out in this country for the same invention. Laing v. Gisborne, 31 Beav. 133; 8 Jur., N. S. 7363 31 L. J., Chanc. 769; 10 W. R. 368; 6 L. T., N. 8. 771. The circumstance of a patentee having previously filed (but abandoned) a provisional specification describing in part the same invention does not render a subsequent patent void, the filing of the previous provisional specification not being a publi- cation within the statute. Oxley v. Holden, 8 C. B., N. S. 666; 30 L. J., C. P. 68. A necessary and an unavoidable disclosure of an invention to others, if made in the course of mere experiments, is not such a ENGLISH PATENT CASES. 17 publication as will avoid the subsequent grant of a patent, though the same disclosure, if made in the course of a profitable use of an invention previously ascertained to be useful, would be a publication; but an experiment performed in the presence of others, which not only turns out to be successful, but actually beneficial in the particular instance, is not necessarily. a publica- tion, so as to constitute a gift of the invention to the world. Newall, in re, 4 C. B., N.S. 269; 4 Jur., N.S. 562; 27 L. Js5 Cub. 337. Prior knowledge to avoid a patent, must be knowledge equal to that required to be given by a patent; that is, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use. Hills v.. Evans, 31 L. J., Chance. 457. 8. Particular Instances of Inventors, new and old. A patent for the method of lessening the consumption of steam and fuel in fire-engines-is a subject of a patent. Hornblower v. Boulton, 8 T. R.g5. And see Boulton v. Bull, 2 H. BI. 463, 500. - If the shearing of cloth from list to list by shears is known, and the shearing it from end to end by means of rotatory cutters is also known, and a person constructs a machine to shear from list to list by means of rotatory cutters: this is a new invention. Lewis. v. Davis, 3 C. & P. 502—Tenterden, A patent for an improvement or improvements in the making or manufacturing of elastic goods or fabrics, and the production of cloth from cotton, flax, or other suitable material, not capable of felting, in which are interwoven elastic cords or strands of India rubber, coated or wound round with filamentous material, is properly the subject-matter of a patent. Cornish v. Keene, 4 Scott, 3373; 3 Bing. N. C. 570; 2 Hodges, 281. A patent was taken out for improvements in making buttons. The specification stated the improvement to consist in the substitution of a flexible material for metal shanks, and it described the mode in which this material might be fixed to the intended button, and made to project from it in the necessary condition for use, by the help of a metal collet or ring with teeth. Neither the construction of the button, nor the applica- 18 DIGEST OF tion of the flexible shank, was new; the use of the toothed ring, as described in the specification, was so, but this was not stated to be the subject-matter of the invention; and it appeared by the specification, that the effect produced by it might be brought about in other modes, which the patentee had also used: Held, that the patent was not maintainable, since the invention consisted only in combining two things which were not new, and the use of the toothed ring in forming the flexible shank, though new, was not the object of the invention, but only a mode, among others which was already Known, of carrying it into effect. Saunders v. Aston, 3 B. & Ad. 881. A patent for an improvement in the manufacture of iron by the application of anthracite or stone, coal and culm, combined with the using of the hot air blast in the smelting and manu- facture of iron from iron stone mine or ore, is a new invention. Crane v. Price, 5 Scott, N. R. 338; 4 M. & G. 586; 12 L. J., C. P. 81. V. obtained a patent for an improvement in packing hydraulic and other machines by means of a lining of soft metal, the effect of which was to make certain parts of the machines air and fluid tight. Subsequently to this, N. discovered that soft metal had the effect of diminishing friction, and of preventing the evolution of heat when applied to the surfaces in contact with machines in rapid motion, and subject to pressure; and he embodied the ap- plication of that discovery to machines in a patent: Held, that N.’s application of the soft metal differed essentially from that of V., and that N.’s patent was new. Newton v. Vaucher, 6 Exch. 859; 21 L. J., Exch. 305. A patent for certain improvements on, or additions to, the apparatus or parts constituting what are called braiding or plait- ing machines, whereby the inventor was enabled to produce by such machines elastic and non-elastic braids and other fabrics, with elastic or non-elastic strands, yarns, or threads introduced lengthwise of the fabric, and four or more in the same surface or plane, or mixtures of elastic or non-elastic fibres in combina- tion in the same fabric, is a novel invention. Nickles v. Ross, 8 C. B. 679. If a patent is taken out for blocks for paving with stone “or ENGLISH PATENT CASES. 19 any other suitable material,” this will include wood pavement, although no wood pavement was in actual use at the date of the patent, and although the inventor might not have had wood pavement in his contemplation. Adacnamara v. Hulse, Car. & M. 471—Abinger. A patent for an invention of improvements in cards for card- ing wool, cotton, silk, and other fibrous substances, and for taising the pile of woolen and other cloths by the application and adaptation of caoutchouc or India rubber, as a substitute for the fillets or sheets of leather, is a new invention, Walton v. Potter, 4 Scott, N. R. gt; 3 M. & G. 4r1. A patent was obtained for a new and improved process or manufacture of silk, and silk in combination with certain other fibrous substances. By the specification, the inventors declared the nature of the invention to consist of eight several and distinct parts or heads, the sixth being ‘the application of an improved process to the throstle machine, on the principle of the long- ratch, for the new and useful purpose of spinning silk waste ;” and the seventh, “certain improvements effected by them in the throstle machine, by which the utility in spinning silk waste was greatly augmented.” After describing the old process of converting silk waste into yarn, the specification proceeded to describe the novel process by which the plaintiffs produced their new or improved manufacture; and, referriug to drawings, con- tinued: “The annexed drawings, for the most part, represent the well-known spinning frame, called ‘a throstle,’ on the principle of the long-ratch, as implied in the spinning of flax; which machine, combined with the improvements we have applied to it, we apply to the new and useful purpose of spinning silk waste of long fibres, in combination with flax or wool.” And the specification concluded thus: ‘‘We desire it to be understood that we disclaim those parts of the process, or mechanism, which were or may have been, previous to the granting of our patient, well-known or in use for the same purposes ; but we restrict our claims to the eight several heads of invention mentioned in the early part of the specification, all of which we believe to be new, and of great public utility :” Held, that this was a claim either of a new invention, or a new 20 DIGEST OF combination of parts of the throstle machine; and the jury having found ‘‘that the invention was not new but an improved process, not a new combination,” that the defendant was entitled to the verdict upon these issues. Gibson v. Brand, 4 Scott, N. R. 844; 4 M. & G. 179. When a patent has been obtained for strengthening and polishing linen and cotton yarns by means of friction brushes, another patent can not be taken out for applying the same process to yarn of wool or hair, or to fabrics made of cotton, linen, silk, wool, or hair. Brook v. Aston, 5 Jur., N. S. 1025; 28 L. J., Q. B.175; 8 El. & BI. 478—Exch. Cham. A patent for improvements in looms for weaving by means of the clutch box is novel. Sellers v. Dickinson, 5 Exch. 3123; 20 L. J., Exch. 417. Previously to a patent being granted, gelatine was obtained by submitting large pieces of hides to the action of caustic alkali, or by reducing them to pulp in a paper machine, and employing blood to purify the product. The invention claimed consisted in cutting the hides into shavings, thin slices, or films, whereby the use of blood in the process of purification become unneces- sary. The specification did not state whether they were to be cut ‘vet or dry, or to what degree of thinness, or what was the minimum of heat they ought to be subjected to in the subsequent processes. It was proved that they might be cut either wet or dry, and that the thinner they were cut the better if the fibrine texture was preserved, and that the most satisfactory result would be obtained if no more heat was used than would dissolve the gelatine in the shortest period. The defendant cut the hides wet, and about twelve to the inch: Held, that the inven- tion was the subject of a patent, and that the defendant had infringed it. Wallington v. Dale, 7 Exch. 888; 23 L. J., Exch. 49. In 1844, G. obtained a patent for improvements in grinding wheat and other grain. He described as his invention ‘the forcing and distributing of atmospheric air from the eye or center of millstones, for the purpose of cooling the grain during the process of grinding.” This was effected by an air box placed below the millstones, into which the air was forced by ENGLISH PATENT CASES. 21 the rapid rotation of a fan or a blower, which caused a current of air perpendicular to the axis of the fan, and the air was con- ducted by a pipe through the eye of the lower stone to the center of the two stones, and there distributed between them by an apparatus provided with fans or arms. In 1846, B. obtained a patent ‘‘for improvements in manufacturing wheat and other grain into meal and flour.” His invention consisted of the applica- tion of ventilating vanes or screws at the center of the stones for supplying the air between the grinding surfaces; a portable ventilating machine, blowing by a screw vane, which caused a current of air parallel to the axis of the vane, was attached externally to the eye of the upper millstone, the screw vane being set in rapid motion, the air was compelled to pass through the eye into the center of the two stones, and so find its way out between them. In 1851, C. obtained a patent for improve- ments in grinding wheat, and his plan was to remove from the center of both stones a large circular portion of each, and in this space, opposite to the separation of the two stones, to place a fan or blower, by the rapid rotation of which a centrifugal motion was given to the air, and it was driven between the stones: Held, that C.’s invention was no infringement of B.’s, but that each was a new method of accomplishing a well-known object, viz., the cooling grinding substances by the common principle of obtaining a current of air by a rotating vane. Bovill v. Pimm, 11 Exch. 718. See Boville v. Keyworth, 7 El. & BI. 7255 3 Jur., N.S. 817. The plaintiff took out a patent for “improvement in the manufacture of candles, and in apparatus for applying light.” In his specification he claimed, first, the mode of manufacturing candles by the application of peculiarly-formed plaited wicks ; secondly, the mode of manufacturing candles by the application of two or more plaited wicks so disposed that the ends always turned outward; and thirdly, the mode of applying lenses to lamps, in order to concentrate or conduct a portion or portions of the rays of light to a distance; the plaintiff afterward entered a disclaimer as to the first and third parts of his invention, and he sued the defendant for an infringement of the second part. At the trial the plaintiff produced a candle purchased of the defendant, the wicks of which were so plaited that the ends 22 DIGEST OF always turned outward: Held, that the patent was not for the candle itself, but for the mode of manufacturing it, and that the mere production of a candle made by the defendant was no evidence of an infringement of the plaintiff's patent. Palmer v. ' Wagstaff, 9 Exch. 494; 2 C. L. R. 1052; 23 L. J., Exch. 217. A patentee of a sewing machine in his specification claimed “the application of a shuttle in combination with a needle, as shown in sheet 1, for forming and sewing loops of thread or other substance for the purpose of producing stitches either to unite or ornament fabrics, whatever may be the means employed for working such shuttle and needle when employed together :” Held, that this claim was not confined to the single application of a shuttle in combination with a needle, as shown in sheet 1, but extended generally to the application of a shuttle with a needle for the attaining the object therein stated. Thomas v. Foxwell, § Jur., N. S. 37—Q. B. Affirmed on appeal, 8 Jur., N. 8. 271—Exch. Cham. The following inventions were held void for want of novelty: Turning-tables for railway purposes. Holmes v. London ana Northwestern Railroad Company, 12 C. B. 831; 22 L. J., C. P. 58; 17 Jur. 304. Manufacture of gas direct from seeds, leaves, flowers, branches, nuts, fruit, and other substances containing oil, or oily, or resinous matter, similar to K.’s previous patent. Booth v. Kennard, 2 H. & N. 84; 26 L. J., Exch. 305—Exch. Cham. Though a valid subject of a patent if novel. 8S. C. in Exch., 1H. & N. 527; 3 Jur, N.S. 21; 26 L. J., Exch. 23. Agricultural reaping machines. AL Cormick v. Gray, 7 H. & N. 25; 31 L. J., Exch. 42; 9 W. R. 809; 4L. T., N.S. 832. Fishes and fish-joint for connecting the ends of rails on rail- ways. Harwood v. Great Northern Railway Company, 11 H. L. Cas. 654; 35 L. J., Q. B. 27; 12 L. T., N.S. 771; though a good subject-matter for a patent. S§. C. in Q, B., 6 Jur., N. S. 993; 29 L. J., Q B. 193. Betts’ manufacture of capsules, in the Exchequer Chamber, ENGLISH PATENT CASES.’ 23 held void on the ground of D.’s previous patent of Albion metal for facings of cisterns, etc. Betts v. Menzies, 30 L. J., Q. B. 81; 6 Jur., N.S. 1290; but on appeal to Dom. Proc., Betts’ Patent, held to be valid. Betts v. Menzies, 10 H. L. Cas. 117; g Jur., N.S. 29. II. LETTERS PATENT. {. Grant. On behalf of Foreigners.|—A patent granted to a British sub- ject in his own name for an invention communicated to him by a foreigner, the subject of a state in amity with this country, is not void, although such patent is in truth taken out and held by the grantee in trust for such foreigner. Beard v. Egerton, 3 C. B. 973 1© Jur. 643; 15 L, J.C. P. 270. In such case, the grantee is the true and first inventor within this realm, within 21 Jac. 31, ¢. 3. Jb. Master and Servant.|—If a servant, while in the employ of his master, makes an invention, that invention belongs to the servant, and not to the master. Bloxam v. Elsee,1 C. & P. 558; R. & M. 187—Abbott. Where a master and his foreman both invented certain im- provements, for which the master sought letters patent: Held, that they ought only to be granted on the terms of their being vested in trustees for the master andthe foreman. Russell, in re, 2 De G., M. & G. 130. Where a servant filed a provisional specification for an in- vention, after which the master filed a provisional specification for a similar invention, and subsequently filed a complete speci- fication, and obtained letters patent: Held, that, under these circumstances, the great seal might be affixed to the letters patent for the servant’s invention, and that the letters patent might bear the date of his provisional specification. Ex parte Scott and Young, 6 L. R., Chance. Ap. 274--C. To two or more Persons jointly. |—When letters patent are granted to two or more persons, any one of them mav use the invention 24 DIGEST OF for his own benefit without the consent of the others. A4athers v. Green, 11 Jur., N. 8. 8453; 35 L. J., Chanc. 1; 14 W. R. 173 13 L. T., N. &. 420—C. Date and Duration.|—Original letters patent for a term of fourteen years were dated on the 26th February, 1825, and renewed letters patent were dated on the 26th of February, 1839: Held, that the day of the date must be reckoned in- clusively, and that the renewed letters patent were not granted after the original letters patent had expired. Russell v. Ledsam, 14. L. J., Exch. 353; 14 M. & W. 574. Sealing.|—Letters patent were sealed in a case where the evi- dence showed great similarity between the alleged invention and one for which a patent was already in force. Tolson’s Patent, 6 De G., M. & G. 422. Sealing letters patent after time for provisional protection had expired under 15 and 16 Vict., c. 83, ss. 19, 20. Mackintosh’s Patent, in re, 2 Jur., N. 8. 1242—C. The crown can at any time before the great seal is affixed, upon a proper case being made out, countermand the warrant. Schlumberger, in re, 9 Moore, P. C.C. 1. Unless a patent is clearly bad, the lord chancellor will not refuse to seal it, as the effect of such refusal, if erroneous, would be irremediable, whereas the sealing of a bad patent leaves every one at liberty to dispute it. Spence, in re, 3 De G. & J. 523. Where there was but one affidavit distinctly swearing to the public use and sale of an alleged invention prior to the date of the application for a patent, the great seal was ordered to be affixed to the patent. Tolbausen’s Patent, in re, 14 W. R. 551—C. The time within which the application for the warrant and for the letters patent ought to be made under the rules of the | patent commissioners extended, where the delay was small and accidental. Hersee, in re, 1 L. R., Chanc. 518; 14 L. T., N. S. 842. The lord chancellor, on an application for sealing a patent, will not interfere with the decision of the law officer of the ENGLISH PATENT CASES, 25 crown, unless in a case of fraud, or of surprise, or of some material fact having come to the knowledge of the party since the case was before the law officer. Vincent’s Patent, in re, 2 L. R., Chance. 3413 15 W. R. 524. Where the law officer has reported that part of an invention for which a patent is sought is identical with part of an inven- tion which is the subject of an existing patent, a second patent will not, except under special circumstances, be granted for that part, although the validity of the first patent is disputed. Ex parte Manceaux, 6 L. R., Chance. App. 272—C. When the sealing of a patent is opposed on the ground that the invention is similar to one which is the subject of an exist- ing patent, a reference will be made to the law officer whether, having regard to the prior patent, the seal ought to be affixed to the patent as applied for, the opponent paying the costs of the hearing, unless there has been fraud on the part of the appli- cant. Manceaux, ex parte, 5 L. R., Chanc. 518; 18 W. R, 854. ‘ Letters patent will not be sealed where a prior patent was granted for the same invention. Manceaux’s Patent, in re, 18 W. R. 1184—C. Where the granting of a patent was opposed by the owner of a similar patent, on the ground that the application was, under the circumstances, a breach of good faith on the part of the applicant, the lord chancellor directed the patent to issue upon certain terms. Daine’s Patent, in re, 26 L. J., Chanc. 298—C. Notice of objections was filed to sealing of letters patent, and afterward withdrawn. On petition, the costs occasioned by such objections were ordered to be paid by the person who had filed them. Cybley’s Patent, in re, 8 Jur.. N.S. 106; 31 L. J., Chanc. 333; 5 L. T., N. 8. 387—C. Where a petition to have the great seal affixed to a patent had been filed, and the respondents served with notice two months before the first day of Michaelmas term, for which day the petition was answered, and the respondents only filed affida- vits on the morning of that day: Held, that they could not be 26 DIGEST OF read, and the patent was ordered to be sealed. J2Kean’s Patent, in re, 1 De G. F. & J.2; 8W. R. 13.1 L. T.,N. 5. 1g. L. and W. were joint patentees of an invention for propelling vessels, and whilst-engaged in making experiments with regard to it, an accident happened, which appeared to have suggested to each an improvement upon the method previously adopted. They communicated their ideas to each other, but neither took any steps to secure the benefit of the invention for two years, when L. applied for a patent, against the sealing of which W. entered a caveat, on the ground that he (W.) was the first in- ventor. The evidence on this point being conflicting: Held, that L., having first applied, was entitled to have his patent sealed, though possibly W. might be able to get it repealed upon scire facias. Lowe’s Patent, in re, 25 L. J., Chanc. 454 —C, Opposing Grant.|—Leave was given to oppose the granting of letters patent, notwithstanding the time for entering an opposi- tion had expired, the reason for the delay in entering such opposition being accounted for. Brennand’s Patent,inre,7 Jur., N.S. 690; 4 L. T., N. 5. 456—C. A party who has not opposed the sealing of a patent before the law officer of the crown, will not be allowed to oppose before the lord chancellor. Aditchell’s Patent, in re, 2 L.R., Chanc. 343—C. A person may give notice of objection, and oppose the seal- ing of a patent before the lord chancellor, without previously applying to the court for leave to enter opposition. Vincent’s Patent, in re, 2 L. R., Chance. 341; 15 W. R. 524—C. Entering Caveats.|—A party who had lodged an unsuccessful caveat against the granting of a patent, ordered to pay to the patentee the taxed costs occasioned by the caveat. Cutler’s Patent, in re, 4 Mylne & Cr. 510. , The effect of a caveat lodged at the chambers of the attorney- general is merely to entitle the party lodging it to notice. Reg. v. Cutler, 3 C. & K. 215—Denman. ENGLISH PATENT CASES. 27 Where a caveat was lodged before the great seal was affixed to a patent, the lord chancellor declined to enter into the merits of the opposition, but referred the matter back to the attorney- general. Fawcett’s Patent, in re, 2 De G., M. & G. 439. No caveat against the sealing of letters patent will be entered without the express leave of the lord chancellor. Heathorn’s Patent, in re, 10 Jur., N.S. 810; 12 W. R. 1068; 10 L. T., N. 8. 802. 2. Amendment. An application for amendment of a patent, granted in 1896, by rectifying an error in the spelling of the name of the patentee was refused on the ground of lapse of time. Blamoud, in re, 3 L. T., N.S. 800—C. 3. Stamp Duty. The 16 and 17 Vict., c. 5, which substitutes stamp duties on patents for fees, by s. 2, makes patents, granted under 1§ and 16 Vict., c. 83, subject to avoidance on non-payment of certain stamp duties within certain periods, and its effect is to give the patents by installments, first for three years, on the payment of 250. stamp duty, then four for three years more on payment of Sol. within the three years, and then for the full period on payment of 100). within seven years from the date of the grant. By a deed, an inventor agreed with the defendant that he should do all acts necessary, except the payment of money, for procuring and perfecting letters patent, and should, immediately after the same were procured, execute an assignment to the defendant of one-third share in the patent, and the defendant agreed to pay all fees and disbursements which might be neces- sary for procuring the letters patent, enrolling the specification, and otherwise perfecting the same: Held, that the assignment by the inventor was the entire consideration for the defendant’s undertaking to pay the fees and disbursements, and a condition precedent, and that without having executed such an assignment he could not sue the defendant for not paying the 50/. necessary to be paid within three years. Aii/l v. MZount, 18 C. B. 72; 25 L. J., C. P. 190. 28 DIGEST OF The day of the date of the letters patent is excluded, and the _ three years do not expire until twelve o’clock at night of the anniversary of the day on which the letters patent are granted. Williams vy. Nash, § Jur., N. 8. 696; 28 L. J., Chanc. 886; 27 Beav. 93. 4. Reservation of Right of User by the Crown, A grant of letters patent to a subject for an invention, does not exclude the crown from using the invention without the license of the patentee. Feathers v. Reg., 12 L. T.. N.5.1143 6 B. & §. 257; 30 L. J., Q. B. 200. The crown is not responsible, by way of petition of right, for an infringement of a patent by the lords of the admiralty, but the remedy is by action against the wrong-doers. Jb. A patent for the exclusive use of an improvement in the in- vention of anchors, contained a proviso for avoiding the patent, if the patentee should not supply for his majesty’s service all such articles of the invention as should be required, on such reasonable terms as should be settled by the lords of the admi- ralty. The latter used the invention, but did not take the articles from the patentee. The court refused to issue a manda- mus to them, to settle the terms according tothe patent. Pering, ex parte, 4 A. & E.949;6N. & M. 472. 5. Scotch. It is essential to the validity of a Scotch patent that the machinery or improvement for which it is granted should be new as well in England as in Scotland. Brown v. Annandale, 8 C. & F. 4373 8. P. Robinson’s Patent, in re, 5 Moore, P. C. C. 65. 6. Foreign. Grant in England.|—The 15 and 16 Vict., c. 83, s. 25, applies where a foreign patent is de facto granted, though it is after- ward canceled ab initio. Daw v. Eley, 36 L. J., Chanc. 482; 3 L. R., Eq. 496; 15 L. T., N.S. 559—V.-C. W. ENGLISH PATENT CASES. 29 7. Expunging Entries in Registry of Proprietorshlp. By 15 and 16 Vict., c. 83, s. 38, if any person shall deem him- self aggrieved by any entry made in the register of proprietors, it shall be lawful for such person to apply by motion to the master of the rolls, or to any of the courts of common law at Westminster in term time, by summons to a judge of any of the said courts in vaca- tion, for an order that such entry may be expunged, vacated, or varied ; and upon any such application, the master of the rolls, or such court or judge, may make such order for expunging, vacating, or varying such entry, and as to the costs of such application, as to the master of the rolls, or to the court or judge, may seem fit, and the officer having the care and custody of the register, on the production to him of any such order, shall expunge, vacate, or vary the same, according to the requisitions of such order. ‘Under this provision, the court can expunge an entry fraud- ulently made; it can direct any facts relating to the proprietor- ship to be inserted on the register, but not the legal inferences to be drawn from them. Adorey, in re, 25 Beav. 581. A patentee assigned half a patent to A., and afterward he assigned the whole to B. by a deed, reciting that he had already granted a license to work and use it to A. B.’s assignment was first registered: Held, that B. had constructive notice of A.’s rights, and an entry was ordered to be made in the register that the license referred to in B.’s assignment was the deed of assign- ment to A. subsequently entered. J. A patentee, in 1853, assigned his patent, but the assignees omitted to register it. Afterward, in August, 1855, the pat- entee assigned the patent to another person, who registered it on the same day. The first assignees registered their assignment a week afterward. The court, in 1857, on the motion of the first assignees, ordered the register of the second assignment to be expunged, and with costs. Green’s Patent, in re, 24 Beav. 145. The assignee of a patent may maintain a suit against the as- signor and subsequent licensees from the assignor with notice of the assignment, to restrain them from using the patent, although - 30 DIGEST OF at the time of the institution of the suit the assignment has not been registered. Hassell v. Wright, 10 L. R. Eq. 509; 18 W. R. 821—V.-C. M. Semble, that registration of the assignment of a patent relates ‘back to the date of the assignment so as to entitle the assignee to maintain a suit to restrain an infringement instituted between the dates of the assignment and the registration. Jb. The court will, on motion of the persons aggrieved, correct an entry in the register of proprietors of patents, which purports to affect the rights of persons not parties to the deed registered. Hiorsely and Knighton’s Patent, in re, 39 L. J., Chanc. 157—R. One of two joint patentees by deed assigned his interest in the patent to a third person, and released to him all the rights of action against him of both the patentees ; and the. deed was set out completely on the register: Held, that the other joint pat- entee was entitled to have the entry struck out. Jd. 8. Penalty for imitating or using Name or Mark of Patentee. In an action for a penalty under 5 and 6 Will. 4, c. 83, s. 7, for putting on an article made according to a patent the words “K, & G. Patent Elastic,” without the license of the patentee, itis no defense that the invention was not a new manufacture. Myers v. Baker, 3 H. & N. 802; 28 L. J., Exch. 90; 7 W. R. 66. But it is necessary to prove that such words did imitate, and were so put on with a view of imitating the mark of the pat- entee. Jb. 9. Assignee. It is no ground of objection to the title of an assignee of a patent, that the assignors, the executors of the grantee, omitted to register the probate until after the date of the assignment; though possibly it might be an obstacle to the maintenance of an action by the assignee for an infringement, if commenced before the registration of the probate. E/wood v. Christy, 17 C.B., N. S. 754; 34 L. J., C. P. 130; 13 W. R. 498; 11 L. T., N.S. 342; 10 Jur., N.S. 1079. ENGLISH PATENT CASES 31 An assignee of a patent may maintain an action for an in-: fringement, even though he has acquired the right by assign- ment of two separate moieties, and the party sued is the origi- nal grantee. Walton vy. Lavater, 8 C. B., N.S. 1623; 29 L. J., C. P. 275. An action is maintainable although there has been no infringe- ment since the defendant has received notice that the entire in- terest in the patent has become vested in the assignee. 0. It is competent to an assignee of a separate and distinct por- tion of a patent to sue for an infringement of that part, without joining one who has an interest in another part; the damages to be recovered in the action accruing to the former alone. Dun- nicliff v. Mallet, 7 C. B., N.S. 209; 6 Jur., N. 8. 252, 29 L. J.C. P. 70; 8 W. R. 260. To a declaration for the infringement of a patent, brought by an alleged assignee (by, deed) of the patent, the defendant pleaded, by denying the assignment modo et forma. On the trial, it appeared that an instrument of assignment had been executed by the patentee, but that it had not been regis tered under 15 and 16 Vict. c. 83: Held, that as, by s. 35, the original patentee is, until the entry of the registration, to be deemed and taken to be the sole and exclusive proprietor of the patent, the defendant was entitled to a verdict, although the ob- jection was not specified in the notice of objections delivered by him. Chollett v. Hoffman, 7 El. & Bl. 686; 3 Jur., N. S. 935; 26 L. J., QO. B. 249. 10. When Void. A patent being granted upon a specification that the machine was capable of performing all the operations necessary to the perfection of the proposed invention; and it appearing that a second patent was taken out for improvements necessary to the efficient operation of the original machine: Held, that the con- sideration of the first patent having failed, both patents were void. Blxam vy. Elsee,g D. & R. 215; 6 B. & C. 169; 1 C. & P. 558; R. & M. 187. 32 DIGEST OF If it appears that the patent was granted for a different thing from that mentioned in the specification, it is void. Rex v. Wheeler, 2 B. & C. 345. Where one part of an invention is not new, the patent is void as to the whole. Kay v. Marshall, 1 West, 682; 5 Jur. 1028; 8 C, & F. 245. A patent granted to A. for improvements in the construction of racks and pulleys for window-blinds and other useful purposes, besides claiming a mode of making the frames by constructing them in a particular manner of drawn open metal tubes, claimed a mode of fixing the pulley in the frame by turning the knob of the spindle upon which the pulley revolved, and thereby of screwing a piece of metal, made to slide’within the frame tight to the edge of the frame, by which means the pulley spindle became firmly fixed to the frame. By a patent previously granted to B., the same object was effected by a similar method, but with the addition merely of a piece of thin metal called an escutcheon, which worked outside the frame; but the specification stated that the pulleys might be made without the escutcheon: Held, that the two patents were substantially the same as to one of the things claimed, and, therefore, that A.’s patent was void. Dobbs v. Penn, 3 Exch. 427. III. SPECIFICATION, {. Provisional. (15 and 16 Vict. c. 83, ss. 6, 8, 9, 10, IT, 13, 14.) A provisional specification, if allowed by the law officer of the crown, can not be impeached as being too general. Penn v. Bibby, 2 L.R., Chane. 1275; 36 L. J., Chane. 455; 15 W. R. 208; 15 L. T., N.S. 399—C. The office of the provisional specification is only to describe, generally and fairly, the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out, as in the complete specification. Newall, in re, 4. C. B., N.S. 269; 4 Jur., N.S.562; 27L. J., C. P. 237. Where a provisional specification was filed on the 17th of ENGLISH PATENT CASES, 33 March, and afterward abandoned by the inventor, who delivered another specification for the same invention on the roth of April, in respect of which a patent was granted to him on the 12th of October, but dated as of the roth of April: Held, that there had not been a dedication of the invention tothe public by the abandonment of the first provisional specification, but that the patent was valid by 15 and 16 Vict. c. 83, s. 24. Oxley v. Holden, 8 C. B., N.S. 666; 30 L. J., C.P.68; 8 W. R. 626; 2L. T., N.S. 464. 2. Variance between Provisional and Complete Specification. The complete specification must not claim anything different from that which is included in the provisional specification, but it need not extend to everything so included. Penn v. Bibby, 2 L. R., Chane. 127; 36 L. J., Chance. 455; 14 W.R. 208; 15 L. T., N. 5. 399—C. . The provisional specification of a patent for an improvement in the bearings and bushes for the shafts of screw and submerged propellers described the invention as consisting in employing wood in the construction of such bearings and bushes. The complete specification, after describing the mode in which the wood was to be used, claimed the employing of wood in the con- struction of bearings and bushes ‘‘as therein described :’”’ Held, this was no such variation between the provisional and complete specification as invalidated the patent. Jd. The provisional specification of a patent for sewing machines, claimed, amongst other improvements, that a certain instrument which moved the work, ‘‘ or another acting therewith,” acted to bold the work during the insertion of the needle, while the com- plete specification appeared to describe only one instrument as moving and holding the work: Held, that such a variance would not invalidate the patent. Thomas v. Welsh, 1 L. R., C. P. 192; 12 Jur., N.S. 316; 35 L. J., C. P. 200. 34 DIGEST OF 3. Construction and Interpretation. The words of a specification are to be construed according to their ordinary and proper meaning unless there is something in the context (which may be explained by evidence), to show that a different construction ought to be made. lliott v. Turner, 2C. B. 446; 15 L.J., C. P. 49. In an action upon a deed of license to use a patent for making buttons, the issue being, whether buttons made by the defend- ant were made under the license, the specification stated the in- vention to be, the application of such fabrics only wherein the ground is produced by a warp of soft or organzine silk, such as is used in weaving satin; and claimed the application of such fabrics to the covering of buttons, as have the ground woven with soft or organzine silk for the warp: Held, that the proper meaning of the word “or ” being disjunctive, it ought to be so construed, unless there was anything in the context, or the facts proved, to give it a different meaning; and that the judge ought not to have told the jury absolutely, that unless the buttons were made of organzine silk, they were not within the patent ; but that the words “soft or organzine”’ were capable of being construed to mean the same thing, if the jury was satisfied that there was only one description of silk, viz: organzine used for weaving satin at the date of the patent. Jd. The construction of a specification is a question of law for the court, and not fora jury. Bovill y. Pimm, 11 Exch. 718. Although the construction of a specification belongs to the court, the explanation of the words used therein, or of technical terms of art, is matter of fact upon which it is the province of a jury to decide. Hills v. Evans, 8 Jur., N.S. 525; 31 L. J., Chanc. 457; 6 L. T., N. S. go—C. Where two specifications of different dates, relating to the same external objects, contain terms of art, though the expres- sions used in both are identical, their construction can not be declared to be the same without the meaning and use of the terms of art employed therein being first ascertained by evidence, and being shown to be the same at the date of both the specifi- ENGLISH PATENT CASES. 35 cations. Betts v. Menzies, 10 H. L. Cas. 117; 31 L. J., Q. B. 233; 11 W. R.1; 7 L. T., N.S. 110; g Jur., N. S. 29. An antecedent specification, declaring a principle, but not dis- closing a practical mode of obtaining a result, is not to be held to be an anticipation of a subsequent specification relating to the same matter, which does disclose a practicable mode of produc- ing the result. If the latter specification alone supplies that practicable mode, it forms the groundwork for a valid pat- ent. Jb. A barren general description, probably containing some sug- gested information, or involving some speculative theory, can not be considered as anticipating a subsequent specification of invention which involves a practical truth, which is productive of beneficial results, unless you ascertain that the antecedent publication involves the same amount of practical and useful information. Jd. In construing a specification, it is not competent to an in- ventor to pray in aid the provisional specification, in order to explain or enlarge the meaning of the complete specification. Mackelcan v. Rennie. 13 C. B., N.S. 52. Though the construction of a patent ora specification is ordi- narily for the judge, yet where a specification mentioned “ the precipitated or hydrated oxides of iron,” there was (on the issue of novelty) a prior patent proved, the specification of which mentioned carbonate of iron, and the scientific evidence showed that real carbonate of iron was so difficult to be preserved, that it was not commonly sold in the shops (though it existed as a chemical substance), and what was sold for it would be, in fact, a hydrate, through absorption, but that carbonate would not be understood chemically as meaning hydrate. ‘The judge having ruled that the specification was to be construed commercially, not scientifically, that carbonate commercially meant the “ hy- drate,” and that on the issue of novelty the plaintiff must be nonsuited, the court, after great doubt, set aside the nonsuit, and granted a new trial. Hills v. London Gaslight Company, 27 L. J., Exch. 60. 36 DIGEST OF The rules governing the construction of specifications are the ordinary rules for the interpretation of written instruments ; but, unless a specification particularly describes the nature of an in- vention, and in what manner the same is to be performed, in such a manner as to be intelligible to a workman of ordinary knowledge, the grant of the letters patent is void. Stmpson v. Fidlliday, 13 W. R. 577; 12 L. T., N. 8. gg—C. The specification of a patent instrument, called the Miner’s Safety Fuse, after describing the manner in which the case of the instrument was to be made, proceeded thus: ‘ By means whereof I embrace in the center of my fuse, in a continuous line throughout its whole length, a small portion or compressed cylinder or rod of gunpowder, or other proper combustible mat- ter, prepared in the usual pyrotechnical manner of the firework for the discharge of ordnance.” In an action for infringing the patent, at the trial, it was objected that the patentee had not shown that any other material but common gunpowder had ever been used in the fuse, or, if introduced, would answer the pur- pose: Held, first, that the question as to the sufficiency of the specification was for the jury. Bickford v. Skewes, 1 G. & D. 736; 1 Q. B. 938; 6 Jur. 167. Held, secondly, that the language of the specification was not to be astutely construed so as to overthrow the patent, and that it was for the defendant to make out his objection clearly. Jd. Held, thirdly, that the former part of the objection, that any other material but common gunpowder had ever been used in the fuse, was immaterial; because, although other materials not specified, but still within the description given, would answer the purpose, no ambiguity was occasioned, nor was the difficulty of hereafter making the instrument increased by the introduction of the terms which imported that the patentee himself had ever used other materials than gunpowder in the construction of the instrument. Jd. ENGLISH PATENT CASES. 37 4, Comparing with Others, In the comparison of two specifications, each of which is filled with terms of art, and with the description of technical pro- cesses, it is the duty of the court to give the legal construction, but the work of comparing the two specifications is for the jury. Hills v. Evans, 8 Jur., N.S. 5253 31 L. J., Chance. 457; 6 L. T., N.S. go—C. D. in 1804, took out a patent for making ‘a new article of trade, which I denominate ‘Albion metal,’ and which I apply”’ to various purposes, such as the facings of cisterns, coffin furni- ture, “and other things which are required to be made of a flexi- ble” substance. D. stated in his specification the principle of his invention, and that he proposed to unite lead and tin by pressure; but he did not state the exact proportions of the two metals, nor give with precision the mode by which they were to be combined. It did not appear that the patent had been acted on. In 1849, B. took out a patent for “Sa new manufacture of capsules, and of a material to be employed therein, and for other purposes.” The new material was to be composed of lead and tin combined. B. specified the proportions of the two metals, gave the details of the mode of working in order to combine them, and did not claim the production of the new material ex- cept according to the directions he had given for its production: Held, that this was not a case in which the court, looking at the two instruments, could determine the validity of the latter patent as a matter of construction only; that evidence must be resorted to; and that then it was apparent that the earlier patent only stated a principle, and that the latter patent, as it did not claim the discovery of the principle, but only a new mode of carrying it into effect, was valid. Betts v. Menzies, 10 H. L. Cas. 117; g Jur. N.S. 29; 31 L. J., Q, B. 233; 11 W. R15; 7 LT, N. 5. 110. The question of novelty of invention, when raised by the com- parison of two specifications, is a question of law for the court, if the two specifications do not contain expressions of art and commerce, the meaning of which must be explained by evidence. 38 DIGEST OF Thomas v. Foxwell, 5 Jur., N. S. 37—Q. B. Affirmed on ap- peal, 8 Jur., N.S. 271. In an action for an alleged infringement of a patent where the defense is that the supposed invention is not new, the judge may compare the plaintiff’s specification with the specification of a previous patent, and may on such comparison, direct the jury to find a verdict. Bush v. Fox (in error), 5 H. L. Cas. 707; 2 Jur., N.S. 1029; 25 L. J., Exch. 251. The specification of a patent for improvements in the manu- facture of gas described the invention to consist in the direct use of seeds, leaves, flowers, and beech nuts, fruit and other sub- stances, and matters containing oil, or oily and resinous matter, and stated that the mode of using the seed and constructing the apparatus might be the same as the apparatus used in the mode of making gas from coal; but that the inventor preferred placing the seed ina red-hot retort. The claim was “for making gas direct from seeds and matters therein named, for practical illumi- nation or other useful purposes, instead of making it from oils, resins, or gums previously extracted from such substances.” On the trial of an action for an infringement of this patent, upon proof on the part of the defendant that a patent had been pre- viously granted to a third person for improvements in artificial light, the inventor proposing by his specification to use residuary matters obtained in the manufacture of fatty substances, and also the residium after the oil had been pressed from the seeds, such as oil-cake, and also beech nuts, or mast, cocoa nuts, and all others abounding in oil. The judge directed the jury to find a verdict for the defendant: Held, that the direction was right, the two patents being substantially the same, and it being the province of the court to take notice of the identity apparent upon the written document, and the consequent want of novelty, and that it was not necessary to submit the question of novelty to the jury. Booth v. Kennard, 26 L. J., Exch. 305; 2 H. & N. 84. ENGLISH PATENT CASES. 39 5. Correction by Disclaimer. A disclaimer is not essential to a specification. Lister v. Leather, 4 Jur., N.S. 947; 27 L. J., Q. B. 295 Exch. Cham. A count in scire facias to repeal a patent for improvements in instruments used for writing and marking, and in the construction of inkstands, contained suggestions of want of novelty and utility in a certain part of the invention. The objections filed with the declaration, pointed out the sixth claim in the specification as wanting novelty, and being useless. After issue joined, the defendant filed a disclaimer, of the fifth, sixth, seventh, and eighth claims mentioned in the specification, These claims related to pens and to instruments used for marking with a stamp. Those which remained untouched by the disclaimer were for improvements in penholders and pencil-cases, and in the construction of inkstands: Held, that the title of the letters patent was satisfied by the spécification as amended by the dis- claimer. Reg. v. Mill, 10 C. B. 379; 1 L. M. & P. 695; 15 Jur. 59; 20 L. J., C. P. 16. If a specification of a patent comprises what is in truth an impracticable generality, it is not competent for the inventor to rectify the defect by means of a disclaimer purporting to alter the specification into a grant of a patent for a specific process, though it is comprised within the general terms of the specification, but could not be discovered to be there without going through the same course of experiment which led -to the discovery of the specific process in the disclaimer. Ralston v. Smith, 11 C. B., N. S. 471; 8 Jur, N. S. 100; 31 L. J., C. P. 102—Exch. Cham. §. took out a patent for an improvement in machinery used for roving cotton. His specification appeared to claim the discovery of the application of the principle of centrifugal force for such a purpose, but he filed a disclaimer, declaring that he intended to claim only the application of centrifugal force in the particular manner described in the specification : Held, that taking these two instruments together they sustained the patent. Seed v. Hig- gins, 8 H. L. Cas. 550; 30 L. J., Q. B. 314. 40 DIGEST OF The particular manner described was by the use of “a weight.” The defendant employed a machine similar in many respects, but though using weight, or pressure occasioned by weight, as a force, not using a weight:” Held, that this did not amount to an infringement of the patent. Jb. 6. Explanatory by Drawings. In the specification of an improved instrument, it is essential to point out precisely what is new and what is old; and it is not sufficient to give a general description of the construction of the instrument without making such distinction, although a plate is annexed containing a detached and a separate representation of the parts in which the improvement consists. Adacfarlane v. Price, 1 Stark. 199—Ellenborough. An inventor of a machine is not tied down to make such a specification as by words only would enable a skillful mechanic to make the machine, but he is allowed to callin aid the draw- ings which he may annex to the specification; and if, by a com- parison of the words and the drawings, the one will explain the other sufficiently to enable a skillful workman to perform the work, such a specification is sufficient. Bloxam v. Elsee, 1 C. & P. 558; R. & M. 187; 9 D. & R. 215; 6 B. & C. 169. When a specification in the first instance describes the inven- tion in too general terms, but afterward, in describing the method of performing the invention, refers to figures in drawings annexed thereto, and the claim made is for the manufacture of the inven- tion described with reference to those figures, the specification is sufficient. Daw v. Eley, 14 W. R. 126; 13 L. T., N.S. 399—V.-C. W. 7. General Sufficiency. The specification of an invention, which consists in the use of known materials in new proportions, is not necessarily bad for uncertainty, though the patentee does not limit himself to the proportions recommended. Patent Type Founding Company v. Richard, 1 Johnson, 381; 6 Jur., N. S. 39. In a patent for an improved arrangement, or for a new com- bination of machinery, the specification must describe the in- ENGLISH PATENT CASES, 41 provement and define the novelty otherwise, and in a more specific form, than by the general description of the entire machine, it being part of the condition of a patent that the specification shall particularly describe and ascertainthe invention. Foxwell v. Bostock, 12 W. R. 723; 10 L. T., N. S. 144—C. A patent, when the specification is insufficient, is void. Jb. A patent is a patent for a combination, if a combination is expressly stated in the specification to be a part of the invention, although the combination is not expressly claimed; for a claim is not an essential part of the specification, or necessary for the protection of the invention, nor is it necessary to disclaim those matters which manifestly form no part of the invention. Lister v. Leather, 27 L. J., Q. B. 295; 4 Jur., N.S. 947; 8 El. & BI. 1004—Exch, Cham. A patentee, describing his invention in the specification, is to be taken to claim as part of his invention all that he describes as the means by which it is to be carried into effect, unless he clearly expresses a contrary intention. Tetley v. Easton, 2 C.B., N. 5. 706; 26 L. J., C. P. 269. A specification, when construed grammatically, claimed to effect a particular object by two processes, one of which would not effect the object, but evidence showed that no skilled practi- cal workman would be misled, as such a one would know that the one process would be ineffectual, and would adopt the other: Held, that the specification was defective, and the patent void. Simpson v. Holliday, 1 L. R., H. L. 3153 35 L. J., Chanc. 811. The specification was as follows: “I mix aniline with dry arsenic acid, and allow the mixture to stand for some time, or I accelerate the operation by heating it to or near to its boil- ing point:” Held, that the word Sor” could not be read as “and.” Jb, The description, ‘a roller of hard metal or other suitable ma- terial,” is not too uncertain, on account of the use of the words “Cor other suitable material ;”” such words would mean any ma- terial equally sufficient for the purpose with hard metal. Raiston v. Seth, 1¥ H, Io, Cas. 9233 35 L, J., C. P.4g5 20 C. B., N.S. 28; 13 L. T., N.S. 1. 42 DIGEST OF 8. Title of Invention. The title described a patent to be for a certain invention of “Ca new or an improved method of obtaining the spontaneous reproduction of all the images received in the focus of the camera- obscura,” is sufficiently precise and certain. Beara v. Egerton, 3 C. B. 973; 10 Jur. 643; 15 L. J., C. P. 270. The title of a patent must (though not as minutely as the specification) describe the nature of the invention; and the pat- ent is void if the title is so generally worded as to be capable of comprising, not only the particular invention, but improvements not contemplated in it: as where the patent was taken out for improvements in carriages, and the invention was, in fact, an improvement in German shutters, which were used only in some kinds of carriages. Cook v. Pearce, 8 Q. B. 1044; 8 Jur. 449; 13 L. J., Q. B. 189—Exch. Cham. Where the title is not inconsistent with the specification, and no fraud is practiced on the crown or the subject, it is not a fatal objection that the title is so general as to be capable of com- prising a different invention from that for which the patent is claimed. Jb. The title need not give any idea of the invention; it is suffi- cient if the specification is consistent with it. Neslson v. Harford, 8 M. & W. 806. A declaration in scire facias to repeal a patent for ‘¢ improve- ments in instruments used for writing and marking, and in the construction of inkstands,” contained suggestions that a certain part of the invention was not new, a part useless, and that no sufficient specification had been enrolled. The prosecutor filed with his declaration a notice of objections, pointing out claim 6 in the specification as old and useless. The specification con- tained eleven claims. 1-7, for improvements in pencil-cdses, penholders, and pens; 7 and 8, instruments for marking; 9-11, inkstands. After issue joined, the defendant enrolled a dis- claimer of claims 5-8: Held, that (notwithstanding the defend- ant had disclaimed the claims 7 and 8, which'specifically related to instruments for marking) the specification was still as compre- hensive as the title, inasmuch as penholders and pencil-cases ENGLISH PATENT CASES. 43 may be well described as instruments used for marking as well as writing, Reg. v. Mill, 10 C. B. 379; 1 L. M. & P. 695; 15 Jur. 59; 20 L. J., C. P. 16. Infringement of a patent for ‘improvements in the manu- facture of gas for the purpose of illumination, and in the ap- paratus used when transmitting and measuring gas.” At the trial the plaintiff put in a specification, the title of which described the invention to be of ‘improvements in the manufacture of gas for illumination, and in the apparatus used therein, and when transmitting and measuring gas;” and which stated it to relate, “first, to a mode of manufacturing gas for the purpose of illumi- nation; secondly, to improvements in setting and heating clay retorts for making coal-gas ; thirdly, to a mode of manufacturing clay retorts; and fourthly, to improvements in apparatus for measuring gas when it is being transmitted to the consumer :” Held, that there was a material variance between the invention specified and that described in the title of letters patent; and consequently, that the letters patent were void. Croll v. Edge, 9 C. B. 4793 14 Jur. 553; 19 L. J., C. P. 261. N. obtained letters patent for “improvements in the manu- facture of plaited fabrics.” The specification described that ‘ which together amounted to but a single improvement in the mode of manufacture: Held, that this was not such an incon- sistency between the title of the patent and the description in the specification as to invalidate the patent. Nickles v. Haslam, 8 Scott, N. R.97; 7 M. & G. 3375 8 Jur. 470; 13 L. J., C. P. 146. 9. Description of Invention. In General.|—A patent is void if the specification is ambiguous, or. gives directions which tend to mislead the public. Turner v. Winter, 1 T. R. 602. - The invention must be accurately described in the specifica- tion, and if it is sought to cover more than is actually new and useful, the patent is void. Hill v. Thompson, 2 Moore, 424; 8 Taunt. 375; Holt, 636; 3 Mer. 629. The specification must be sufficient to enable others to make 44 DIGEST OF the invention; as the object is, that, after the term, the public may have the benefit of the discovery. Liardet v. Fohnson, Bull. N. P. 76; 8. P. Newberry v. ‘Fames, 2 Mer. 446. A patent is void, if the specification omits any ingredient which, though not necessary to the composition of the thing for which the patent is claimed, is a more expeditious and beneficial mode of producing the manufacture. Wood v. Zimmers, Holt, 58—Gibbs. If, in the specification of an improved gas apparatus, no direction is given respecting a condenser, which is a necessary part of every gas apparatus, this will not invalidate the patent, if it appears that every one capable of constructing a gas apparatus must know that a condenser must form a part of it. Crossley v. Beverley, 9 B. & C. 63; M. & M. 283; 3 C. & P. 513; 1 Russ. & Mylne, 166. Where a patentee of certain apparatus, between the time of taking out the patent and enrolling the specification, made cer- tain improvements in his apparatus, and in the specification claimed the machine so improved as a new invention: Held, that this did not affect the validity of the patent, as the public ought to have the advantage of all improvements down to the time of the specification. Jd. One of the ingredients in a composition was a white substance imported from Germany, and which could be purchased at one or two color shops in London; the only description or denomi- nation given to it in the specification was “the purest and finest chemical white lead; but there was no article known by that denomination in the trade, or in the shops where white lead is usually sold; and the finest white lead which could be obtained would not answer the purpose: Held, that the specification was insufficient. Sturz v. De la Rue, 5 Russ. 322. Where a person obtains.a patent for a machine, consisting of an entirely new combination of parts, though all the parts may have been used separately in former machines, the specification is correct in setting out the whole as the invention of the patentee; but, if a combination of a certain number of those parts has previously existed up to a certain point in former ENGLISH PATENT CASES. 45 machines, the patentee merely adding other combinations, the specification should only state such improvements, though the effect produced is different throughout. Boville v. Moore, 2 Marsh. 211. In an action for invading a patent right to machinery for dry- ‘ ing calicoes, where the specification, after setting forth the mode in which the cloth was to be extended for the purpose of drying, proceeded to state that it might be taken up again by the same machinery; a jury having found that the invention was new and useful on the whole, but that the machine was not use- ful in some cases for taking up goods, the court refused to set aside the verdict for the plaintiff and enter a nonsuit. Haworth v. Hardcastle, 4 M. & Scott, 720; 1 Bing. N. C. 182. A brush differing from a common one in no other respect than the hairs or bristles being of unequal lengths, is improperly described in a patent for a new invention as a tapering brush. Rex v. Metcalfe, 2 Stark. 249—Ellenborough. A patent was for a machine for making paper in single sheets, without seam or joining, from one to twelve feet or upward wide, and from one to forty-five feet and upward in length: Held, that this imported that paper varying in width between those extremes could be made by the same machine; and that the patentee, at the time of taking out the patent, not having any machine capable of producing paper of different widths, the patent was void. Bloxam v. Elsee, 6 B. & C. 169; 9 D. & R. 215; 1 C. & P. 558; R. & M. 187. An invention for giving paper, by the application of a certain composition, such a surface as renders the lines of copper and other plate printing more clear and distinct, may properly be described in a patent, as an improvement in copper and other plate printing. Sturz v. De la Rue, 5 Russ. 322. If a specification contains an untrue statement in a material circumstance, of such a nature that, if literally acted upon by a competent workman, it would mislead him, and cause the experiment to fail, the specification is therefore bad, and the patent invalidated, although the jury finds that a competent workman, acquainted with the subject, would not be misled by the 46 DIGEST OF error, but woula correct it in practice. Neilson v. Harford, 8 M. & W. 806. The omission to mention in a specification anything which may be necessary for the beneficial enjoyment of the invention, is a fatal defect. Jb. But aliter if such omission goes only to the degree of the benefit. Jb. If the apparatus described can be used beneficially in its simplest form, it is no objection that great improvements may have been made. 0. If experiments are necessary for the production of any bene- ficial effect, the patent is void. Jd. If a substance as generally known contains a foreign matter, it must be shown either that such foreign matter is not detri- mental, or that it can be easily removed. Derosne vy. Fairie, 2 C., M. & R. 476; 3 Tyr. 393; 1 Gale, 109. A specification must state at least one method which will succeed. Jb. In an action for the infringement of a patent for the daguerreotype invention, it appeared that the invention was for the reproduction of images of nature by the action of light on prepared iodized plates, through the lens of a camera-obscura. The specification divided the process into five distinct operations, the first of which was the cleaning the plates with acid, the second the coating them with iodine, and the third the submit- ting them to the camera-obscura. At the end of the description of the first operation it was said, ‘“‘ When the plate is not intended for immediate use or operation, the acid may be used only twice upon its surface, after being exposed to heat. . . It is, however, considered indispensable that just before the moment of using the plates in the camera, or the reproducing the design, to put at least once more some acid on the plate, and to rub it lightly with pounce, as before stated.” The evidence was, that using the acid after the plates had been coated with iodine, would render the whole operation abortive: Held, that the specification was not calculated to mislead an operator of ENGLISH PATENT CASES. 47 fair intelligence, it being sufficiently clear to be understood by such operator, that the direction to use the acid was, that the acid should be used before and not after the plates had been iodized. Beard v. Egerton, 8 C. B. 165; 13 Jur. 1004; 19 L. Js Ce P. 26, A patentee describing his invention in the specification, is to be taken to claim as part of his invention all which he describes as the means by which it is to be carried into effect, unless he clearly expresses a contrary intention. Tetley v. Easton, 2 El. & Bl. 956; 18 Jur. 350; 23 L. J., Q. B. 77. Particular Instances.|—A patent claimed the invention of manufacturing tubes by drawing them through rollers, using a maundril in the course of the operation. A later patent claimed the invention of manufacturing tubes by drawing them through fixed dies or holes, but the specification was silent as to the use of the maundril: Held, that the court, taking the whole of the latter specification together, would infer that the maundril was not to be used, and that the latter patent was good. Russell v. Cowley, 1 C., M. & R. 864. In summing up his inventory, a patentee state it thus: ‘* My invention is the application of a self-adjusting leverage to the back and seat of a chair, whereby the weight on the seat acts as a counterbalance to the pressure against the back of such chair as above described:” Held, that this was not a claim to the principle of the lever, but to an application of that principle to a certain purpose by certain means, and that the patent was good. Minter v. Wells, 1 C.. M. & R. 5053 5 Tyr. 163. In a patent for blocks for pavement, the patentee claimed as his invention, that his block was beveled both inward and out- ward on the same side of the block; but the specification did not state at what angle the bevels should be made; and one witness stated that the angle was material, but another witness stated that any angle would be of some benefit: Held, that if the jury thought that a bevel at any angle would be beneficial, the specification would be good, although it ‘omitted to state any particular angle at which the bevels should be made. Mac- namara v. Hulse, Car. & M. 471—Abinger. 48 DIGEST OF The specification of a patent granted for improved arrange- ments for raising ships’ anchors, and other purposes, claimed, as the invention of the patentee, a cable-holder, which was described thus: ‘The scolloped shell in which the iron chain cable appears in the drawing is upon a new plan, to hold with- out slipping a chain cable of any size, as shown by the opening form of the scollops at the top and bottom of figure 2.” It also claimed ‘the new form of a scolloped shell (as shown in figure 2), in conjunction with the arrangements hereinbefore described.” A drawing attached to the specification showed that the inner sides of the cable-holder, on which the scollops were’ shown, were not to be parallel, but should converge toward the center of the cable-holder; but the angle formed by the sides of the ‘cable-holder, as shown in the drawing, was not the precise angle which practically would be used. The specification and draw- ings would enable a competent workman to make a cable-holder which would hold chain cables of different sizes. At the date of the patent a cable-holder which would hold one chain cable of any size was known: Held, that the specification was ambiguous in describing the nature of the invention, whether it was an in- vention of a cable-holder to hold a chain cable of any one size, or to hold chain cables of different sizes, and was therefore bad. Hasting v. Brown, El. & Bl. 4503 17 Jur. 647; 22 L. J., Q. B. 161. A patent was granted for a machine to sharpen knives and scissors, and in the specification this was directed to be done by passing their edges backward and forward in an angle formed by the intersection of two circular files; and it was also stated that other materials might be used, according to the delicacy of the edges. It was proved, that for scissors there ought to be one circular file and a smooth surface, but that two Turkey stones might also succeed: Held, that the specification was bad, as it neither directed the machines for scissors to be made with Turkey stones, nor to be made with one circular file and a smooth surface. Felton v. Greaves, 3 C. & P. 611—Tenterden. A patent was taken out for improvements in evaporating sugar. The specification was as follows: ‘* My invention con- sists ina method or apparatus by which I am enabled to evaporate ENGLISH PATENT CASES. 49 liquids and solutions at a low temperature. And my invention and improvement consist in forcing, by means of bellows, or any other blowing apparatus, atmospheric or any other air, either in a hot or cold state, through the liquid or solution sub- jected to evaporation; and this I do by means of pipes, whose extremities reach nearly (or within such distance as may be found most suitable under peculiar circumstances) to the upper or interior area of the bottom of the pan or boiler containing such liquid or solution, the other extremities of such pipes being connected with larger pipes, which communicate with the bel- lows or other blowing apparatus, which forces the air into them.” The lesser pipes were to be equally distributed, and their lower ends ona level with each other. It was further declared, that the form of the apparatus might be varied, provided the essential properties were maintained: Held, that, taking the whole of the specification together, it appeared that the invention consisted of the particular method or process of forcing, by means of bel- lows, etc., air through the liquid subjected to evaporation, viz., by pipes connected with larger pipes, and placed as mentioned in the specification ; and, therefore, that it was not void because another patent had been before granted to other persons for effecting the same object by a coil of pipes (lying at the bottom of a vessel), perforated with small holes, or by a shallow cullender placed at the bottom of the vessel. Hudlet v. Hague, 2B. & Ad. 371. The specification of a patent for “¢a process or method of combining various materials, so as to form stuccoes, plasters, and cements, and for the manufacture of artificial stones, marbles, etc., used in buildings,” after stating the invention to consist in producing certain hard cements of the combination of the power of gypsum, powder of limestone and chalk, with other materials, such combination being (subsequent to their mixing) submitted to heat, described the method or process of making a cement from gypsum, to consist in mixing with powdered gypsum strong alkali (ex. gr. best American pearlash) dissolved in a cer- tain proportion of water, this solution to be neutralized with acid (sulphuric acid being the best), the mass to be kept in agitation, and the acid to be added gradually till the effervescence should 50 DIGEST OF cease; and then a certain proportion of water to be added (if other alkali were used, the quantity to be varied in proportion to its strength); and the mixture having been brought to a proper consistence by the further addition of powdered gypsum, to be dried in molds, and finally subjected to a furnace capable of producing a red heat. The description of making the cement differed little from that of the preceding process. The specifica- tion after proceeding to state the mode of using the cement so made, concluded by stating, that other alkalies and acids besides those before mentioned would answer the purposes of the inven- tion, though not so well, and that the inventor claimed the method or process thereinbefore described: Held, that the speci- fication was bad, for that either the inventor claimed all acids and alkalies, or only those which would answer the purpose ; in the former of which cases, as some acids and alkalies would not answer the purposes of the invention, the specification was there- fore bad; and in the latter it was bad, for not specifying those acids and alkalies which would be found to succeed. Stevens v. Keating, 2 Exch. 772; 19 L. J., Exch. 57. A specification of a patent for ‘improvements in the process of hosiery and other goods manufactured from lambs’ wool,” stated the invention to consist in submitting the hosiery, and other similar goods, ‘to the finishing process of a press heated by steam, etc., in the manner hereinafter mentioned.” A descrip- tion was given, by letters, of a drawing, which represented a press, which consisted of a box heated by steam, up to which another box, similarly heated, was to be pressed by means of hydraulic pressure, or by screws or other well-known means. After describing the method of pressing the goods between these hot boxes, the specification concluded by confining the inventor’s process as above described: Held, that a method of finishing hosiery goods, by passing them through heated rollers, was not included in his patent, and, therefore, was no infringement of it. Barber v. Grace, 1 Exch, 339; 17 L. J., Exch. 122. Patent for the invention of a nipping lever for causing the “rotation of wheels, shafts, or cylinders, under certain circum- stances. The specification claimed as the invention ‘‘the nipping lever, with its tusk and sliding-box, applied to a rimmed ENGLISH PATENT CASES, 51 wheel, or to a rimmed flange, for the purpose of causing the same to rotate or move together any shaft, cylinder, or other suitable machinery which may be attached thereto.” The nip- ping lever was not new; but the application of it by means of the sliding-box was new: Held, that it must also appear that the use of sliding-boxes was essential to the invention, How v. Taunton, g Jur. 1056—Q. B. Patent for a new or improved method of drying and preparing malt. In the specification it was stated, that the invention consisted in exposing malt previously made to a very high degree of heat; but it did not describe any new machine invented for that purpose, nor the state, whether moist or dry, in which the malt was originally to be taken for the purpose of being subjected to the process; nor the utmost degree of heat which might be safely used; nor the length of time to be employed; nor the exact criterion by which it might be known when the process was accomplished: Held, that the patent was void, inasmuch as, first, the specification was not sufficiently precise; and as, secondly, the patent appeared to be for a different thing from that mentioned in the specification. Rex v. Wheeler, 2 B. & A. 345. Held, also, as the word ‘ malt” was here not to be taken in its usual sense, viz., of an article used in the brewing, but only in the coloring of beer, that in the patent it was necessary to have stated the purpose to which the prepared malt was to be applied, and to have said that it was obtained for a new method of drying and preparing malt to be used in the coloring of beer. Lb. A patent was granted for an invention of certain improvements in extracting sugar or syrups from cane juice and other sub- stances containing sugar. ‘The specification stated the invention to consist “‘in a means of discoloring syrups of every description by means of charcoal produced by the distillation of bituminous schistus, or mixed with animal charcoal, and even of animal charcoal alone.” The discoloration was to be produced by means of a filter made of the charcoal, and that there was nothing particular in the carbonization of the bituminous schistus, “only it is convenient before the carbonization to separate the 52 DIGEST OF sulphurets of iron which are mixed with it??? The specification said nothing as to any previous operation on the syrup before it was submitted to the filter, but it did state that syrup, in a proper state, might be obtained by a mixture of sugar and water: Held, that the patentee sufficiently specified his invention, upon proof that it was applicable with advantage to the syrup after it had undergone a certain degree of heat, though it failed when ap- plied to the first drawings of syrup, and that a discoloration of such syrup and of syrup of sugar and water, warranted the title of improvements ‘‘in extracting sugar or syrup from cane juice.” Derosne v. Fairie,2 C., M. & R. 476; 3° Tyr. 393; 1 Gale, 109g. Specification—New Process.|—A patent may be sustained though each principle or process in it was previously well known to all persons engaged in the trade to which the patent relates, provided that the mode of combining these processes was new, and produced a beneficial result, and provided, also, that the speci- fication claimed not the old processes, or any one of them, but only the new combination. Cannington v. Nuttall, 5 Law Rep., H. L. 205. A person having a patent for improvements in gas lamps, made further improvements in such lamps, and obtained a patent for the subsequent improvements. The specification to the second patent stated that the invention related to the construc- tion of lamps of a class forming the subject of the former patent, and then described the mode of making the improved parts of the lamp: Held, that the specification was sufficient. Parkes v. Stevens, 18 W. R, 233; 22 L. T., N.S. 635; 5 L. R.,; Chanc. 36. 10. Specification or Claim larger than Invention. In order to establish the validity of a patent for an improve- ment or a discovery, it should be stated in substance what is set out in detail in the specification; and if it is taken out for more than is strictly the inventor’s own addition or improvement, or for. discovery, when it is merely an addition or an improve- ment, it is bad. Hz// v. Thompson, 2 Moore, 424; 8 Taunt. 3753 Holt, 636; 3 Mer. 629. ENGLISH PATENT CASES. 53 _ A patent “for an improved mode of lighting cities, towns, and villages,” is not supported by a specification describing an im- proved lamp. Cochrane (Lord) v. Smethurst, 1 Stark. 205—Le Blanc. So, a patent for an improvement in the construction of ship’s anchors, windlasses, and chain-cables, can not. be supported, unless there is novelty in each invention. Brunton vy. Hawkes, 4B. & A. 541. Where a patent was obtained for “‘a new and improved method of making and manufacturing double canvas and sail cloth with hemp and flax, without any starch whatever,” and the specification described the invention to consist in an improved texture, or mode of twisting the threads, to be applied to the making of unstarched cloth; on its being proved that the exclusion of starch had been before adopted: Held, that such patent was void, as being taken out for more than the patentee had really discovered. Campion v. Benyon, 6 Moore, 71; 3 B. & A. 5. But a patent is not avoided by the specification claiming as part, but not as an essential part of the invention, something which proved useless. Lewis v. Marling, 5 M. & R. 66; 10 B. & C. 2234 C. & P. 52. If a patentee sums up the principle of his invention in the specification, and that principle is not new, the patent can not be supported, though it appears that the application of the principle as described in the specification is new. Rex v. Cutler, 1 Stark. 354—Ellenborough. A patent taken out for an invention, consisting of two distinct parts, one of which is not new, the whole is void. Kay v. Mar- shall, 5 Bing. N. C. 492; 7 Scott, 548; 2 Arn. 78: 8. C1 Beav. 535: in Dom. Proc., 5 Jur. 1028 ; 8 C. & F. 245; West, 682. So, if a patent is taken out for several inventions, which are claimed as improvements, and one of them is not an improve- ment, the patent is altogether void. AdZorgan v. Seaward, 2 M. & W. 544; M. & H. 553 1 Jur. 527. A specification is defective if the patentee professes to effect 54. DIGEST OF his object in one or two specified modes, or else in the other representing each as available, and it appears that one of them will effect the purpose, but the other will not. Reg. v. Cutler, 14 Q, B. 372, 0.3 3 C. & K. 215. Where a specification claimed as an invention the application of a self-adjusting leverage to the back and seat of a chair, whereby the weight on the seat acted as a counterbalance to the pressure against the back; and it appeared that A., previously to the letters patent, had made and sold chairs in which the same principle was applied, but which could not be called into action without the use of additional machinery: Held, that the patent could not be supported, as it claimed too much, and would have prevented A. from making the chairs which he had made formerly. Minter v. Mower, 1 N. & P. 595; 6 A. & E. 735; W., W. & D. 262. A patent was granted for “‘improvements in the manufacture of cases or envelopes for covering bottles.” The specification, after describing the apparatus, in the arrangement of which the invention was stated to consist, claimed the combination of mechanism and the making of envelopes for bottles as described: Held, that the specification was for the mode of making, and not for the envelope; and that it was, therefore, not larger than the grant. Patent Bottle Envelope Company v. Seymer, 28 L. J., C. P, 22;5 C. B., N.S. 1643 5 Jur. 174. A patent was taken out for “‘certain improvements in the doors and sashes of carriages.” In the specification the patentee said, “¢I have shown my invention as applied to railway carriage doors: and window fittings, although they are equally applicable to the doors and windows of any other description of carriage, or in any position where windows and doors are subject to jar and vibration: Held, that the claim in the specification was not larger than the title of the patent. Oxley v. Holden, 8 C. B., N. S. 666; 30 L. J., C. P. 68; 8 W. R. 626; 2 L. T., N.S. 464. One part of an invention was described as a novel arrangement and mode of fitting and working sliding sashes, glass frames, blinds and shutters for railway and other carriages, “ which con- sisted of a metal plate with a slot and a stud or pin working in a ENGLISH PATENT CASES, 55 groove on each side of the sash or frame, and the patentee claimed the metal fittings, and the mode of applying the same described herein as the second part of my invention:” Held, that this was a claim not for the metal fittings themselves, but for the mode of applying them, and consequently that the patent was sustained by proof that the application was new, though the stud and plate themselves were old. Jb. Where a patentee, in his specification, professes to do by machinery what has never before been done by machinery, and describes the machinery by which he does it, his claim is not too large on the face of it, because it claims generally to perform the operation ‘by machinery.” A patentee, in his specification, described an improved ruffle or frill, and the machinery by which he proposed to make such improved ruffle, and to fasten it to a plain fabric by a single series of stiches. By his claim he claimed ‘the production by machinery of ruffles, and the simultaneous attachment of them to a plain fabric. by a single series of stitches: Held, that the claim was not, on the face of it, too large. Arnold v. Bradbury, 6 Law Rep., Chanc. App. 706—C. R. obtained a patent for the use of animal fibre, by preference Russian wool, or wool of a coarse texture, in the manufacture of artificial hair to be made up for ladies’ head-dresses, and for upholstery, and other like purposes. Upon a bill filed to restrain an infringement of the patent: Held, that the specification was too extensive; that even the use of a new material to produce a known article could not be the subject of a patent unless some invention and ingenuity were displayed in the adaptation; that in this case a prior use of wool for the purpose was proved, and that the bill must be dismissed with costs. Rushton v. Crawley, 10 L. R., Eq. 522—V.-C. M. il. Inspection of Provisional Specification. By 16 and 17 Vict. c. 115, 8. 2, the commissioners of patents shall cause true copies of all provisional specifications left at the office of the commissioners to be open to the inspection of the public at such times after the date of the record thereof respectively, as the commissioners shall by their order from time to time direct. 56 DIGEST OF An application under this provision for the inspection of the provisional specification of letters patent, on the ground that the subject-matter was the same as that for which the applicant had obtained letters patent was refused. Tolson’s Patent, 6 De G., M. & G. 422. 12. Filing. a By 15 and 16 Vict. c. 83, s. 27, all letters patent granted under that act, save only letters patent granted after the filing of a complete registration, shall require the specification thereunder to be filed in the high court of Chancery, instead of requiring the same to be enrolled, and no enrollment shall be requisite. By 16 and 17 Vict. c. 115, s. 3, @ true copy, under the hand of the patentee or applicant, or agent of the patentee or applicant, of every specification and of every complete specification, with the draw- ings accompanying the same, if any, shall be left at the office of the commissioners of patents on filing such specification or complete specifi- cation. One having obtained a patent for a manufacturing machine, of which he duly enrolled a specification, afterward obtained another patent for improvements in the machine, in which the grant of the former patent was recited; and the letter patent contained the usual condition that it should be void, if the pat- entee did not within one month enroll a specification, particu- larly describing and ascertaining the nature of the invention, and in what manner the same was to be performed: Held, that a specification containing a full description of the whole machine so improved, but not distinguishing the new improved parts from the old parts, or referring to the former specification, otherwise than as the second patent recited the first, was a performance of that condition. Harmer v. Playne, 11 East, 101; 14 Ves. 133: A clerical error in the enrollment of the specification of a patent will be amended. Redmund, in re, 5 Rus. 44. A patent, dated roth May, contained a proviso that a specifi- cation should be enrolled within one calendar month next, and immediately after the date thereof, and it was enrolled on the ENGLISH PATENT CASES. 57 Ioth of June following: Held, that the month did not begin to run until the day after the date of the patent, and that the en- rollment was in time. Watson v. Pears, 2 Camp. 294—Ellen- borough. A patent was granted ‘for improvements in the manufacture of gelatinous substances, and in the apparatus to be used therein,” with a proviso as tothe enrollment of the specification within six months. Before the expiration of the six months, the grantee assigned all his interest in the patent. He then, by leave of the solicitor-general, disclaimed that part of the title contained in the words “‘and in the apparatus to be used therein,” a copy of which disclaimer was filed by the clerk of the patents of England, the original having been duly certified. In an action by the assignee of the grantee for an infringement, the declara- tion stated the patent to have been granted for “certain im- provements in the manufacture of gelatinous substances, and the apparatus to be used therein,” and also stated the specification, the disclaimer, and the assignment: Held, upon an issue as to the specification of the invention being enrolled, that no objec- tion could be taken that the apparatus specified was not new. Wallington v. Dale, 7 Exch. 888 ; 23 L. J., Exch. 49. Held also, that the disclaimer by the grantee after the assign- ment was valid as soon as it was entered of record. Jb, Held also, that the filing of a copy of the disclaimer was a sufficient compliance with the 5 and 6 Will. 4, c. 83, s. 1. Jb. IV. DISCLAIMER. By 5 and 6 Will. 4, c. 83, s. 1, any person having obtained let- ters patent for any invention, may enter a disclaimer of any part of his specification, or a memorandum of any alteration therein, which, when filed, is to be deemed part of the specification. By 7 and 8 Vict. c. 69, s. 5, the disclaimer and memorandum of alteration may be made notwithstanding the original patentee may have assigned his rights. 58 DIGEST OF Where a patent is originally void, but amended by filing a disclaimer of part of the invention, the above act has not a retrospective operation, so as to make a party liable for an in- fringement of the patent, prior to the time of entering such dis- claimer. Perry v. Skinner, 2 M. & W. 471; M. & H. 1223 1 Jur. 433. A declaration for the infringement of a patent stated a grant to the plaintiff in 1836 of letters patent for improvements in pumps, and that a specification of the same was duly enrolled within six months. It then alleged the entering by the plaintiff, in 1844, of a disclaimer of part of this title and specification, and an infringement afterward by the defendant of the patent as altered by the disclaimer. Plea, that, in 1840, after the grant to the plaintiff, and before entry of the disclaimer, a patent was granted to B., under whom the defendant was licensee, which was alleged to cover the infringement complained of: Held, that the plea was bad, upon the ground that it appeared from the record that the grant to B. was void, as being in respect of an invention already made known to the public by the enrollment of the plaintiff’s specification. Stocker v. Waller, 1 C. B. 148; g Jur. 136. A grantee of letters patent, who, having canted with his inter- est, afterward becomes assignee of a share in them, may enter a disclaimer of part of the invention, and may maintain an action for an infringement of the patent so altered. Spilsbury v. Clough, 2 G. & D. 17; 2 Q, B. 466; 6 Jur. 579. A disclaimer will be valid, notwithstanding the grantee, at the time he entered it, had assigned all his interest in the patent. Wallington v. Dale, 7 Exch. 888; 23 L. J., Exch. 49. The filing of the copy of a disclaimer is a compliance with the provisions of the 5 and 6 Will. 4, c. 83,s. 1. Jb. In a scire facias to repeal letters patent, a disclaimer, though enrolled subsequently to issue joined, is admissible for the de- fendant, and is to be read as a part of the original specification put in by the prosecutor, and it is not necessary to plead the disclaimer puis darrein continuance. Reg. v. Mill, 10 C. B. 379; 20 L. J., C. P. 16; 1 L. M. & P. 6953 15 Jur. 59. ENGLISH PATENT CASES. 59 The effect of a disclaimer is merely to strike out from the specification those parts of the machinery which are disclaimed ; it can not be read as explanatory of that which remains. Tet/ey v. Easton, 2 C. B., N. S. 706—Per Cresswell. A disclaimer can not be made use of for the purpose of con- verting a barren and an unprofitable generality in a specification into a specific practical description, or to convert that which, upon the description in the specification, is not applicable to any one definite form into a description applicable to a specific and a definite mode of proceeding. Ralston v. Smith, 11 H.L. Cas. 224; 35 L, J. C. BF. 493 19 L. T. N. 5. 13 90 C. BN: S, 28. The object of 5 and 6 Will. 4, c. 83, is, that where a specifi- cation containing a sufficient and good description of a useful invention, is imperiled by reason of the description having some- thing annexed to it which is capable of being severed, leaving the original description good and sufficient, without the neces- sity of addition (except of such slight additions only as may be required to render intelligible that which remains), the vicious excess may be lopped off by a disclaimer. Jd. R., in his specification, described his patent for improvements in embossing and finishing woven fabrics, as enabling him upon a roller, either spirally or longitudinally, or in a circular form, to groove, or flute, or engrave, or mill, or otherwise indent any de- sign. The fact was, that if the design was engraved longitudi- nally it would destroy the material. R., therefore, ina disclaimer, altered “upon” into “‘around the roller:”’ Held, first, that the disclaimer was bad, as it sought in effect to extend the specifica- tion, or to convert a bad specification into a good one by adding words. Jb. Held, secondly, that the construction of the specification, as amended by the disclaimer, excluded spiral engraving, and con- fined it to circular engraving or grooves. Jb. Held, thirdly, the description “or roller of hard metal, or other .suitable material,” was not too vague as regards mate- rial. Jb. 60 DIGEST OF Any part of the provisional specification of a patent may be omitted in the complete specification, if there is no fraud, and the effect of the remainder is not altered by the omission. All the claiming clauses may be struck out of the specification of a patent by a disclaimer, if there remain in the body of the speci- fication words sufficiently distinguishing what the invention is which the patentee claims. Thomas v. Welch, 1 L. R., C. P. 192; 12 Jur., N. S. 316; 35 L. J., C. P. 200. An alteration, verbal merely, and not substantive, by means of a disclaimer, will not make a patent void. Jd. A patentee claimed by his specification “the application of the principle of centrifugal force to the flyers employed in” cer- tain machinery for roving cotton and other fibrous substances, but declared that his improvements “‘ apply solely to such part of the machinery called the flyers which is employed in connec- tion with the spindle for the purpose of winding cotton.” He attached drawings to his specification, and went on to say that these drawings and the specification represented ‘‘ one particular and practicable mode of applying” his invention, but ‘I do not intend to confine myself to this particular method, but I claim as my invention the application of the law or principle of cen- trifugal force to the particular or special purpose above set forth, that is, to flyers used in machinery for preparing cotton.” He afterward disclaimed “all application of the law or principle of centrifugal force as being part of my invention, or as being com- prised in my claim of invention contained in the specification, except only the application of centrifugal force, by means of a weight acting upon a presser so as to cause it to press against a bobbin, as described in the specification: ” Held, that this dis- claimer did not extend the claim, but confined it to a particular mode of applying the principle of centrifugal force, and did not claim the discovery of that principle, or the application of it, except in a particular way, and that therefore the patent was good. Seed v. Higgins, 4 Jur., N.S. 258; 27 L. J., Q. B. 145. Affirmed in Exch. Cham. and Dom. Proc., 27 L. J., Q. B. 411; 8 H. L. Cas. 550; 30 L. J., Q. B. 314; 6 Jur., N. S. 1262. ENGLISH PATENT CASES. 61 V. ASSIGNMENT, SALE, LICENSES, AND ROYAL- TIES. 1. Assignments. Absolute.|—Where an act *of parliament secured to certain - persons for a further term of years the benefit arising from a patent for making a machine, with a proviso that it should be- come void if they should transfer or assign their interest therein to any persons exceeding the number of five; and two of the patentees became bankrupt: Held, that the assignment of their interest to their assignees for the benefit of creditors, though the number exceeded twenty, was not within the proviso. Bloxam v. Elsee,g D. & R. 215; 6 B. & C. 169;1C. & P. 558; R. & M. 187. A voluntary assignment by a patentee of letters patent to trustees, for the benefit of creditors more than twelve in num- ber, is not such an assignment as will avoid the patent. Zc4/- pine v. Mangnall, 3 C. B. 496; 15 L. J., C. P. 298. The executors of a patentee having obtained probate of their testator’s will, assigned his patent to another person, but the probate was not registered till after the assignment: Held, that the assignment was valid. Ellwood v. Christy, 10 Jur. N. S. 1079; 13 W.R. 498; 11 L. T., N.S. 342; 17 C.B., N.S. 7543 34 L. J., C. P. 130. An act of parliament empowering a bankrupt patentee, his executors, administrators, and assigns, to assign the right to a greater number of persons than allowed by the letters patent, and declared to be a public act, does not enable either the bank- rupt or his assigns to make a better title than they could before the act. Hesse v. Stevenson, 3 B. & P. 565. A., by a deed (reciting that a suit was depending between him and B. respecting certain patents, and that they could not be assigned without hazard of defeating the suit), granted absolutely the patents, together with some others, to C., excepting, how- ever, until the determination of the suit, such patents as should be necessary to support A.’s legal title. Then followed a covenant that A., upon the determination of the suit, should assign the 62 DIGEST OF excepted patents to C., and that until such assignment A. should stand legally possessed of the same: Held, that the legal interest in the excepted patents vested in C, upon the determination of the suit, without further assignment.) Cartwright v. Amatt, 2 B. & P. 43. : Where a bond was given for payment of 10,000/., with a condition that the money should be paid on the obligee’s pro- curing subscriptions for 9,000 shares in a company to be formed of many persons, for the purpose of becoming assignees of a patent, and carrying on the patent process; and the patent con- tained a proviso, that it should be void if assigned to more than five persons: Held, that the obligee must be presumed to know of that proviso, and that, as the bond was subject to a condition for the performance of an illegal act, it was void. Duvergier v. Fellows, 10 B. & C. 826; 1 C. & F. 39; 2 M. & P. 384. No action can be maintained on a bond given to a person in consideration of his doing something contrary to the terms of letters patent ; and he is equally incapable of recovering, whether he knew or did not know the terms of the letters patent. JA. See also Hassell v. Wright, 10 L.. R., Eq. 509; 18 W. R. 821; Horsley & Knighton’s Patent, in re, 39 L. J., Chanc. 157, cited supra. Agreements for.|—A declaration stated that a petition had been presented by the plaintiffs, at the request of the defendant, for the granting to the defendant of a patent; that the plaintiffs had filed a provisional specification, at their own expense, upon con- dition that the defendant should complete the specification within six months, and that afterward it was agreed that the defendant should sell to the plaintiffs his right in respect of the patent for 5/., to be paid by the plaintiffs to the defendant on their having completed at their own expense the patent; that it thereupon became necessary, in order to enable the plaintiffs to complete the patent in pursuance of the agreement, that the defendant should sign and seal a complete specification; that the plaintiffs tendered to the defendant a complete specification for his signa- ture. Breach, that he would not sign it: Held, that he was bound to sign the specification. Lewin v. Brown, 14 W. R. 640—C. P. ENGLISH PATENT CASES. 63 A defendant signed a written proposal that the plaintiff should assign a patent in trust for an institution of which the defendant was manager, and the plaintiff was to have 5/. per cent. upon the profits made thereby, and the defendant was to provide for the next payment to be made in respect of the patent; and that if the payments did not equal a certain sum in the first and subsequent years, the plaintiff should have the right, upon giving a month’s notice, and repaying any moneys made to keep up the patent, to reclaim it, unless the deficiency in the year was made up within the month; and in case of the institution not being carried on, the patent was to revert to the plaintiff, subject to repaying any moneys paid to keep it up. The plaintiff assented by word of mouth to the proposal, and allowed the institution to have the use of the patent, and otherwise ful- filled the terms of the agreement: Held, that it sufficiently ap- peared from the agreement that what the plaintiff had to do was not intended to be postponed beyond the year, and therefore it was not within the 4th section of the Statute of Frauds; and that if it was within that section, the proposal signed by the de- fendant, and accepted by word of mouth by the plaintiff, was sufficient to satisfy the statute. Smith v. Neale, 2 C. B., N.S. 67; 3 Jur, N.S. 516; 26 L. J., C. P. 143. To a declaration alleging a contract for the assignment by the plaintiff of the letters patent in trust for the institution, and upon the terms contained in the proposal of the defendant, the defend. ant pleaded non concessit: Held, that the contract involved no warranty by the plaintiff that the invention was new, or that the manufacture was within the statute of James, and that therefore the plea put in issue no more than the grant of the letters patent which the plaintiff contracted to assign. Jd. An agreement was entered into between four persons who were interested in patents and inventions relating to gutta percha, that all patents taken out, or in the course of being taken, or intended to be taken out, or that might at any time there- after be taken out by any or either of them, or on account of and for the benefit of any or either of them in relation to the prep- aration and application of gutta percha, or the manufacture of 64 DIGEST OF any article therefrom, should be assigned to trustees, and held for their common benefit. Subsequently one of the parties took out a patent for “improvements in apparatus and machinery for giving shape and configuration to plastic substances,” and re- fused to assign the patent to the trustees, alleging that it was not comprised in the agreement: Held, that the patent, so far as it related to gutta percha, was subject to the trusts of the agree- ment, and that it could not be treated as not being so, because it was for machinery which might be applied to the manufacture of articles of gutta percha, and was not for the manufacture of any such articles. Bewley v. Hancock, 6 De G., M. & G. 391; 2 Jur., N.S. 289. A covenant, by a licensee for the residue of a term of fourteen years, of patented improvements in machinery for slubbing fibrous substances, not to make or send any slubbing frames whatever without the invention applied to them, is not void as a covenant in restraint of trade. ‘Fones v. Lees, 1 H. & N. 1893 2 Jur., N.S. 645; 26 L. J., Exch. g. 2. Licenses to Use and Vend. The grant of an exclusive license to use a patent does not in- validate the patent itself, although the patent may be vested in twelve persons; and it is wholly immaterial to its validity in what number of persons such a license is vested, whether ex- clusive or not. Protheroe v. May, 5 M. & W. 675. Such a license would not be invalid if the districts or district covered by the license included the whole extent of the patent. Bb. While a person is using, under a license, a patent machine and paying a royalty for its use, or the use of its principle embodied in any other machine, he can not, in a proceeding against him for non-payment of royalties in respect of the use of another machine alleged to embody the principle of the patent invention, set up as a defense that the patent is not valid. He can only be allowed to contend that the second machine does not embody the principle of the patent. Crossley v. Dixon, 10 H. L. Cas. 293; 9 Jur., N. 8. 607; 32 L. J., Chanc. 617; 11 W. R. 716; 8 L. T., N. S. 260. _ ENGLISH PATENT CASES. 65 A license to A. to manufacture a patent article is an authority to his vendees to vend it without the consent of the patentee. Thomas v. Hunt, 17 C. B., N.S. 183. A licensee under another’s patent is not estopped thereby from contesting the novelty of such patent. Dangerfield v. ones, 13 L. T., N.S. 142—V.-C. W. A., asserting that he had a right to a patent machine, cov- enanted with B. that he should use it in a particular manner, in consideration of which B. covenanted that he would not use any other; in an action by A. on the covenant, B. is not estopped by his covenant from pleading in bar to the action, that the invention was not new, or that the patentee was not the in- ventor: but he may thus show that the patent was void. Haye v. Maltby, 3 T. R. 438. But in an action by the assignee of the patentee against the _patentee, the latter is estopped from showing that it was not a new invention against his own deed. Oldham v. Langmead, 3 T. R. 439—Kenyon. Where a license to use certain patent machines is granted by indenture, in which it is recited that the grantor has invented the machines, and has obtained letters patent for the sole use of the invention, and enrolled the specification, parties (and privies) to the deed are estopped from pleading either that the invention is not a new invention, or that the grantor was not the first in- ventor, or that no specification was enrolled. Bowman v. Taylr, 4N. & M. 264; 2A. & E. 278; S. P. Smith v. Scott, 5 Jur., N. S. 1356; 28 L. J., C. P. 325; 6C. B., N.S. 771. Action for the price of a license, granted by the plaintiff to the defendant, to use an invention fora patent furnace. The plaintiff, having obtained the patent, granted the defendant a license, which was in writing, but not under seal, to use the patent ; and the defendant, having received the license, kept it, and used the invention, but when called upon to pay the price agreed upon, objected to pay for it, on the ground that it was void, as not being under seal. By the terms of the letters patent all persons were commanded not to ‘‘make, use, or put in prac- tice the invention, or any part of the same, nor in anywise 66 DIGEST OF counterfeit, imitate, or resemble the same, nor make, or cause to be made, any addition thereunto or subtraction from the same, whereby to pretend himself or themselves to be the inventor o1 inventors, devisor or devisors thereof, without the license, con sent, or agreement of the patentee, in writing, under his hand and seal, first had and obtained, upon pain of a contempt of the royal command, and of being answerable to the plaintiff in damages :” Held, first, that the defendant, having obtained the license he had bargained for, and kept it, was bound to pay for it. Chanter v. Dewhurst, 12 M. & W. 823; 13 L. J., Exch. 198. Held, secondly, that the license was not void, as not being under seal. 1d. N. obtained a patent for the application of the principle of smelting iron by the use of heated air applied to furnaces. B. obtained a license from him to use this process, on the payment of 1s. per ton on the iron thus smelted. Disputes, and then litigation, arose between them, and it was agreed, by an instru- ment in writing, dated r1th November, 1833 (which recited the previous-circumstances), that both parties should withdraw their law proceedings ; that ‘‘in consideration of the payment of 400/., to be accepted by N. in full of 1s. per ton on the whole iron smelted from the erection of B.’s works up to the rith day of November, and in consideration of the payment of Is. per ton upon the whole iron which shall be smelted from the r1th of Novem- ber till the expiration of the letters patent, by the use of heated air in any of the modes heretofore applied, or in any other mode falling under the said patent,” N. should grant to B. a license, which was described to relate to “the application or use of heated air in any of the modes heretofore practiced at B.’s works, or in any other mode falling under the description in the said patent, or in the specification thereof.” N. afterward in- stituted a suit to compel B. to perform this agreement. B. in- stituted a cross suit to suspend N.’s proceedings, on the ground that the process of smelting by heated air used at B.’s works did not fall within the patent: Held, that after this agreement, B. could not set up such a defense to the claim of N. Baird v. Neilson, 8 C. & F. 726. ENGLISH PATENT CASES. 67 By articles of agreement under seal reciting that letters patent had been granted to the defendant, for improvements in purifying gas, and other letters patent had been granted to the plaintiff for an improved mode of manufacturing gas, and that disputes had arisen between the parties as to their rights under the letters patent to the use of oxides of iron for the purpose of purifying gas, and that a scire facias had been sued out by the plaintiff to repeal the letters patent granted to the defendant, and that another patent for purifying coal gas by oxide of iron had been applied for by the defendant, and that other letters patent -had been sued out by the plaintiff, and that in order to put an end to their differences the parties had entered into that agree- ment; the defendant covenanted with the plaintiff, and the plaintiff agreed that the defendant should have the exclusive use of the inventions granted to the plaintiff, so far as the same re- lated to the purification of gas by the hydrated oxides of iron, paying therefor certain royalties; that the plaintiff should have the exclusive use of the inventions granted to the defendant so far as the same related to the purification of gas by anhydrous oxides of iron, paying therefor certain royalties; that for the purpose of that agreement and the determination of the amount of royalties, it should be assumed that the defendant was en- titled to the exclusive use of anhydrous oxides, and the plaintiff entitled to the use of hydrated oxides. The agreement also pro- vided that in case of any breach of certain stipulations, the party so doing should pay to the other a certain sum as liquidated damages. In an action to recover that sum the defendant pleaded the plaintiff’s patents were not valid, that the inventions were not new, and that the plaintiff was not the first inventor: Held, that the pleas were bad, inasmuch as the defendant was estopped by the agreement from disputing the validity of the patents. Aiills v. Laming, g Exch. 256; 23 L. J., Exch. 60. Action by assignee of H., original patentee, for an infringe- ment of a patent. Plea, a license, by deed, from H. to S. and A., and to such persons as they should from time to time license or authorize, to make, use, and vend the invention in Great Britain and Ireland; and that S. and A. assigned to the defendant all the liberty and license granted to them by the deed. 68 DIGEST OF Replication, on equitable grounds, that by deed of even date with the deed of license from H. to S. and A., and made be- tween H. of the first part, the plaintiff and five other persons of the second part, and S. and A. of the third part, reciting that under arrangements between H. and the parties of the second part, the parties of the second part were entitled to par- ticipate in the profits to be derived from the letters patent, and that S. and A. had contracted with the parties of the first and second parts for the purchase of a license for the exclusive use of the invention, and that the contract was carried out by the deed of license, it was witnessed that each one of the parties covenanted that S. and A. should not manufacture machines under the license for sale out of Great Britain and Ireland; of all which the defendant, before the assignment to him of the license, had notice: that afterward, by deed between S. and A. and the defendant, reciting the grant of the license, and the making of the deed of even date therewith, and that in the deed were contained covenants on the part of the parties thereto with respect to the license, and that by deed of even date S. and A. assigned the license to the defendant, the defendant cov- enanted that he would perform all the covenants in the secondly- recited deed contained on the part of S. and A. to be performed, and would indemnify S. and A. from all actions for breach of the covenants: Held, that the deed of covenant not to manufac- ture for sale out of Great Britain and Ireland was no answer to the license, and that therefore the replication was not good at law, nor upon equitable grounds. Schlumberger v. Lister, 6 Jur., N. 5. 1336; 9 W. R. 138; 3 L. T., N.S. 549; 2 El. & BI. 870; 29 L. J., QO. B. 157. 3. Sale. Of Part.|—The sale of a moiety of a patent right conveys an interest pro tanto in the patent. Walton v. Lavater, 6 Jur., N.S. 19593 29 LJ. C. P.27§3 gL. T., N. 8.2723. 8 C.B,, N.S. 162. Consideration and Parties.|—By an agreement, not under seal, between the plaintiff and A., B. and C. of the one part, and the defendant of the other part, reciting that the plaintiff had ob- ENGLISH PATENT CASES. 69 tained a patent for an improvement in furnaces, and was solely interested in another patent invention; that the plaintiff and A. had obtained a patent for another invention; the plaintiff and B. for another; and the plaintiff and C. for another; it was agreed between the parties, that, for the considerations therein mentioned, it should be lawful for the defendant exclusively to use, manufacture, and sell any or all of the patent inventions, within certain limits, during the continuance of the several patents, on certain terms specified in the agreement. In an action on this agreement by the plaintiff alone, to enforce one of such terms, the defendant set out the plaintiff’s patent for the improvements in furnaces, and pleaded that it was not, at the time of the grant, a new invention as to the public use thereof in England, whereby the grant was void, which the plaintiff, at the time of making the agreement, well knew: Held, that the plea was a bar to the action. Chanter v. Leese, 4 M. & W. 295; 1 H. & H. 224; 8. C. (in error), 5 M. & W. 608, affirmed. Held, also, that the declaration was bad, on the ground of variance, as it stated the agreement to be made between the plaintiff and defendant, whereas there were other parties to it of the first part besides the plaintiff. 1. Brown being patentee of an engine, Broadhurst bought a license of him to erect it in Cornwall only. Ridgway, by agency of Brown, contracted with Brown & Co. to erect such an engine in Cambridgeshire, Brown telling Ridgway that Philip and Broadhurst were his partners. During the building of the Cambridgeshire engine, Broadhurst frequently came to inquire how it went on, and when it would be finished. After the engine had failed in its object, Ridgway, previously to suing Philip and Broadhurst, inquired from Broadhurst if Brown had been correct in declaring that Broadhurst and Philip were his partners; to which he answered that he had. He then sued Philip and Broadhurst. ‘The jury having found a verdict for them, on the ground that Broadhurst was not a partner, the court refused to set it aside and grant a newtrial. Ridgway v. Philip, 1 C., M. & R. 4153 5 Tyr. 131. By an agreement, after reciting that the plaintiff had invented a method for preventing boiler explosions, and that he had ob- 7o0 DIGEST OF tained a patent for the use of it, and that he was desirous of disposing of half his interest in such patent, to which he declared he had full right and title, and that he had applied to the defend- ant to purchase such half of his interest in such patent, it was stipulated that the defendant should pay to the plaintiff 2,500/., ‘in such manner as shall be mutually agreed on;” and, in con- sideration of such engagement, the plaintiff agreed to make over, and accordingly made over, to the defendant one-half of the patent. In an action on this agreement the plaintiff assigned three breaches; first, that the defendant did not pay the 2,500/. on request; secondly, that he refused, after the lapse of a rea- sonable time, to make any agreement with the plaintiff respect- ing the manner in which the money was to be paid; and, thirdly, that he refused to fix any time at which the money should be paid: Held, that the second breach was good, as, even if the agreement as to the mode of payment was a condition, the defendant, by refusing to enter into any agreement, had ren- dered the performance of it impossible. Hall v. Conder,2 C. B., N.S. 22; 3 Jur., N.S. 366; 26 L. J., C. P. 138. Held, that by the agreement the plaintiff did not profess to sell, nor did the defendant profess to buy, a good and indefeasi- ble patent right, but only the moiety of the patent, such as it was; and that as there was also no express or implied warranty of title or quality, it was no answer to the breaches to plead that the invention was wholly worthless and of no public utility, and not new, and that the plaintiff was not the first and true in- ventor. Jb.: 8. C., affirmed on appeal, 3 Jur., N. S. 963— Exch, Cham. A declaration stated that, by deed, the plaintiff sold certain letters patent to the defendants, and they covenanted to pay the price by installments; provided, that if within twelve months from the date of the deed they should disapprove of the patent, and of their disapprobation and intention to sell if they should give notice to the plaintiff, the payment of the installments should be suspended; and if they should within six months after notice sell the patent, and, retaining to themselves 246/, pay over the surplus to the plaintiff, the covenant for payment of the entire sum should cease. But if they having given such ENGLISH PATENT CASES. 71 notice, should neglect or refuse to observe all the other matters in the proviso, the covenant for payment of 840/, should stand. Averment, that the defendants gave due notice of their disap- probation, and of their intention to sell, and that the defendants had not sold the letters patent. Breach, non-payment of the installments, Plea, that the defendants were ready and willing, and endeavored to sell the letters patent, but that no bona fide sale could be effected: Held, that the defendants, not having sold the letters patent, were liable to pay the installments. Cherry v. Heming, 2 Exch. 557; 17 L. J., Exch. 305. Action for money payable by the defendant to the’ plaintiff, due by agreement, in respect of a manure manufactured or sold by the defendant pursuant to the plaintiff’s permission, such manure having been manufactured by means of the use of an invention mentioned in letters patent granted to the plaintiff. Plea, that at the time of the agreement, and since, the letters patent were void; that the defendant was, before and at the time of the agreement, entitled as of right, and without permis- sion of the plaintiff, to use the invention and sell the manure} and there was not any consideration for the agreement: Held, that the action was upon an executed consideration, and that the plea was no answer. Lawes v. Purser, 6 El. & Bl. 930; 3 Jur. N. S.1825 26 Ls Js, Q. B. 25. A. having obtained a patent for an invention, of which he supposed himself the inventor, agreed to let B. use it upon pay- ment of an annual sum secured by bond; this sum was paid for several years, when B, discovering that A. was not the inventor, but that it was in public use before A. obtained his patent, brought an action to recover back the amount of the annuity paid: Held, that he could not recover. Taylr v. Hare, 1 N. R. 260. By an agreement, after reciting that the plaintiff had lately invented an improved composition or material to be employed in waterproofing or rendering woven fabrics impervious to moisture, for which he had duly obtained provisional protection, and had obtained a certificate of protection, it was agreed between them for the considerations therein mentioned, and in consideration of a further sum of 350/. to be paid on the completion of the 2 72 DIGEST OF necessary specification and grant of the letters patent, to transfer and make over to the defendant all his interest in the invention or improvement thereof, and all benefit to be derived from the provisional protection, or from any letters patent to be there- after granted for the invention. In an action on this agreement to recover the 350/. the defendant pleaded that the plaintiff had not invented an improved composition or material to be employed in waterproofing or rendering woven fabrics impervious to mois- ture: Held, that the plea was bad. Smith v. Buckingham, 18 W.R. 314; 21 L. T., N. 8. 819—Q, B. 4, Royalties. One who makes a patent article under a license from the in- ventor, can not, in an action against him for royalties, set up any objection to the novelty or utility of the invention, or the validity of the specification; but, if the claim in the specifica- tion is susceptible of two constructions, one of which would make the specification bad, and the other and more natural one would make it good, it is competent to him to insist that the latter is the true construction. Trotman v. Wood, 16 C. B., N. S. 479. Payment of royalties on letters patent can not be refused on the ground of want of novelty inthe invention. Noton v. Brooks, 7H. & N. 499; 8 Jur, N.S. 155; 10 W. R. 111. A declaration stated that on the 16th of March, 1858, an agreement was made between H. and the plaintiff that a patent of the plaintiff’s for an alloy should be assigned to H., H. paying to the plaintiff, by way of royalty, 1d. per pound for each pound of alloy made or used by him under the letters patent during the existence of the letters patent, the royalty to be accounted for every six months after the date of the letters patent, or from making any of the alloy, with a covenant for further assurance by the plaintiff that, on the 13th of November, 1858, by deed, between the plaintiff and H., the letters patent were assigned to H., subject to the payment of the royalty upon every pound of alloy which should be manufactured by H., and H. covenanted to pay Id. per pound for each pound of the alloy which he should make or sell; that on the 17th of December, 1858, the defend- s ENGLISH PATENT CASES, 73 ant, in consideration of 250/., agreed to purchase the right of the plaintiff, “Sin an agreement entered into with H., dated March, 1858, to receive a royalty of 1d. per pound on the metal sold under the patent specified therein; the second installment to be paid continually; otherwise the 250/. to be paid on the 23d proximo to be considered as full purchase money for the plaint- iff’s tight in the agreement.” Breach, that the defendant had not paid the 250/. A plea set out the deed of November 13th, which reciting that the plaintiff had agreed to assign the patent to H., H. paying rd. per pound on the alloy which he should manufacture and vend, the plaintiff assigned to H., subjected to the payment of a royalty of 1d. per pound on every pound of alloy manufactured by him, to be ascertained in manner and at the times therein mentioned. And H. covenanted to pay a royalty of 1d. per pound on every pound of alloy which he should make and sell, to be paid quarterly, the first payment to be made on the quarterly day next after the vending of any of the alloy; and, for the purpose of ascertaining the quantity sold, to keep an account of the quantity made and vended, provided that if H. neglected to supply any person desirous of purchasing alloy, it should be lawful for the plaintiff to manufacture and vend the alloy, and use the invention for his own use; that the plaintiff accepted the deed and agreement thereon in the place of the previous agreement, and exonerated H. from any further performance of the agreement; that the defendant, when he entered into the agreement, had no knowledge of the deed or of the exoneration of H.; that the defendant meant to buy the royalty under the agreement, and not under the deed; and that he had no knowledge of the provision in the deed that the plaintiff was to be at liberty to make the alloy for his own use. Replication, that before action the defendant had notice of the deed, and did not, within a reasonable time, repudiate or give any notice to the plaintiff of his intention to repudiate his agreement: Held, first, that the plea was a good answer to the action, inasmuch as it showed that the plaintiff had, by the deed, incapacitated himself from giving to the defendant that which he had bought. Webster v. Newsome, 5 H. & N. 42. Held, secondly, that the replication was bad. Jd, 74 DIGEST OF A patentee of an invention for improved beaters for threshing machines, granted a license to C. to make, manufacture, and sell machines, as described in the specification, for a term of years, and during the period to apply the invention to other machines made, or to be made, paying a royalty of 1/. for every threshing-machine manufactured by them, and the like sum for every machine made, or to be made, to which the invention should be wholly or in part applied by them; and they cove- nanted to affix royalty plates to every new and altered machine which should be manufactured or applied by them: Held, that C. was not intended to pay the royalty merely on every thresh- ing machine, but that the true construction of the license was, that they were to pay on all beaters manufactured by C. accord- ing to the patent, and applied to machines originally, or by way of renewal. Goucher v. Clayton, 11 Jur., N.S. 462; 13 L. T., N. 8. rrr—V.-C. W. A declaration set out an indenture, containing a license from A. (the patentee) to B., his executors, administrators, and assigns, to make and sell certain iron pipes, yielding and paying to A.a royalty of —/. for every ton of pipes which B., his executors, etc., should make and sell in pursuance of the license, but such patent rent to be paid on or before the twenty-first day after each quarter; and B. covenanted with A. that he would, seven days after each quarter, deliver to A. an account of pipes sold within the quarter, and would within twenty-one days after the quarter pay to A. the money as should, upon the face of such account, be payable by way of royalty. The declaration, after setting out an assignment of the patent license from B. to the plaintiff, ultimately showed an assignment of the license to R. and M., in trust for the defendants, with a covenant by the defendants with the plaintiff to pay the money and perform the covenants payable and to be performed in respect of the license, and that the defendants made and used, in pursuance of the license, iron tubes, and that thereby sums of money became payable to A. in respect of the license. Breach, non-payment by the defendants of the sums of money ; and further, non-deliv- ery of a true account in writing of the quantity of iron tubes sold: Held, that the declaration contained a good breach, the ! ENGLISH PATENT CASES. 75 covenant to render an account being auxiliary to the covenant to pay, and the defendants being shown to be the licensees of A., and to have made the pipes under.such license. Bower v. Hodges, 17 Jur. 1057; 22 L. J., C. P. 194; 13 C. B. 765. In a deed by which A. assigned to B., for a term of years, an exclusive license to use a patent after covenants for payment of sums in the nature of royalties, there was the following clause : “That if it shall happen in any year during the term that the royalties or sums of money covenanted to be paid shall not amount to’2,000/., then B. shall, within fourteen days after the expiration of any year in which it shall so happen, pay to A. such a sum of money as with the royalties will amount to 2,000/. for that year; or if B. shall at any time make default in payment of such sum within the time appointed for payment, then it shall be lawful to and for A., by writing signed by him, and indorsed on the deed or duplicate thereof, to declare that the deed, and the license and power thereby granted, shall cease and deter- mine:” Held, that this was not an absolute covenant by B. to pay 2,000/. a year during the term, but only empowered A. to put an end to the grant upon non-payment of thatsum. Tielens v: Hooper, 5 Exch. 830; 20 L. J., Exch. 78. By an indenture reciting that by a deed, the plaintiff licensed the defendant to use his patent during a term, paying a stated royalty. By the deed declared upon, reciting the earlier deed, and a subsequent contract of the defendant with the plaintiff for purchase of half the patent, subject to the former deed, but with benefit to the defendant of half the royalty, the plaintiff, in pur- suance of the contract, and in consideration of 2,200/. to be paid to him by the defendant, assigned the patent to a trustee, subject to the previous indenture, and in trust to apply the sums accruing from licenses to use the patents, and likewise to apply the royalties for or under the direction of the plaintiff and de- fendant, in specified proportions, and to stand possessed, as to one moiety of the letters patent, for the plaintiff, as to the other for the defendant. The plaintiff covenanted that for and not- withstanding anything done by him, the patent was valid, and should be held and enforced by the trustees without lawful let by the plaintiff, or any claiming under him, or by his act and. 76 : DIGEST OF default ; and the defendant covenanted with the plaintiff to pay him the 2,200/. by installment. To a declaration for non-pay- ment of such installments, the defendant pleaded, that the plaintiff was not the first inventor, by reason whereof the pat- ent, before the supposed breach of covenant, was void: Held, that the plea was bad; for first, no eviction was stated; and in fact, the matter pleaded did not go to the whole consideration, since, even if the patent was void, the first executed deed would have bound the defendant by estoppel to payment of the roy- alty; and by the latter deed he became entitled to half the royalty ; and secondly, that the covenant to pay the 2,200/. was -an independent covenant, and capable of being enforced whether the plaintiff's covenants were performed or not. Cutler v. Bower, 11 OQ. B., 973; 12 Jur. 721; 17 L. J., Q. B. 217. VI. INFRINGEMENT. 1. What is an Infringement. Where a patent is for an invention consisting of several parts, the imitation of any part of the invention is an infringement of the patent. Smith v. London and Northwestern Railway Company, 2 El. & Bl. 69; 17 Jur. 1071. A declaration stated, that certain persons, through whom the plaintiffs claimed, were “‘ the inventors of certain improvements in giving signals and sounding alarms in distant places by means of electric currents transmitted through metallic circuits ;” and that the defendants had ‘wrongfully used and put in practice the said invention.” In the title of the patent and in the specifi- cation the electric currents were throughout described as being transmitted through metallic circuits, but no claim was made to metallic circuits as a substantive invention: Held, first, that the finding of the jury of an infringement in respect of one of the improvements was a sufficient finding of the infringement alleged in the declaration. Electric Telegraph Compnny v. Brett, 10 C. B. 838; 15 Jur. 579; 20 L. J., C. P. 123. Held, secondly, that inasmuch as the patentees, by the speci- fication, made no claim to metallic circuits, but only an im- proved method of using the electric currents, the specification ENGLISH PATENT CASES. 77 must be considered as comprising all circuits which are metallic, as far as it is material to the improvements claimed ; and that, therefore, any infringement of such improvements, although the electric current should not be wholly transmitted through a me- tallic circuit, was an infringement of the patent. Jb. Held, thirdly, that whatever might have been the case if the method of transmitting the electric current adopted by the de- fendants had been publicly known at the time of granting the patent, yet that the title gave sufficient notice to any person secretly acquainted with that discovery. 2. Where, in an action for infringing a patent for blocks for pavement, the plaintiff claimed as his invention that his block was beveled both inward and outward on the same side of the block, and it was alleged that the defendant’s blocks were an imitation of the plaintiff’s as two of the defendant’s blocks were equivalent to one of the plaintiff's: Held, that it was for the jury to say whether the defendant’s blocks were, in effect, the same as the plaintiff’s, although no single block of the defend- ant’s was beveled both inward and outward on the same side. Macnamara v. Hulse, Car. & M. 471—Abinger. The question of infringement or not is for the jury and not for the judge, although there is no question with respect to whether the defendant has or has not used the particular ma- chine or process which is alleged to be an infringement. De /a Rue v. Dickinson, 7 El. & Bl. 738; 3 Jur., N.S. 841. The specification of a patent for an invention of ‘ improve- ments in the manufacture of envelopes,” described a machine in which a piece of paper was held upon a platform, whilst the flaps of the envelope were folded, and concluded by claiming ‘the so arranging machinery that the flaps of envelopes may be folded thereby, as herein described :” Held, that a machine in which flaps of an envelope were folded might be an infringement of the patent, although the envelope was not held down during the operation of folding. Jb. The specification of a patent for an invention with a similar title, described and claimed ‘the application of gum or cement to the flaps of envelopes by apparatus acting in the manner of 78 DIGEST OF surface printing:” Held, that an apparatus for applying the gum might be an infringement, although it acted only in part in the manner of surface printing, according to the description con- tained in the specification. Jb. The precipitation of animal and vegetable matter from sewage water, by means of byrate of lime, for agricultural purposes, is a good subject-matter for a patent ; and if another person uses the same process and obtains a product, not for the purposes of commercial profit, but for the purpose solely of deodorizing and purifying the sewage water, he is not guilty of an infringement of the patent. Higgs v. Goodwin, El. BI. & El. 529; 4 Jur., N. S. 258; 27 L. J., Q. B. 145. Affirmed on appeal, 27 L. J., QO. B. 411 —Exch. Cham. The sale of an article of the same fabric, and made in the same manner as the article which is the subject of the patent, is evidence of a using of the invention within the prohibitory clause of the letters patent. Gvzbson v. Brand, 4 M. & G. 179; 4 Scott, N. R. 854. Ignorance of the existence of a former invention is no answer to a charge of infringement, where the second invention is cap- able of being accurately represented as an imitation of the former. Curtis v. Platt, 11 L. T., N. 8. 245—C. The merely ‘‘ exhibiting to sale” imitations of an invention is not any infringement of the patent. Minter v. Williams, 5 N. & M. 647; 4A. & E. 251; 1 H. & W. 585. But the manufacture of a patent article for the purpose uf sale and offering it for sale, although no sale is actually effected, is a user of the invention. Oxley v. Holden, 8 C.B., N.S. 666; 30 L. J., C. P. 68. A sale in this country of a patent article imported from abroad is a user of the invention within the prohibition of the letters patent. Walton v. Lavater, 8 C. B., N.S. 162; 6 Jur., N. 5. a2s77 20 L. J.C. P. 2755 3 LL. Ts, N. Sapa, It is sufficient to constitute user of a patented article, that the same sort of benefit, however temporary and indirect, has been in fact derived from it in its ordinary use. It is immaterial whether the use of the article is active or passive. Betts v. ENGLISH PATENT CASES. 79 Neilson, 11 Jur., N. 8. 679; 34 L. J.. Chanc. 537; 13 W.R. 1028; 12 L. T., N.S. 719; 3 De G,, J. & S. 82. Ale was sent from Scotland to England, for transhipment to India, in bottles covered with capsules made abroad, according to a mode of manufacture patented in England only: Held, that the transitory resting in England of the bottles so covered constituted a user in infringement of the English patent. Jd. 8S. P.and 8. C. 37 L. J., Chanc. 321: 3 L. R., Ch. 429—C. B. held an English patent for the manufacture of a combined metal, to be (among other purposes) applied as capsules to put on bottles. T. (who resided and carried on the business of a brewer in Scotland) purchased capsules, made according to the process described in B.’s patent, from a foreign manufacturer, and, in Scotland, put these capsules upon his beer bottles, which he then sent to his agents in England for transhipment and ex- portation. ‘There was no evidence that the beer was sold in England for consumption here: Held, that though the capsules were put on in Scotland, their user while the beer remained here was a continued user of them which amounted to an in- fringement of the patent. Jd: 8. P. and S. CG, 5 L.R., H. L. 1. Affirming decision cited supra. . If there is a patent for a combination of machinery originally directed to one purpose, and a person afterward adopts that com- bination in order to make it minister to another and additional purpose, his doing so constitutes an infringement of the patent. Per Lord Westbury, in Cannington v. Nuttall, 5 L. R., H. L. 205. Though the manufacture in this country of the several parts of a patented machine, and the exportation of those parts, may not be an infringement of the patent, the machine being the novelty, and the parts being old, it is otherwise where the part exported is itself the patented invention. Goucher v. Clayton, 11 Jur., N.S. 462; 13 L. T., N.S. r15—V.-C. W. An infringement of any part of a patented process is action- able, if that part is of itself new and useful, so as that it might be the subject-matter of a patent, and is used by the infringer to effect the object proposed, either wholly or partially, by the pat- 80 DIGEST OF entee. Patent Bottle Envelope Company v Seymer, 5 C. B., N.S. 164; 5 Jur, N.S. 174. A patent for an entire combination is not infringed by a differ- ent combination, for the same object, of the same elements though important, or of equivalents for them, if not a mere colorable evasion or imitation. Curtis v. Platt, 35 L. J., Chanc. 852—H. L. If a patent is taken out for an invention by means of a com- bination, the use of a subordinate part of the combination is no infringement of the patent, unless such part is new and material. White v. Fenn, 15 W. R. 348; 15 L. T., N.S. 505—C. P. W. took out a patent for “improvement in the manufacture of frills and ruffles, and in the machinery or apparatus employed therein.” The specification described a process of plaiting fab- rics by a reciprocating knife in combination with a sewing ma- chine. The first claim was for the general construction, arrange- ment, and combination of machinery for producing plaited frills or trimmings in a sewing machine; the second was for the ap- plication and use of a reciprocating knife for crimping fabrics in a sewing machine; and the third for the peculiar manufacture of crimped or plaited frills or trimmings “as hereinbefore de- scribed ”’ and illustrated by a drawing. A patent was afterward taken out by O. for “ improvement in doubling, folding, or plait- ing woven or other web fabrics, and in the machinery or appa- ratus employed therein or connected therewith.” In this O. imitated, with slight variations, W.’s reciprocating knife, but did not combine its use with a sewing machine: Held, first, that W.’s patent was not for the manufactured product, but for the process of manufacturing it. Wright v. Hitchcock, 5 L. R., Exch. 37; 39 L. J., Exch. 97. Held, secondly, that W.’s patent was not limited to the man- ufacture of plaited fabrics by the knife in combination with a sewing machine. Jd. , Held, thirdly, that O.’s process was therefore an infringe- ment. Jb. The defendants bought and sold, in the way of trade, articles manufactured by O.’s process under the description of ‘ Orr’s ENGLISH PATENT CASES. 81 patent machine-made plaiting,” but they were not aware that Orr’s process was an infringement, nor of the existence of W.’s patent: Held, that they were guilty of an infringement of W.’s patent. Jb. 2. Where Infringed. A patent granted for the United Kingdom, the Channel Islands, and the Isle of Man, is not infringed by acts done be- tween Malta and Alexandria. Newall v. Elliott, 10 Jur., N. S. 954; 13 W. R. 113 10 L. T., N.S. 792—Exch. 3. Actions by and against Parties. Assignees. |—Where there are two assignees of a patent, and one of them dies, an action for an infringement in his lifetime descends to the survivor, who is entitled to recover the whole damages. Smith v. London and Northwestern Railway Company, 2 El. & Bl. 69; 17 Jur. to71. An assignee of a separate and distinct part of a patent is en- titled to sue for an infringement of such part, without joining persons who are interested only in the other part of the patent. Dunnichiff v. Mallet, 29 L. J.. C. P. 70; 7 C. B., N.S. 209. So the assignee of two several moieties of a patent has a suf- ficient legal interest in the patent to sue for an infringement. Walton vy. Lavater, 29 L. J., C. P. 275; 8 C. B., N. S. 162. Defendants.|—The directors of a company are personally re- sponsible for the infringement of a patent by their workmen, notwithstanding such infringement may be in contravention of orders. Betts v. De Vitre, 37 L. J., Chanc. 325; 3 L. R,, Chanc. 429; 18 L. T., N. S. 165. 4. Pleadings. Declarations.|—A form of declaration for the infringement of a patent is given in Schedule (B), No. 31, to the C. L. P. Act, 1852. It is material to aver that the patentee has complied with the proviso which requires him to enroll a specification within six 82 DIGEST OF calendar months. Bentley v. Goldthorp, 2 D. & L. 795; 1 C. B. 368; 9 Jur. 470; 14 L. J., C. P. 115. Several Pleas.|—Pleas denying that parts of the invention were known, and are not the subject of letters patent, will not be allowed with pleas denying the novelty of the invention as a whole, and that the invention was a new manufacture within the meaning of 21 Jac. 1,c.3. Walton v. Bateman, 4 Scott, N. R. 3973 3 M. & G. 773. In an action for an infringement of a patent, for six distinct improvements in an old machine, the defendants were allowed to plead that two parts of the invention were not, nor was either of them, a new manufacture within the statute of James. But the court refused to allow them to plead, that, as to a part, A. was the first and true inventor; and that, before the grant of the patent, A. and others publicly used and exercised in England a part of the invention. Bentley v. Keighley, 6 M. & G. 1039; 7 Scott, N. R. 987; 1 D. & L. 944; 13 L. J., C. P. 167. A plea alleging that the plaintiff falsely represented to the Queen that the invention was an improvement ; that her Majesty, confiding in such representation, made the supposed grant; that such representation was false; and that the invention. was not an improvement, might properly be pleaded with a plea that the invention was of no use to the public, the two pleas not being substantially the same. Bedells v. Massey, 7 M. & G. 630; 8 Scott, N. R. 337; 8 Jur. 808; 13 L. J., C. P. 173. The court allowed, first, not guilty; secondly, the patentee not the inventor; thirdly, non concessit ; fourthly, the invention not a manufacture ; fifthly, the invention not new; and, sixthly, a traverse of the specification, on an affidavit of the defendant’s attorney, that he was advised and believed that the defendant had just ground to traverse the several matters. Platt v. Elce, 8 Exch. 364; 17 Jur. 188; 22 L. J., Exch. 192. In an action for infringing a patent, to which a disclaimer as to part has been entered, the defendant will not be allowed to plead that the whole invention was not new, and also that the undisclaimed part was not new. Clark v. Kenrick, 12 M. & W. 219; 1 D. & L. 392; 13 L. J., Exch. 6. ENGLISH PATENT CASES. 83 The court refused to strike out a plea, that the instrument in writing in the declaration mentioned did not particularly de- scribe and ascertain the nature of the invention in the letters patent. ib. The court disallowed a plea, that the plaintiff, having petitioned for letters patent, represented to the solicitor-general, to whom the matter was referred, that the invention consisted of matters mentioned in a paper writing exhibited to the solicitor-general, who confiding therein, reported that the letters patent might be granted; that after the grant the plaintiff enrolled his specifica- tion and falsely described his invention therein, and that so much of the invention as was stated in the specification was not part of the invention in the paper writing and letters patent men- tioned, and was not part of the invention for which the letters patent were granted. Hancock v. Noyes, g Exch. 388; 2 C. L. R. 1060; 23 L. J., Exch. ro. Effect and Proof of Pleas.|—A plea that the invention is not a new manufacture within 21 Jac. 1, c. 3, involves the question, not only whether the alleged patent is new, but also whether it is a manufacture within the meaning of the statute. Walton v. Bateman, 3 M. & G. 773; 4 Scott, N. R. 397. In an action by the assignee of a patent for an infringement non concessit is a good plea. Bennett v. Smith, 2 D. & L. 380; 13 M. & W. 552; 8 Jur. 1634; 14 L. J., Exch. 47. When letters patent were granted for improvements in ap- paratus for the manufacture of certain chemical substances, and the jury found that the apparatus was not new, but that the patentee’s mode of connecting the parts of that apparatus was new, the court directed the verdict to be entered for the defend- ant upon an issue taken upon the novelty of the invention. Gamble v. Kurtz, 3 C. B. 425. A declaration alleged that the plaintiff was the inventor and the grantee of the patent, plea non concessit: Held, that the Plaintiff having, at the trial, put in the letters patent and specifications, and shown the novelty of the invention, was entitled to a verdict, on the issue joined on the plea. Nickels v. Rass, 8 C. B. 679. 84 DIGEST OF » Pleas which deny that the plaintiff was the true and first in- ventor, and that the manufacture was not new, do not bind the plaintiff to the description of the invention as given in the specification, so as to preclude him from giving evidence to show that the invention does not consist, as might be inferred from the specification in the use of several new matters, but in the new combination of several old matters. Bateman v. Gray, 8 Exch. 906; 22 L. J., Exch. 290. To a declaration stating that the plaintiff was the first in- ventor of a new manufacture, and that the defendant infringed his patent right, a plea that the invention was not a matter for which letters patent would by law be granted, does not put in issue the novelty of the invention. Booth v. Kennard (in error), 1 H. & N. 527; 2 Jur., N.S. 21; 26L. J., Exch. 23—Exch. Cham. In an action for breach of an agreement to make the nec- essary periodical payments for stamp duty, to keep alive a pat- ent which had been assigned to the defendant, a plea of non concessit, in the absence of any fraud, or of any warranty that the invention was new, or was a manufacture within the statute of James, puts in issue merely the fact of the Queen having granted the patent, and not its validity. Smith v. Neale, 2 C. B., N. 8.674 3 Jun, Nz 8. 516; 26 L. J; 'C. P, 149. In an action by an assignee, a plea that the property is not vested in him is bad, as embarrassing, and will be set aside. Cottula v. Soames, 3 F. & F. 93—Mellor. To an action for the infringement of a patent for improve- ments in a cabriolet, the general issue, that the improvements were not new, and that the plaintiff was not the true and first inventor, were pleaded: Held, that, on this state of the plead- ings it could not be contended that the patent was illegal, as being a monopoly. Gillett v. Wilby, g C. & P. 334—Coltman. Held, also, that though all the improvements claimed must be shown to be new, yet it need not be shown that the defendant’s cabriolet was an imitation of the whole of them; but an imita- tion of one was sufficient to maintain the action. Jb. A plea which refers for explanation to drawings not traced on the record, but annexed to it, is inadmissible. Betts v. Walker, s ENGLISH PATENT CASES. 8 5 14 Q. B. 363; 14 Jur. 647. See Sealy v. Browne, g Jur. 537; 14 L. J., Q. B. 169. . y A plea that the invention is not of such use to the public as to make it a sufficient consideration for the grant of the letters patent is bad. Jb. Upon an issue of not guilty to an action for infringement of a patent, the question whether there was a fraudulent evasion of the patent does not arise. Stead v Anderson, 4 C. B. 806; 11 Jur. 877; 16 L. J., C. P. 250. In determining whether a defendant has infringed a patent, no question arises as to his intention, but only as to his acts. Jb. A plea that the plaintiff was not the first and true inventor, is proved by showing a publication before the invention. Jd. When the specification described a different and more exten- sive invention than that for which the patent was granted: Held, that this objection might be taken either on a plea that the pat- entee did not particularly describe the nature of his invention, or on a plea that the invention described was not the invention for which the letters patent were granted. Croll v. Edge, g C. B. 4793 14 Jur. 5533 9 L. J., C. P. 261. A declaration averred that by indenture between the grantee and the plaintiff, letters patent were duly assigned to the plaintiff. Plea, that the letters patent were not assigned as alleged: Held, first, that the allegation amounted to a statement not only that the indenture had been executed, but that the letters patent had been duly assigned to the plaintiff, so that he had a right to maintain the action as the sole and exclusive proprietor, in pur- suance of the 15 and 16 Vict. c. 83, and therefore the defend- ant might show that the assignment was not registered. Chollet v. Hoffman, 3 Jur., N.S. 935; 26 L. J.. Q. B. 249; 7 El. & Bl. 686. Held, secondly, that the defendant might insist on the want of registration of the assignment, notwithstanding his notice of objections made no reference to the assignment, inasmuch as the requirements of the 5 and 6 Will. 4, c. 83, as well as of the 15 and 16 Vict. c. 83, were confined to notices affecting the val- idity of the patent. Jb. 86 DIGEST OF Particulars of Breaches and Objections. Statutes.|—By 15 and 16 Vict. c. 83, s. 41, im any action in any of the superior courts of record at Westminster for the. infringements, of letters patent, the plaintiff shall deliver with his declaration par- ticulars of the breaches complained of in the action; And the defendant, on pleading thereto, shall deliver with bis pleas particulars of any objections on which he means to rely at the trial in support of the pleas in the action ; And at the trial of such action no evidence shall be allowed to be given in support of any alleged infringement or of any objections im- peaching the validity of such letters patent which shall not be con- tained in the particulars delivered: Provided, always, that the place or places at or in which and in what manner the invention is alleged to have been used or published prior to the date of the letters patent shall be stated in such par- ticulars ; Provided, also, that it shall and may be lawful for any judge at chambers to allow such plaintiff or defendant to amend the particulars delivered, upon such terms as to such judge shall seem fit. (A similar and a more comprehensive enactment than that contained in 5 and 6 Will. 4, c. 83, s. 5.) Of Breaches.|—In an action for infringement of Talbot’s patent for improvements in obtaining pictures or representations of objects, the court refused to compel the plaintiff in his par- ticulars of breaches to specify particularly the persons and oc- casions, and the particular parts of the specification alleged to have been infringed, although the declaration merely averred an infringement in general terms. Talbot v. La Roche, 15 C. B. 310. The particulars of breaches can not be called in aid of the defective particulars of objections. Palmer v. Cooper, 9 Exch. 231; 2C. L. R. 430; 23 L. J., Exch. 82. Objections.|—The provisions contained in these statutes, as to notice of objections for infringement of a patent, are, confined to objections affecting the validity of letters patent; and a de- ENGLISH PATENT CASES. 87 fendant may object to a validity of an assignment of the patent, though no notice of such objection has been given. Chollet v. Hoffman, 26 L. J., Q. B. 249; 7 El. & BI. 686. A particular of objections must be precise and definite; it is not sufficient to say that the improvements, or some of them, have been used before: the defendant should point out which. Fisher v. Dewick, 4 Bing. N. C. 7063; 6 Scott, 587; 6 D. P. C. 739; 1 Arn. 282. A defendant pleaded, first, that the nature of the invention and manner in which it was performed were not particularly de- scribed in the specification; and, secondly, that the invention was not new; and the objections delivered with the pleas stated, first, that the specification did not sufficiently describe the nature of the invention and the manner in which it was to be per- formed ; and, secondly, that the invention was not new, as being wholly or in part used and made public before the obtaining of the letters patent: Held, that the first of these objections was sufficient, but that the second was bad, and ought to have pointed out what portions of the invention were previously in use. Heath v. Unwin, 2 D., N.S. 482; 10 M. & W. 684; 6 Jur. 1068; 12 L. J., Exch. 47. The notice of objections ought to contain more particular information than that which is necessarily conveyed by the pleas. Jones v. Berger, 5 M. & G. 208; 6 Scott, N. R. 208; 7 Jur. 883; 12 L. J.,C. P. 179; 8. P. Betts v. Walker, 14 Q. B. 363. When a defendant pleads that a patentee was not the first in- ventor, and that the alleged invention was not new, he is not bound to state in his objections who was the first inventor, or under what circumstances the alleged improvements had been used previously. Russell v. Ledsam, 11 M. & W. 647; 1 D. & L. 3473 7 Jur. 585; 12 L. J., Exch. 439; Heath v. Unwin, 2 D., N. S. 482; 10 M. & W. 684; 6 Jur. 1068; 12 L. J., Exch. 47; S. P. Bulnois v. Mackenzie, 4 Bing. N. C. 127; 6 D. P. C. 2153 5 Scott, 489. Where a defendant pleads that the report of the judicial com- mittee of the privy council on which the letters patent were 88 DIGEST OF granted was obtained by fraud, covin, and misrepresentation, he ought to state in his notice of objections the species of fraud, covin, and misrepresentation on which he intends to rely. 1b. Notices of objection were, first, that the patentee did not, by the specification, sufficiently describe the nature of the inven- tion; secondly, that he had not caused any specification suf- ficiently describing the nature of the invention to be enrolled: Held, that the last objection was not sufficiently precise. Leaf v. Topham, 2 D. & L. 863; 14M. & W. 146; 14 L. J., Exch. 231. A notice of objections stated that the invention was known to, and used by, M. R., J. W., and others, before the grant of the patent. The court refused to strike out the words ‘‘and others.” Bentley v. Keighley, 8 Scott, N. R. 372; 7M. & G. 652; 1D. & L. 944; 13 L. J., C. P. 167. The court has a general power to order a particular of the alleged infringements. Electric Telegraph Company v. Nott, 4 C. B. 462; 11 Jur. 590; 16 L. J., C. P. 319. A defendant can not, by his notice of objections, go beyond his pleas. Mcnamara v. Hulse, Car. & M. 471—Abinger. Where a defendant relies on a general user of the supposed invention, it is sufficient to state in his particulars of objection that the invention was used by manufacturers generally at a par- ticular place, without meaning any person or specifying any manufactory. Palmer v. Wagstaff, 8 Exch. 840; 17 Jur. 581; 22 L. J., Exch, 295. A. plaintiff’s particulars of breaches can not be called in aid of the defective particulars of objection. Palmer v. Cooper, 9 Exch. 231; 2 C. L. R. 430; 23 L. J., Exch. 82. Generality.|—If the objections are not sufficiently specific, the plaintiff’s course is to apply to a judge for an order for the de- livery of a more specific notice; but if he omits to do so, he can not object to the generality of the notice at the trial: the only question then is whether the notice is sufficiently large to include the objections relied on by the defendant. Neilson v. Harford, 8 M. & W. 806. ENGLISH PATENT CASES, 89 If the particulars of objections delivered with the pleas are too general, the party who means to object to them must procure an order for better particulars. Hull v. Bollard, 1 H. & N. 134; 25 L. J., Exch. 304. The act does not prevent defective particulars from being available at the trial, and the plaintiff can not resist the admis- sion of evidence, which is within the literal meaning of the par- ticulars, on the ground that the statement is too general, and that the particulars do not give the required information as to the place in which the invention is alleged to have been used. Jb. In an action for infringing a patent for machinery for grinding corn, the defendant delivered the following particulars: that the improvement was not new, and that the same had been gener- ally known and publicly used in corn-mills for many years pre- viously: Held, that evidence on the part of the defendant was admissible of a user by two millers at Chester of the invention in question prior to the granting of the patent, such evidence being within the literal meaning of the words in the particulars, and that the plaintiff was too late in his objection to the admissi- bility of it, it being his duty, if he objected to the generality of the particulars, to apply to have them amended. Jd. Operation and Effect.|\—The objections are not part and par- cel of the record, so as to be incorporated with the issues raised, and show that those specific objections are in issue. Reg. v. Mill,1 L., M. & P. 695; 10 C. B. 379; 15 Jur. 59; 20 L. J., C. P. 16. 6. Interrogatories and Discovery. Where a defendant does not deny the infringement, it is no ground for his refusing to answer interrogatories, that the answers would expose persons to whom he had sold the patented articles to action. Tetley v. Easton, 18 C. B. 6433 25 L.J.,C. P. 293. But the court refused to allow a plaintiff to administer inter- rogatories before declaration, it appearing that the cause of action arose more than six years before the action was com- 90 DIGEST OF menced. ones v. Pratt, 6 H. & N. 697; 7 Jur., N. S. 978; 30 L. J., Exch. 365 ; 9g W. R. 696; 4 L. T., N.S. 4rr. A plaintiff in a patent case, where the novelty of the inven- tion is denied by the answer in equity, has no right to a discov- ery of the particulars on which the defendant relies, as showing a user of the thing patented prior to the date of the patent. Daw v. Eley, 2 Hem. & M. 725. In an action by a patentee against his licensee, on a covenant to pay for using machines made with his invention, and to make none without ; first, breach in paying for roving machines made with the invention; and secondly, in making machines without it, the defendant having, in answer to interrogatories, admitted the making of hundreds of roving machines, but not with the invention, and declared that he could not state to whom they were sold, nor give any further information about them without disclosing his own evidence, and the plaintiff claiming in respect of all the machines the defendant had made under one or other of the covenants ; and asserting that he had seen some of them which had his invention applied: Held, that the defendant was entitled to such particulars as should ascribe those portions of the machines to which the plaintiff contended that his invention had been applied, so as to enable the defendant to understand as far as possible the nature of the machines as to which he was to be charged under either of the covenants; and that it was no answer to the application for such particulars, that the defend- ant’s answer to the interrogatories was insufficient to enable the plaintiff to furnish the particulars ; for if the answers were insuf- ficient, they should have been objected to. But the plaintiff was allowed to inspect the machines on the premises of the de- fendant, and also to examine him viva voce. ‘Jones v. Lee, 25 L. J., Exch. 241. 7. Inspection. By 15 and 16 Vict. c. 83, s. 42, # any action in any of the su- perior courts of record at Westminster for the infringement of letters patent, it shall be lawful for the court in which such action is pend- ing, if the court be then sitting, or if the court be not sitting then for a judge of such court, on the application of the plaintiff or defendant ENGLISH PATENT CASES. gI respectively, to make such order for an inspection, and to give such direction respecting such action and inspection and the proceedings therein, as to such court or judge may seem fit. An application to inspect the defendant’s machinery may be made by the plaintiff before the delivery of the declaration, in an action of infringement of the plaintiff’s patent ; but such in- spection will not be granted as of course, or without ghe party applying for it showing that the inspection is material for the purposes of the cause. Amies v. Kelsey, 1 B. C. C. 1235 16 Jur. 1047; 22 L. J., Q. B. 84—Crompton. The court will not grant an order for an inspection of a machine, upon an affidavit, that the machine used by the defendant is the same for which the plaintiff has obtained a patent. Shaw v. Bank of England, 22 L. J., Exch. 26. The inspection intended by the above provision is an inspec- tion of the instrument or machinery manufactured or used by the parties, with a view to evidence of infringement, and not an inspection of books. Vidi v. Smith, 3 El. & Bl. 969; 1 Jur., N. 5. 143 23 L. J., Q. B. 342. In an action for the infringement of a patent for a mode of making veneers or moldings, the court refused to order an in- spection of the defendant’s manufactory and machinery, it being doubtful, on the plaintiff’s affidavit, whether his patent was for the kind of veneering or for the process by which it was done, and the defendant positively swearing that he used no machinery in the process. Meadows v. Kirkman, 29 L. J., Exch. 205. In an action by an assignee of a patent against the publisher of a newspaper who had, bought and used the article, the plaint- iff having applied to the coart to compel the defendant to “ per- mit the plaintiff, his manager and witnesses, to inspect the type of the defendant used by him in printing the newspaper, and, if necessary, to take specimens for the purpose of being analyzed, in order to produce evidence at the trial of the cause,’’ the court refused the application. Patent Type-founding Company v. Walter, 5 H. & N. 192; 29L. J., Exch. 207; 6 Jur., N. S. 103. But the plaintiff subsequently filed a bill in equity against the defendant, and an order was made for inspection and the de- 92 DIGEST OF livery of a competent portion of the type for the purposes of analysis. §. C., Johns. 727; 8 W. R. 353. 8. Evidence of Infringement. In general.|—When a question of novelty, or infringement, depends merely on the construction of the specification, it is one entirely for the judge; but where it also depends on other cir- cumstances, such as the degree of difference or of similitude be- tween two machines, it is a mixed question of law and fact ; what the jurymen find to have been done is a matter of fact, but the judge must apply that fact according to the rules of law, and is entitled and bound to say whether what has been done amounts to an infringement. Seed v. Higgins, 8 H. L. Cas. 550; 30 L. J., Q. B. 314; 6 Jur., N. S. 1264. The opinion of scientific witnesses as to whether there has or not been an infringement ought to be received. /6.—Lord Wensleydale. The plaintiff obtained letters patent for improvements in the manufacture of iron and steel. In his specification he declared his invention to be the use of carburet of manganese in any pro- cess whereby iron is converted into cast steel, and he described the process which he claimed thus: ‘“‘I do it by introducing into a crucible bars of steel broken into fragments, mixtures of cast and malleable iron, or malleable iron and carbonaceous mat- ter along with from one to three per cent. of their weight of car- buret of manganese.” He then stated that he did not claim the use of the mixture of cast and malleable iron and carbonaceous matter as any part of his invention, but only the use of carburet of manganese, in any process for converting iron into cast steel. The defendant produced the same result, a superior and more valuable description and quality of cast steel, as certainly and more cheaply, by substituting for the carburet of manganese, its elements: viz., oxide of manganese and coal tar, which, being put into the crucible with the iron, according to the evidence of chemists, would form carburet of manganese before the iron was in a state of fusion, and consequently before any combination therewith could take place. The judge told the jury that there was no evidence of infringement: Held, a right direction. ENGLISH PATENT CASES. 93 Unwin v. Heath, 16 C. B. 7133 5 H. L. Cas. 5053 25 L. J., C. P. 8. A patent for the use of a substance in a process is infringed by the use of a chemical equivalent, known to be so at the time of the use, if used for the purpose of taking the benefit of the patent, and of making a colorable variation therefrom. S. P., 13 M. & W. 583; 9 Jur. 231. In a suit to restrain the sale of a patented article, it is in- cumbent on the plaintiff not only to prove the sale, but to prove that the article was not made by himself or his agents. When the owner of a patent manufactures and sells the pat- ented article in a foreign country as well as in England, the sale of the article in one country implies a license to use it in another. But if he has assigned his patent in either country, the article can not be sold so as to defeat the rights of the as- signee. The owner of English patent, manufactured the pat- ented article in France as well as in England. Ina suit to re- strain the sale of the article in England, the plaintiff proved that it was not made at his manufactory in England, but could not prove that it was not made at his manufactory in France. The bill was dismissed with costs. The decision of James, V.-C., affirmed. Betts v. Wilmot, 6 L R., Chance. App. 239—C. In ordinary cases the duty of establishing that the thing pat- ented has been pirated, lies on the patentee, and courts of equity grant limited orders of inspection for the purpose of enabling him to discharge that duty. Such orders can not be granted where the piracy alleged has taken place abroad: Semble, that then it becomes the duty of the defendant to give evidence of a negative character to prove, in answer to the prima facie case made by the patentee, that the process used was of a different character from that which had been patented. Where that neg- ative evidence was not given by the defendant, but positive evi- dence on the part of the patentee was given by one workman that he had been employed at the foreign manufactory, and there saw the article manufactured by a process not distinguishable from that of the patentee: Held, that these circumstances justi- fied the conclusion of identity of material and process, and were 94 DIGEST OF sufficient warrant for the grant of an injunction. Where a pat- ent had been taken out by D. in 1804, and another patent had been taken out by B. in 1849, and B. took proceedings against N. for infringement, to which N. set up as an answer want of novelty, and proved D.’s patent, evidence of all that was done in the trade to which the patent related between the date of D.’s patent and of B.’s patent was admissible on this question of nov- elty. Neitlon v. Betts, 5 L.R., H. Lt. The importation and sale in England of articles manufactured abroad according to the specification of an English patent, is an infringement. Elmslie v. Boursier, 9 L. R., Eq. 2173 39 L. J., Chanc. 328; 18 W. R. 665—V.-C. J. A patentee can not maintain a suit against a retail dealer who unwittingly sells articles which are an infringement of his patent, provided such retail dealer gives full information as to the per- sons from whom he obtained the articles complained of, and promises not to retatl any more. Betts v. Wilmott, 18 W. R. 946—V.-C. J. Declarations of Prior Use.|—In an action for an infringement of a patent taken out in 1849, the defendant, in support of a plea that the invention was not new, gave evidence that O., who was dead, had in 1846 used a process identical with that in the patent. On the cross-examination of the witnesses it appeared that, if O. used the invention and sold the product before the date of the patent, it was only in very small quantities, and that it was not brought into general use; and one of the witnesses was asked in cross-examination whether O. had not sold some of the product to §., and said he had. The plaintiff in reply called S., who gave evidence that in 1850 or 1851, O. sold him a small quantity of the product, and at the time of the sale said that it was a new article, that he did not wish it to be publicly known, and he would sell him all he could manufacture: Held, that evidence of what O. said at the time of that sale was not admissible in reply, as it would not have been admissible in chief on an issue whether O., before 1849, used the invention. Hyde v. Palmer, 3 B. & S. 657; 41 W. R. 433; 7 L. T., N.S. 823. ENGLISH PATENT CASES. 95 9. Questioning Validity of Patent Infringed. Proceedings in chancery for an infringement of a patent, the validity of which was in question, were referred to an arbitrator, who awarded that the patent was not illegal and void: Held. that in an action between the same parties for another infringe ment, the defendant was not estopped from disputing the validity of the patent. Newall v. Elliott, 1 H. & C. 797; 9 Jur., N S. 3593 32 L. J.. Exch. 120; 11 W. R. 438; 7 L. T., N 5. 753- A patentee brought an action for damages for infringement against a firm, who gave judgment by consent before the delivery of a declaration, and immediately took a license to use the pat- ent foraterm. Ona bill being filed by the patentee, after the expiration of the license, to restrain a further infringement ot his patent by the defendants in the action, and certain other per- sons who had joined the firm after the date of the judgment : Held, that the defendants in the suit were not estopped, either by the license or by the judgment, from denying the validity of the patent. Goucher v. Clayton, 11 Jur., N.S. 107; 34 L. J., Chanc. 239; 13 W. R. 336; 11 L. T., N.S. 732—V.-C. W. 10. Damages and Costs. Damages.|—A suit was instituted in equity to restrain a de- fendant from infringing the plaintiff’s patent for an invention applicable to steam-vessels. By the decree the defendant was ordered to pay to the plaintiff the damages which he had sus-- tained by reason of the defendant’s use or vending of the inven- tion, The plaintiff had been in the habit of granting licenses to use the invention at the rate of 2s. 6d. per horse-power per ship: Held, that the compensation to which he was entitled was a sum calculated on this basis upon the ships to which the de- fendant had applied the invention, and that he was not entitled to any additional sum in respect of contracts which he had missed by reason of the piracy. Penn v. Yack, 37 L. J., Chanc. 136; 5 L. R., Eq. 81—V.-C. W. Costs.|—By 15 and 16 Vict. c. 83, s. 43, in taxing the costs in any action in any of the superior courts at Westminster, for infring- ing letters patent, regard shall be had to the particulars delivered in 96 DIGEST OF such action, and the plaintiff and the defendant respectively shall not be allowed any costs in respect of any particular unless certified by the judge before whom the trial was had to have been proved by such plaintiff or defendant respectively, without regard to the general costs of the cause; And it shall be lawful for the judge before whom any such action shall be tried to certify on the record that the validity of the letters patent in the declaration mentioned came in question ; and the record, with such certificate, being given in evidence in any suit or action for infringing the said letters patent, or in any proceeding by scire facias to repeal the letters patent, shall entitle the plaintiff in any such suit or action, or the defendant in such proceeding by scire facias on ob- taining a decree, decretal order, or final judgment, to his full costs, charges, and expenses, taxed as between attorney and client, unless the judge making such decree or order, or the judge trying such action o7 proceeding, shall certify that the plaintiff or defendant respectively ought not to have such full costs. (Similar to 5 and 6 Will, 4, c 83, s. 3, impliedly repealed.) By 5 and 6 Will. 4, c. 83, s. 6, én any action for infringing the right granted by letters patent, in taxing the costs thereof, regara . shall be had to the part of such case which has been proved at the trial, which shall be certified by the judge before whom the same shall be had, and the costs of each part of the case shall be given ac- cording as each party has succeeded or failed therein, regard being had to the notice of objections as well as the counts in the declaration, and without regard to the general result of the trial. In an action for the infringement of a patent, the defendant obtained a verdict on one issue, which covered the whole cause: Held, that he was entitled to the costs of that issue, and the general costs of the cause, subject to deduction in respect of the issues found for the plaintiff. Losh v. Hague, 7 D. P. C. 4953 5 M. & W. 3873 3 Jur. 409. The certificate of the judge who tries the cause, that the de- fendant’s particulars of objections have been proved by him, is a condition precedent to his right on taxation to any costs in respect of such particulars, even in the case of a nonsuit. Honi- ball vy. Bloomer, 10 Exch. 538; 1 Jur., N. 8. 188; 24 L. J., Exch. 11. ENGLISH PATENT CASES. 97 The certificate should be as to the determination of each objection of which notice has been given, and not as to the issues. Losh v. Hague, 5 M. & W. 387. To an action for the infringement of a patent, there was a plea denying the novelty of the invention: Held, at the trial, that the validity of the patent might be considered as having come in question under this plea, so as to entitle the plaintiff to a certificate to that effect, under 5 and 6 Will. 4, c. 83, s. 3. Gillett v. Wilby, 9 C & P. 334—Coltman. See Gillett v. Green, 7M. & W. 34739 D. P. C. 219. : But if the defendant at the trial consents to a verdict for the plaintiff, without any evidence being given, the judge will: not certify that the validity of the patent came in question before him. Stocker v. Rodgers, 1 C. & K. gg9—Erskine. An action having been brought by a patentee (substantially) for the recovery of royalties under a due license, a compromise was entered into before the plaintiff’s case was closed, and an order of nisi prius was drawn up, under which the defendant was to pay an agreed sum, and a verdict was to be entered for the plaintiff in the action, for 40s. damages, and costs, with all usual certificates. After the cause was thus disposed of, the judge, upon an ex parte application, indorsed on the record a certificate that the record in a certain action, wherein B. was plaintiff and K. was defendant, and the certificate thereon indorsed, were given in evidence at the trial of this action: Held, that this certi- ficate was improperly granted, the record and certificates in the former action not having been given in evidence, and it not being, under the circumstances, a usual certificate within the contemplation of the parties. Bovill v. Hadley, 17\C. B., N.S. 435; 10 L. T., N. S. 650. In an action for infringement of a patent, the plaintiff, after giving notice of trial, abandoned the action. The defendant had delivered with his pleas particulars of objections: Held, that he was entitled to his costs of preparing the particulars, and the evidence in support of them, inasmuch as s. 43, which makes the certificate of the judge who tried the cause, that the particulars of objections have been proved by the defendant, a 98 DIGEST OF condition precedent to his right on taxation to any costs in respect of such particulars, applies only where there has been a trial. Greaves v. Eastern Counties Railway Company, 5 Jur., N. S. 733; 28 L. J., Q. B. 290; 1 El. & El. g6r. Held, also, that the cause not having been tried, the defend- ant, under 6 Geo. 4, c. 50, s. 34, was not entitled to the costs of a special jury applied for by him. Jd, In an action for the infringement of a patent an order was made giving further time for pleading, the defendant to take short notice of trial, and the plaintiff to be at liberty at once to set the cause down for trial by a special jury. Pleas were afterward delivered, but issue was never joined. A special jury was nominated by the plaintiff, but it was not struck. The plaintiff having obtained a rule to discontinue without ever having given notice of trial: Held, that the master was right in refusing to allow the defendant any of the costs of preparing for trial. Curtis v. Platt, 10 Jur., N.S. 823; 33 L. J., C. P. 255; 10 L. T., N.S. 383. ‘IM. Injunction to restrain. By 15 and 16 Vict. c. 83, s. 42, in any action in any of the superior courts of record at Westminster, for the infringement of let- ters patent, it shall be lawful for the court in which such action is pending, if the court be then sitting, or if the court be not sitting then for a judge of such court, on the application of the plaintiff or de- fendant respectively, to make such order for an injunction, and to give such direction respecting such injunction, and the proceedings therein respectively, as to such court or judge may seem fit. Injunction granted by a court of equity against subjects of the ‘kingdom of Holland, to restrain them from using on board their ships within the dominions of England, without a license, an in- vention, to the benefit of which the plaintiffs were exclusively entitled under the Queen’s patent. Caldwell v. Vanvlissengen, 9 Hare, 415; 16 Jur. 115; 21 L. J., Chanc. 97. In order to obtain an injunction against the violation of a patent, the party must, at the time of applying, swear as to his ENGLISH PATENT CASES. 99 belief that he is the original inventor. Hill v. Thompson, 2 Moore, 424; 8 Taunt. 375; Holt, 636; 3 Mer. 622. A rule for a writ of injunction as to restrain a defendant from infringing a patent, under 17 and 18 Vict. c. 125, s. 82, is a rule to show cause only in the first instance. Gittins v. Symes, 15 C. B. 362; 24 L. J., C. P. 48. The same relief may be had under 15 and 16 Vict. c. 83, s 42. Ib. The court will not entertain a bill for the mere purpose of giving relief in damages for the infringement of a patent when the bill has been filed, so immediately before the expiration of the patent as to sentler it impossible to have obtained an inter- locutory injunction. Betts vy. Gallais, 10 L. R., Eq. 3923 18 W. R. 945. 12. Account of Sale and Profits. By 15 and 16 Vict. c. 83, s. 42, in any action in any of the superior courts of record at Westminster for the infringement of let- ters patent, it shall be lawful for the court in which such action is pending, if the court be then sitting, or if the court be not sitting then for a judge of such court, on the application of the plaintiff er defend- ant respectively, to make such order for an account and to give such direction respecting such account and the proceedings therein, as to such court or judge may seem fit. This provision vests in the courts of common law the powers before exercised exclusively by courts of equity, and enables them to grant either by interlocutory order an account of all patent articles sold during the action, or, after verdict for the plaintiff, and as part of the final judgment, an account of all profits made by the defendant since the commencement of the action and after notice that an account would be required. Holland v. Fox,2 C. L. R. 1576; 3 El. & Bl. 977; 1 Jur., N. 5. 133 23 L. J., Q B. 357. But.the court has no power, where damages nominal or sub- stantial have been recovered, to order an account of profits made by the defendant prior to the commencement of the action, the damages assessed by the jury being considered as the compensa- tion for the loss of such profits. Jb. 100 DIGEST OF Where an action has been brought for the infringement of a patent, a retrospective account of the defendant’s sales and profits of the patented article will not be granted before final judgment. Vidi v. Smith, 3 El. & Bl. 969; 2 C. L. R. 1573; 1 Jur., N.S. 14; 23 L. J., Q. B. 342. But, upon reasonable evidence of the existence of a valid patent, and of its having been infringed by the defendant’s mak- ing a profit by such infringement, he will be ordered to keep an account of all sales to be made of the article alleged to be an infringement of the patent, and of the profits thereon, until the further order of the court, upon condition of the plaintiffs waiving all right to more than nominal damages at the time of the action, and undertaking, in case the verdict and judgment should be in favor of the defendant, to pay to him the expense of keeping such account. Jb. Where a patentee has obtained a verdict against the defend- ant for infringing the patent, the court will compel him to render to the plaintiff an account of all articles made by him in imita- tion of his patent articles, and to pay to the plaintiff a sum equal to the price of those which he has sold, and a further sum equal to the value of so many of such articles as the defendant has remainingin stock. Holland v. Fox, 23 L. J., Q, B. 211—B. C. —Erle. The court will only direct an account to be taken of the profits which have been actually made by the defendant, and not of the loss which the plaintiff has sustained by the infringement. Ellwood v. Christy, 18 C. B., N. S. 494; 34 L. J.. C. P. 130; 13 W.R. 498. In the case of an assignee of the patent, the account will only be taken from the date of the registration of the assignment. 1b, Three descriptions of anchors were well known: 1. The Dutch or common anchor, in which the arms and the shank were all in one piece, the palm or fluke being sometimes placed inside and sometimes outside the extremity of the arm; 2. Ro- gers’ anchor, the peculiarity of which was that the palm or fluke was placed outside the extremity of the arm; 3. Porter’s anchor, the arms of which moved on an axis in the shank, the palm be- - 4 ENGLISH PATENT CASES. TOK. ing placed inside the arm, with a horn or a toggle at the back, and of the width of the arm. T. took out a patent for improve ments in anchors, such improvements mainly consisting in placing the palm at the back or outside or intermediately of the breadth of the arm, and making the arm or toggle form part of, and of the same width as the palm, combined with Porter’s movable arms. In his specification he thus described his in- vention: ‘The improvements are chiefly applicable to that class of anchors known:as Porter’s anchors, and consist, first, of forming or fixing the palm intermediately of the breadth of the arm; secondly, in forming the horn wider than the arm; and thirdly, in forming or affixing the palm of that class of anchor known as Porter’s anchor, at the back of the arm;” and after describing the drawings he concluded thus: “I would remark that [ am aware that it is not new to place the palm at the back of the arm of ordinary anchors; this part of the invention there- fore consists of combining the fixing of the palms to the back of those arms of anchors which move on an axis. The angles which the faces of the arms and the faces of the palms make to the shank and to each other, may be varied, but it is important that the angles which the palms make to the shank and those made by the arms should be different. ‘The construction shown are those I employ.” W. (having a license from T.) made anchors with the arms moving on an axis, like Porter’s, and with the palm at the outside of the arm, with a horn of a greater width than the arm, and nearly identical with that described in T.’s specification and drawings; but he forged the arms, palm, and horn all in one piece, whereas T.’s palm and horn were formed together, and then fixed to the back or “intermediately of the breadth” of the arm. The jury, in an action against W. for non-payment of royalties, and for an account, found, as regarded the palm, that W. had adopted T.’s invention, but not being able to agree as to the horn, they were discharged from any finding as to that: Held, that T. was entitled to an account of the anchors so made. Trotman v. Wad, 16 C. B.,N. S. 479- For a form of rule or order for an account, see Walton v. Lavater, 8 C. B., N.S. 162. 102 DIGEST OF VII. CONFIRMATION, RENEWAL, AND EXTEN. SION OF LETTERS PATENT. 1. In what Cases. See 5 and 6 Will. a, c. 83, 5. 45 2 and 3 Vict. c. 673 7 and 8 Vict. c. 693 15 and 16 Vict. c. 83, s. 403 16 and 17 Vict. c. 115, # Generally.|—Original letters patent, fora term of fourteen years, were dated on the 26th February, 1825, and renewed let- ters patent were dated on the 26th February, 1839: Held, that the day must be reckoned inclusively, and that the former term expired on the 25th February, 1839, and, consequently, the re- newed letters patent were granted after the original letters patent had expired. Russell v. Ledsam, 14 M. & W. 574; 9 Jur. 5573 14 L. J., Exch. 353. The 5 and 6 Will. 4, c. 83, s. 4, does not authorize the judicial committee of the privy council to impose terms as con- ditions on which patents are to be renewed. ‘The authority of the committee is limited to reporting on matters as between the public and the party applying. Ledsam v. Russell (in error), 1 H. L. Cas. 687. An application for a renewal is prosecuted with effect, within the terms of 5 and 6 Will. 4, c. 83, s. 4, if the party applying obtains the report of the judicial committee of the privy council before the expiration of the original patent. Jb. The crown is not restricted as to the time within which it may act upon such report, and renewed letters patent are not void because they are dated after the expiration of the original letters patent. Jb. If the judicial committee should impose a condition on a party applying for the renewal of a patent, such party need not, in an action for the infringement of the patent, aver that such condition was complied with before the patent was renewed. Jb. By an act of parliament reciting that letters patent had been granted to A.; that the: specification had been enrolled within six months, instead of being enrolled within four months, ENGLISH PATENT CASES. 103 after date, as required by the letters patent; that the letters pat- ent contained a proviso for making them void, if they should be- come vested in, or in trust for more than twelve persons; and that certain persons had agreed to form themselves into a company for working the patent; powers were given for the formation of a company, and enabling the patentee to assign the patent to them, or to license them to work it. A subsequent section, reciting the enrollment of a specification within due time, and that such en- rollment had arisen from inadvertence and misinformation, and that it was expedient that the patent should be rendered valid to the extent thereinafter mentioned, enacted, that the letters pat- ent should, during the remainder of the term, be considered, deemed, and taken to be as valid and effectual to all intents and purposes as if the specification so enrolled by A., within six months after date, had been enrolled within four months: Held, that the confirmation of the patent was unconditional, and was not dependent on the formation of a company. Stead v. Carey, 1 C. B. 496; 9 Jur. 511; 14 L. J., C. P. 177. The authority conferred upon the crown by 5 and 6 Will. 4, c. 83, s. 2, to confirm letters patent, is discretionary, in the judicial committee, to recommend or not a confirmation. Honi- ball’s Patent, in re, 9 Moore, P. C. C. 378. The jurisdiction is one which is most cautiously and sparingly to be exercised, as the effect of a confirmation of letters patent is to give force and validity, by a quasi legislative authority, to a grant of monopoly actually void, and to exclude from the use of the invention not only other subjects of her Majesty in England, but even the first and original inventor, who may have actually brought it into public, though not into general use, before the ¢ patent was taken out. Jb. Two conditions are required from a petitioner applying for a confirmation, to establish, first, that before the date of the letters patent (the subject of application) the invention was not pub- licly and generally used; and, second, that the grantee of such letters patent believed himself the first and original inventor. Jb. The 5 and 6 Will. 4, c. 83, s. 2, applies to confirmation of letters patent for an extended term, as the grant of such ex- 104 DIGEST OF tended term is a grant of new letters patent, which are subject to the same conditions and open to the same objections, and en- titled to the same advantages as the original letters patent. 1. The judicial committee has jurisdiction to entertain a peti- tion referred to them by the crown, seeking to revoke an order in council, made upon their recommendation, upon an applica- tion by patentees for a prolongation of letters patent, and to’ recall the warrant for sealing such letters patent. Sch/umberger, in re, 9 Moore, P. C. C. 1. The power given by 7 and 8 Vict. c. 69, s. 2, to recommend an extension of the term of letters patent for an invention, is exhausted when an extension has been once recommended, and new letters patent granted. Goucher’s Patent, in re, 2 Moore, P,C.C., N.S. 532. In the objections filed by the objectors, this point was not taken: Held, that the objection could be raised on the applica- tion to fix a day for hearing of the petition. Jb, The prolongation of a patent is, by 5 and 6 Will. 4, c. 83, and 16 and 17 Vict. c. 115, the same as a new grant. Betts’ Patent, in re, t Moore, P. C. C., N.S. 49; 9 Jur., N.S. 1373 11 W.R. 221; 7 L. T., N.S. 577. Application.|—Letters patent being about to expire, an applica- tion for an extension will be heard-during the pendency of legal proceedings as to the validity of the patent. Kay’s Patent, in re, 2 Moore, P. C. C. 241. The circumstance of there being a lis. pendens respecting the validity of the letters patent is no objection to the grant of an extension of the original letters patent. Heath's Patent, in re, 8 Moore, P. C. C. 217. Assignees.|—Assignees of letters patent may lawfully obtain a renewal of such letters patent. Ledsam v. Russell, 14 M. & W, 5743 9 Jur. 5573 14 L. J., Exch. 353. Affirmed in Exch. Cham., 16 M. & W. 633; 16 L. J., Exch. 145; and in Dom. Proc., 1 H. L. Cas. 687. The inventor and patentee had lost largely by the patent, but his assignees had lately made very considerable profits, and from ENGLISH PATENT CASES. 5 105 their position in the trade were likely to command a very large sale of the patent article. The patent was of high merit, and of great service to the public safety. A prolongation of the term was granted to the assignees for four years, upon conditions, first, that the assignees secured to the patentee half the profits derived from the sale; and, secondly, that the patented article should be sold by the assignees to the public at a fixed price. Hardy’s Patent, in re,6 Moore, P. C. C. 441; 13 Jur. 177. Where the executor of the surviving assignee of a patentee petitioned for an extension, and it was established that a valuable consideration had been given for the assignment, and that the as- signee had sustained considerable loss, the judicial committee, in granting an extension, refused to impose terms upon the petitioner, in favor of the patentee. Bodmer’s Patent, in re, 6 Moore, P. C. C. 468. When a patentee entered into an agreement with parties to work the patent, but owing to disputes between them the inven- tion was not prosecuted until a short time before the expiration of the letters patent, an extension was refused. Patterson’s Patent, in re, 6 Moore, P. C. C. 469; 13 Jur. 593. An extension was recommended in favor of an assignee, on his securing an annuity to the inventor during the subsistence of the new letters patent. Whitehouse’s Patent, in re, 2 Moore, P. C. C. 496. To entitle an equitable assignee to appear with the legal as- signees of a patent, on a petition for a prolongation of the let- ters patent, the name of such equitable assignee must appear with the other petitioners in the advertisements required by the 5 and 6 Will. 4, c. 83, s. 4, and rule 2. Noble’s Patent, in re, 7 Moore, P. C. C. 191. After an assignee of a patent had incurred considerable loss in carrying out a patent for a smoke prevention apparatus, a statute passed to compel the owners of furnaces in the metropolis to construct them so as to consume their own smoke: Held, that though the act might, in effect, compel the use of the petitioner’s patent, yet that such circumstance formed no objection to a re- newal of the term of the letters patent, the merits of the inven- 106 DIGEST OF tion and loss incurred in carrying it out being established Foarde’s Patent, in re, 9 Moore, P. C. C. 376. The committee has power, under 7 and 8 Vict. c. 69, s. 4, to grant an extension to the assignee of the patentee. Napier’s Patent, in re, 13 Moore, P. C. C. 543; g W. R. 390. Although by 7 and 8 Vict. c. 69, s. 4, the assignee of a pat- entee is entitled to apply for an extension, yet he does not, unless under peculiar circumstances, stand on the same favorable footing as the original inventor, as the ground that the merits of the inventor ought to be properly rewarded, in dealing with an invention which has proved useful and beneficial to the pub- lic, does not exist in the case of an assignee, unless such as- signee is a person who has assisted the patentee with funds to enable him to perfect and bring out his invention, and thus to bring it into use. Norton’s Patent, in re, 1 Moore, P. C. C.,, N. 8. 339. Scotch Patents.|—The use of an invention in England prior to the date of letters patent granted: for Scotland will invalidate the Scotch patent; and the judicial committee accordingly re- fused to confirm a Scotch patent, the invention being used in England before the date of the Scotch patent. Robinson’s Pat- ent, in re, 5 Moore, P. C. C. 65. Prolongation and Extension of Terms.|—Three separate original : letters patent were granted to the inventor of England, Scot- land, and Ireland, respectively. The Scotch patent was void for want of novelty, and afterward a prolongation of the terms of the three original patents was granted by one and the same letters patent under the great seal of the United Kingdom, pursuant to 15 and 16 Vict. c. 83: Held, that the grant of pro- longation was divisible, and operated as if there had been separate grants by separate instruments for the three countries, so that the prolongation of the English patent was not rendered void by the invalidity of the Scotch patent. ' Bovill v. Finch, 39 L. J., C. P. 297735 L. R., C. P. 5293 18 Ws R. to7T; 23 L, TN. §. 151. Residents Abroad.|—Where the party applying for an extension of a patent is resident abroad, and has no manufacture in Eng- ENGLISH PATENT CASES. 107 land, advertising in the newspapers published in the towns or country where the persons to whom he has granted licenses are resident, is a sufficient compliance with the 5 and 6 Will. 4, c. 83, 8.4. Derosne’s Patent, in re, 4 Moore, P. C. C. 416. Foreigners.|—The importer of an invention from abroad is an inventor within the 5 and 6 Will. 4, c. 83, and entitled to apply for an extension, but the judicial committee will look with jealousy into the merits of an invention imported. Claridge’s Patent, in re, 7 Moore, P. C. C. 394. An importer of a foreign invention, by which the public is benefited, is entitled to be put on the same footing as an original inventor, when applying for a prolongation for such foreign im- portation. Berry’s Patent, in re, 7 Moore, P. C. C. 187. An alien resident abroad, who was interested in an English patent by a foreign inventor, and who had also considerable deal- ings in this country in respect of sales of the patented machine and in granting licenses for the use of such patent, has such a locus standi as to entitle him to petition the crown to revoke an order in council for granting an extended term of an English patent, and to recall the warrant for sealing such patent. J.; Schlumberger, in re, g Moore, P. C. C. 1. Application was made under 5 and 6 Will. 4, c. 83, and 2 and 3 Vict. c. 69, by assignees of a patentee, for extension of an English patent for a foreign importation, patented in France. At the date of the application the French patent had expired: Held, that as the foreign patent had expired, no renewed grant would be valid, by s. 25 of the 15 and 16 Vict. c. 83, as s. 7 of the 16 and 17 Vict. c. 115, made an extended patent a new pat- ent, within the provision of the 15 and 16 Vict. c. 83, s. 25. Aube’s Patent, in re,g Moore, P. C. C. 43. The provisions of the 15 and 16 Vict. c. 83,’s. 25, apply only to patents granted in the United Kingdom subsequent to the passing of that statute. Bodmer’s Patent, in re, 8 Moore, P. C. C, 282. A patent (a communication from a foreigner abroad) was taken out in England, and the inventor a few weeks afterward ob- tained letters patent for the invention in America. An applica- 108 DIGEST OF tion was made for a prolongation of the English patent before the American patent had expired: Held, that the case fell within the spirit of the provisions of 15 and 16 Vict. c. 83, s. 25, and the application was refused. Newton’s Patent, in re, 15 Moore, P. C. C..1763 9 Jur., N.S. rog. On an application for the prolongation of a patent-granted in the United Kingdom in January, 1849, it was proved that the applicant obtained letters patent in France in respect of the in- vention in January, 1850, and letters patent in Belgium in respect of the invention in January, 1852, which last letters patent had expired at the time of the application: Held, first, that the earlier part of s. 25 of the 15 and 16 Vict. c. 83, applies only to cases where patents have been granted in foreign countries before the grant of the patent in the United Kingdom, and that the words in the proviso, ‘‘any such patent or like privilege,” must be taken to refer to the entire description of the patents mentioned in the foregoing part of the section, and to no others. Betts’ Patent, in re, 1 Moore, P. C. C., N.S. 49; 9 Jur., N. 8.137; 11 W. R. 221; 7 L. T., N. 5. 577. When a patent is taken out in a foreign country before a pat- ent for the invention in the United Kingdom, the latter patent is to terminate at the same time as the foreign patent. Jd, Where the term in a foreign patent has expired, any grant of letters patent in the United Kingdom made after that period is of no validity. J. Letters patent for an invention communicated by a foreigner resident abroad, extended for five years. The. invention (ma- chinery for letter-press printing) was of a meritorious and useful character, but of an expensive nature, and only at the latter end of the term of the letters patent brought into public use; and although the patent had been worked at a profit, it was not, in the opinion of the judicial committee, sufficiently remunerative, con- sidering the value of the invention. Newton’s Patent, in re, 14 Moore, P. C. C. 156; 10 W. R. 731. The 15 and 16 Vict. c. 83, s. 25, does not deprive the judicial committee of the power to entertain an application for an exten- sion of the term of letters patent taken out first in England, ENGLISH PATENT CASES. 109 though a patent has been obtained for the same invention in a foreign state; and the foreign patent would expire before the expiration of the prolonged term. Pvole’s Patent, in re, 1 L. R., P. C. 514. Secus, if the patent was first obtained abroad by a foreign subject, and afterward taken out in England. Jd. When a foreigner patented his invention first in England and afterward in France, which latter patent, at the. date of the ap- plication for a prolongation of the English patent, had a year to run, the privy council will not recommend the crown to extend the term upon the chance of the French patent being extended. Normand’s Patent, in re, 3 L. R., P. C. 193; 6 Moore, P. C, C., N.S. 477. Held, also, that if the French patent had expired there was no power to recommend an extension of the English patent. Jd. An assignee of the patentee who had taken an assignment of four-fifths of the patent within a few months of the expiration of a patent, which had only just been brought into use, for a small consideration, is not entitled to any extension. Jb. 2. Grounds, Terms, and Conditions. What.|—To entitle a patentee to a confirmation of letters patent, under 5 and 6 Will. 4, c. 83, s. 2, the patentee must show that he believed himself the first and original inventor. Cara’s Patent, in re, 6 Moore, P. C. C. 207; 12 Jur. 507. The merit and utility of the invention; the merit of the peti- tioner in patronizing an ingenious inventor, and liberally expend- ing money to introduce the invention; the amount of profit not being greater than the ordinary profit on capital employed in similar trades; the annoyances, anxiety, and costs of litigation, are several grounds of consideration in recommending an exten- sion. Whitebouse’s Patent, in re, 2 Moore, P. C. C. 496. An extension was granted for five years, the invention being of great merit and public utility, but the patentee and his grantees had received no remuneration in consequence of the originality of the patent being disputed at law. Smith’s Patent, in re, 7 Moore, P. C. C, 133. TIO DIGEST OF An extension ‘was opposed by the apprentices of the patentee, who alleged that they should not be able to get employment. It appearing, however, that they had been so instructed as to be able to get employment in another branch of the trade, no con- dition was imposed on the patentee on that account. Baxter’s Patent, 13 Jur. 593—P. C. Where letters patent embraced several subjects, one only of which had been worked out, and that part of the patent was affected by subsequent patented improvements by the same patentee, and could not be effectually used: without such subse- quent improvements, the judicial committee, before recommend- ing-an extension of the term of the first patent, put the petitioner upon terms of disclaiming all the parts of the original patent not worked out, and restricted the prolongation of the unexpired term of the subsequent patents. Bodmer’s Patent, in re, 8 Moore, P. C. C. 282. A patentee, formerly in partnership with J. and W., by a deed of dissolution stipulated that they should have the exclusive right of granting, in certain cases, licenses for manufacturing the patent article. In recommending an extension, the judicial committee imposed a condition upon the patentee to secure to J., in whom the interest under the deed of dissolution then vested, the same interest in the new letters patent as related to the granting of licenses as was provided by the deed of dissolu- tion, but refused to allow J. to substitute new licenses for those granted under the original letters patent, in the event of the original licensees declining to renew their licenses from him under the new grant. Normandy’s Patent, in re,g Moore, P.C. C. 452. If it can be clearly shown that the patent sought to be ex- tended is bad for want of originality, the privy council will not entertain the application. liter, if at most, a doubtful question as to the validity of the letters patent can be raised. Betts’ Patent, in re, 1 Moore, P. C. C., N. 5. 49; 9 Jur., N.S. 137; 11 W. R. 221; 7 L. T., N.S. 577. The grounds on which extension of patents are granted have all reference to the inventor. They are, first, to reward the ENGLISH PATENT CASES. II inventor for the peculiar ability and industry he has exercised in making the discovery. Secondly, to reward him, because some great benefit of an unusual description has by him been conferred upon the public through the invention itself; or, thirdly, because the inventor has not been sufficiently remunerated by the profits derived from his strenuous exertions to make the invention profit- able. All these grounds proceed on the supposition that the in- vention is a new and a useful invention. But where an inventor intentionally delays for a great length of time attempting to put the invention into practice, those reasons for a prolongation of the patent can not be relied upon by him, unless he shows some reasonable ground, such as want of funds, for the delay. Nor- ton’s Patent, in re, 1 Moore, P. C. C., N. 8. 339; 9 Jur., N. 5. 419; 11 W. R. 720: 8. P. Markwick, in re, 8 W. R. 333; 13 Moore, P. C. C. 310. In an application for a prolongation, the privy council will not try the validity of the patent; and though in general it will not enter into questions of doubtful validity, yet it will not recommend an extension of a patent which is manifestly bad. Hill? Patent, in re, 1 Moore, P. C. C., N. S. 258; 9 Jur., N. S. 1209; 12 W. R. 25; 9 L. T., N.S. 301. In determining whether to recommend an extension, though the validity of a patent may not be directly impeached, yet with respect to the novelty and the utility of the invention, the degree of merit to be attributed to the petitioner is to be taken into account, as well as the amount of remuneration received by him under the patent, as an extension is not of strict right, but rather of equitable reward. Jb. A patent was granted in England before 15 and 16 Vict. c. 83. A patent for a similar invention had been granted in France to another person prior to the English patent, but it did not satis- factorily appear that the English patentee had any previous knowledge of the foreign invention. The French patent had not expired at the time of the application for prolongation: Held, that, although the case did not fall strictly within the terms of s. 25, yet that the policy which the legislature there indicated, was to guide the committee in the exercise of their 1I2 DIGEST OF discretion, that policy being, to prevent, in the case of inventions made and patented in any foreign country, the continuance of a monopoly in England by means of a patent granted subsequently here, and after the time when the discovery shal] have become public property in the foreign cauntry, and that the prolongation of an existing patent fell within such rule. Jd. The patentee of a patent had received large sums of money from government for the expenses of experiments, and by way of bounty and reward, but from the nature of the patent had not, in the opinion of the judicial committee, received sufficient re- muneration for his invention; and in granting an extension, the committee refused to impose a condition in the new grant, that the crown should be at liberty to use the invention for the pub- lic service without license from the patentee. Lancaster’s Patent, in re, 2 Moore, P. C. C., N.S. 189. When the utility of a patent has not been tested by actual employment, for a period of fourteen years, although efforts have been made by the patentee to bring it into use, it raises a very strong presumption against its practical utility, which pre- sumption can only be rebutted by the strongest evidence. A/Jan’s Patent, in re,1 L.R., P. C. 507; 36 L. J., P. C. 76. If an invention has not been brought into practical use during the term of the letters patent, it raises a strong, though not con- clusive, presumption against its utility; and unless there are circumstances to rebut such presumption, an extension will not be granted. Herbert's Patent, in re, 1 L. R., P. C. 399. The fact of a patent of a valuable nature, but having a limited maket, not having been so generally used as to remunerate the inventor, is sufficient to remove the presumption against the utility of the invention. Jb. Petition for prolongation by a patentee, together with the assignees of a moiety of the patent. After the presentation of the petition, and before the hearing, the patentee died, having by his will appointed his widow executrix and residuary legatee. Extension granted to the assignees on condition that they held the moiety of the patent in trust for the widow of the patentee. ib. ENGLISH PATENT CASES. 113 A patentee, who was not a manufacturer, granted a license to a manufacturing firm to manufacture the patented article, which, by agreement between them, was of an almost exclusive char- acter. In granting a prolongation, the new letters patent were directed to be made upon condition that licenses should be granted by the patentee to the public upon terms similar to the one already granted. Aallet’s Patent, in re, 1 L. R., P. C. 308. Account of Profits.|\—The account of profit and loss of the patentee in working a patent, ought to be clear and precise; and it is the duty of a patentee, if engaged in any other business, or as a manufacturer of his own invention, to keep the accounts of the patent and the manufacture separately. Betts? Patent, in re, 1 Moore, P. C. C., N. S. 49; 9 Jur, N. 8.137; 11 W.R. 2213; 7L. T., N.S. 577. If a patentee is also manufacturer of his patent article, in taking account of the profits of the patent he is entitled to deduct his profits as a manufacturer. Jb. In taking an account of the profits and loss of the working of a patent, the patentee is entitled to charge, as part of his ex- penses, for loss of time in endeavoring to bring the invention into general use. Newton's Patent, in re, 14 Moore, P. C. C. 156; 10 W.R. 731. In calculating whether any profit has been obtained through or by means of a patent, it is correct to deduct, in the first place, beyond the cost price, a fair manufacturer’s profit on the articles sold; and the mere preference of the market obtained by the manufacturer is not to be deemed a profit derived from the patent. Galloway’s Patent, in re, 7 Jur. 453. The most unreserved and clear statement of the patentee’s remuneration is an indispensable condition for extension. Hil?s Patent, in re, t Moore, P. C. C., N. S&S. 258; 9 Jur., N. S, 1209; 12 W.R. 25; 9 L. T., N.S. ror. The patentee was also manufacturer and sold the patented articles. In his accounts he deducted two-thirds as profits from the manufacture and sale, and only credited the patent with one. third: Held, to be an unreasonable deduction. Jd. 114 DIGEST OF Although law expenses by the patentee in maintaining his patent rights are allowed in deduction of his profits, yet where the patentee compromised suits and gave up costs to which he had an apparent title, a deduction on that head will not be allowed. Jb. To entitle a patentee to a prolongation of the term of letters patent, he must satisfactorily establish the amount of his profits. Trotman’s Patent, in re, 1 L. R., P. C. 118. Licenses stand, with respect to the profits, in the same posi- tion as assignees of the patent. 1d. Application, under 14 and 15 Vict. c. gg, s. 6, by parties who opposed an extension for production and inspection of the peti- tioner’s accounts previously to the hearing of the petition, refused, with costs. Bridson’s Patent, in re, 7 Moore, P. C. C, 499- The books of a petitioner in respect to the profits having been lost during his bankruptcy, the account of profit and of loss was taken upon his own evidence. Hutchinson’s Patent, in re, 14 Moore, P. C. C. 364. A patentee, residing in America, for the purpose of getting the patented article into general use in England, arranged with an agent in England, and in consideration gave him a moiety of the royalties: Held, that in estimating the profits of the patentee derived from the patent, such moiety was to be deducted. Paoole’s Patent, in re,1 L. R., P. C. 514. - A petitioner seeking the grace and favor of the crown, in applying for an extension of the term of letters patent, is bound ‘to bring his accounts before the committee in such a shape as to leave no doubt what the remuneration has been that he has re- ‘ceived from the patent. The petition for extension, and the accounts furnished by the petitioner (the patentee), not contain- ing sufficiently full and accurate information in respect to the patent, or the remuneration received by him, the judicial com- mittee declined to recommend a prolongation of the term. The principle, where the statement of the remuneration received by the patentee is, on the face of the petition and accounts filed, unsatisfactory, of adjudicating without reference to the merits ENGLISH PATENT CASES. 115 of the invention, as acted on in Jn re Saxby’s Patent, recognized Clark’s Patent, in re, 3.1L. R., P. C. Ap. 421—L. J. Prolongation of term of letters patent for seven years, the in- vention being a meritorious one, and of great value as a new material for the manufacture of paper; no profit having been made either by the inventor or his assignees. The statement of accounts furnished being prima facie satisfactory, the petition- ers were allowed to prove the merits of the invention before going into the accounts. Ju re Saxby’s Patent, distinguished. Houghton’s Patent, in re, 3 L.R., P. C. 461—J. C. : 3. Practice on. Caveats.|—The judicial committee will not permit a party to be heard in opposition to an application for a prolongation, unless a caveat has been entered in his name. Lowe’s Patent, in re, 8 Moore, P. C. C. 1. Any one of the public has a right to enter a caveat, and to be heard in opposition. J. Practice respecting hearing of counsel where several parties enter caveats. Woedcroft’s Patent, in re, 3 Moore, P,C.C. 171. An application by the Lords of the Admiralty to enter a caveat, and be heard against a petition for an extension, such caveat not having been filed within the time required by the rules of the Privy Council Office, refused, as the attorney-gen- eral was present to watch the interests of the government. Smith’s Patent, in re, 7 Moore, P. C. C. 133. A petitioner inserted the last advertisement of his intention to petition for a prolongation on the 24th May, but did not present his petition until the 5th of June. The registrar refused to receive the petition, as being too late. Upon a special applica- tion for that purpose, it appearing that the delay arose from a mistake of the petitioner’s agent, an order was made admitting the petition. A caveat had been entered: Held, that as the party filling the caveat was interested in sustaining the objection to the reception of the petition, notice of the application must be served on him. Hutchinson's Patent, in re, 14 Moore, P, C C. 364. 116 DIGEST OF Attorney-General.|—In cases for an extension, the attorney- general represents the government and the public generally. Smith’s Patent, in re, 7 Moore, P. C. C. 133. Costs.|—The judicial committee will exercise a discretion as to the allowance of an opposer’s costs upon an abandoned peti- tion for extension of letters patent. Adilner’s Patent, in re, 9 Moore, P. C. C. 39. A gross sum allowed for costs of opposers, instead of referring their costs to taxation. Jb. An affidavit of merits by a petitioner, upon the question of costs, rejected, as no copy had been served upon the oppo- sers. Ib, Where there were two opponents to an application for a pro- longation upon substantially the same grounds of objection, upon a successful opposition, a gross sum was allowed for the costs of both parties. ‘ones’ Patent, in re, 9 Moore, P. C. C. 41. Opponents’ costs were directed to be taxed at roo/., and divided between the opponents. -Jb. Opposition to an application for extension or confirmation is rather encouraged than otherwise, and upon a successful opposi- tion, the opposer’s costs will, in general, be allowed. Honiball’s Patent, in re, 9 Moore, P. C. C. 378. When a petition is abandoned, it is not necessary that the opposers should serve the petitioners with notice of their intended application to the court for costs of opposition. Bridson’s Patent, in re, 7 Moore, P. C. C. 499. On a petition for prolongation, a day was fixed for hearing. Objections were lodged against an extension. Before the hear- ing, the petitioners abandoned the prosecution of the petition, and the costs of the opposition were allowed. Hornby’s Patent, in re, 7 Moore, P. C. C. 503. ENGLISH PATENT CASES. 117 VIII. REPEAL OF LETTERS PATENT. Where it lies.|—By 15 and 16 Vict. c. 83, s. 15, the writ of " scire facias shall lie for the repeal of any letters issued under that act, in the like cases as the same would lie for the repeal of letters patent which may now be issued under the great seal. By 12 and 13 Vict. c. 109, s. 29, the writ of scire facias shall or may be directed to the sheriff of any county. Parties.|—To a declaration in scire facias to repeal letters. patent, on the ground that B. and S. were not the first and true inventors, and that the invention was not new, or an improve- ment, B. pleaded that before the suing out of the scire facias, S. assigned to him all his share in the letters patent, and the privilege thereby granted, and had not since had any interest whatever in the letters patent; that S. could not be compelled to plead or demur to the writ and declaration, and therefore B. prayed judgment, whether he ought to be compelled to plead or demur to the declaration: Held, that both had been properly made defendants, the letters patent having been granted to them jointly. Reg. v. Betts, 15 Q, B. 540; 14 Jur. 912; 19 L. J., Q. B. 531. Held, also, that the joinder of too many defendants could not be made the subject of a plea in abatement, and therefore that the plea was bad. J. Particulars.|—By 15 and 16 Vict. c. 83, s. 41, the prosecutor in any proceedings by scire facias to repeal letters patent shall deliver, with the declaration, particulars of any objections on which he means to rely at the trial in support of the suggestions of the declaration in the’ proceedings by scire facias ; And at the trial of such proceeding by scire facias no evidence shall be allowed to be given in support of any alleged infringement, or of any objection impeaching the validity of such letters patent, which shall not be contained in the particulars delivered as aforesaid: Provided always, that the place or places at or in which and in what manner the invention is alleged to have been used or published 118 DIGEST OF prior to the date of the letters patent, shall be stated in such partic- ulars : Provided also, that it shall and may be lawful for any judge at chambers to allow such prosecutor to amend the particulars, upon such terms as to such judge shall seem fit. (Similar to 5 and 6 Will. 4, - c. 83, s. 5, but more comprehensive.) On scire facias to repeal a patent, the prosecutor having, while the record was in chancery, filed notice of objections, namely, that other persons than the patentee had used the inven- tion in England before the grant of the patent, the court refused to order delivery of a particular, stating the names and addresses of such persons. Reg. v. Walton, 2 Q, B. 969. Pleadings.|—By 12 and 13 Vict. c. 109, s. 31, the pleadings are to be delivered and not filed. The notice of objections in scire facias to repeal a patent, is not part of the record. Reg. v. Mill, 1 L. M. & P. 695; 10 C. B. 3793 15 Jur. 59; 20 L. J., C. P. 16. A scire facias having issued out of chancery to repeal letters patent, the patentee presented a petition to the common law side of the court, alleging that the writ contained improper recitals and suggestions, which, if used as a defense in an action for the in- fringement of a patent, would be inadmissible, and praying that the writ might be quashed or reformed by striking out the objection- able matter, Cranworth, C., declined to exercise the jurisdiction reserved to him by 12 and 13 Vict. c. 109, s. 46, on the ground that, by s. 39, jurisdiction in such cases was conferred on the judges of the superior courts of common law, and that they could more satisfactorily dispose of the question of pleading involved in the case. Reg. v. Hancock, 5 De G., M. & G. 332. Trial.|—By 12 and 13 Vict. c. 109, s. 32, issues may be tried in any of the superior courts. By 15 and 16 Vict. c. 83, s. 41, at the trial of any proceedings by scire facias to repeal letters patent the defendant shall be entitled to begin and to give evidence in support of such letters patent, and in case evidence shall be adduced on the part of the prosecutor impeach- ing the validity of such letters patent, the defendant shall be entitled zo the reply, See Reg. v. Cutler, 3 C. & K. 215. ENGLISH PATENT CASES. 119 The court upon terms postponed the trial of a patent cause for a definite period, to await the result of a motion pending in another court on a scire facias to repeal the patent. Smith v. Upton, 6 Scott, N. R. 804: S.C. nom. Muntz v. Foster, 1 D. & L. 942. Pending a proceeding in scire facias to repeal a patent, the patentee disclaimed a part. The prosecutor still proceeded, and ultimately failed: Held, that he ought to pay the costs sub- sequent to the disclaimer. Reg. v. Mill, 14 Beav. 312. A patentee applied to the court of Chancery to stay all pro- ceedings on a scire facias to repeal the patent, or that a nolle prosequi might be entered, on the ground, first, that the pros- ecutor was an alien; secondly, that he had no special interest in the patent or the repeal of it, but was acting in collusion with other persons, with a view to oppress the patentee; and thirdly, that the security for costs given by the prosecutor was improper and insufficient: Held, that the court had no authority to in- terfere in the matter. Reg. v. Prosser, 11 Beav. 306; 13 Jur. 71; 18 L. J., Chanc. 35. The attorney-general conducts the proceedings on a scire facias according to his own judgment and discretion, and may, when he thinks fit, stay the proceedings or enter a nolle prosequi. The control which the attorney-general exercises is subject only to the responsibility’ to which every public servant is liable in the discharge of his duty, and subject to the jurisdiction which the courts may have over him, upon a charge properly brought against him for negligence or an erroneous performance of his duty. 1b. The usual issues may be granted in a patent suit before the hearing of the cause, although the defendant denies the validity of the plaintiff's patent on the ground of the generality of the claim in the specification. Decision of Wickens, V.-C., reversed. Arnold v. Bradbury, 6 L. R., Chance. App. 706—C. Fudgment.|—On scire facias brought in the Petty Bag Office in Chancery to repeal letters patent for an invention, if issues of fact are joined there, and the record sent to the Queen’s Bench 120 DIGEST OF for a trial, which is had, and a verdict found for the crown, the Queen’s Bench, though the letters patent remain in Chancery, may give judgment that they be revoked, cancelled, vacated, disallowed, annulled, void and invalid, and be altogether had and held for nothing, and also that the enrollment thereof be can- celled, quashed, and annulled, and that they be restored to the court of Chancery, there to be cancelled. Bynner v. Reg. (in error), 9 Q. B. 5233; 10 Jur. 867; 15 L. J., Q, B. 414—Exch. Chance. After a judgment in scire facias in the Queen’s Bench, annulling letters patent, and directing that they should be restored to the court of Chancery to be cancelled, the lord chancellor has no jurisdiction to stay the execution of the judg- ment, his duty in cancelling the enrollment being only ministerial. Reg. v. Eastern Archipelago Company, 4 De G., M. & G. 199. IX. PROOF OF PATENT DOCUMENTS. English. |—By 16 and 17 Vict. c. 115, 8. 4, printed or manu- script copies or extracts, certified and sealed with the seal of the com- missioners of patents, of letters patent, specifications, disclaimers, memoranda of alterations, and all other documents recorded and filed in the commissioners’ office, or in the office of the court of Chancery ap- pointed for the filing of specifications, shall be received in evidence in all proceedings relating to letters patent for inventions in all courts whatever within the. United Kingdom of Great Britain and Ire- land, the Channel Islands, and Isle of Man, and her Majesty’s colonies and plantations abroad, without further proof or production of the originals. Foreign.|—The grant of letters patent by a foreign country (being an act done by the governing power in a matter which is to affect the public interests, restraining them for the present, and giving a particular individual specific rights, but throwing open and protecting the public rights after the expiration of a certain term) is an act of state, within 14 and 15 Vict. c. 99, s. 7, ENGLISH PATENT CASES. 12] and is therefore provable by a copy of the letters patent, pur- porting to be sealed with the seal of such foreign state, without proof of the seal or signature, or judicial character of the person signing the same. Betts’ Patent, in re, 1 Moore, P. C. C. 493 g Jur., N. S. 1373 11 W. R. 22157 L. T., N.S. 577. Trade Mark Cases. DIGEST ‘ English Trade Mark Cases. TRADE MARKS. 1, Principle of Right. There is no copyright in a trade mark. Farina v. Silverlock, 6 De G., M. & G. 214; 2 Jur, N. S. 1008; 26 L. J., Chane. 11. A manufacturer who has adopted a trade mark, in order to designate some particular article as made by him, has a right to the assistance of a court of equity to prevent any one from so using the same, or any similar mark, as to induce purchasers to believe, contrary to the fact, that they are buying that particular article to which the mark was originally applied. 6. There is no property in a trade mark, but a person who has been in the habit of using a particular mark may prevent other persons from fraudulently taking advantage of the reputation which his goods have acquired, by using his mark in order to pass off their goods as his, to his injury. Collins Company v. Brown, 3 Kay & J. 423; 3 Jur, N.S. gag. The name of a manufacturer, or a system of numbers adopted and used by him in order to designate goods of his make, may 126 DIGEST OF be the subject of the same protection in equity as an ordinary trade mark. Ainsworth v. Walmsley, 1 L. R., Eq. 5183 12 Jur., N. S. 205; 35 L. J., Chane. 352; 14 W. R. 3633 14 L. T., N. 8. 220—V.-C. W. A court of equity refused to interfere to prevent a vendor of a quack medicine from advertising such medicine in such a man- ner as to induce the public to believe it was sanctioned by the plaintiff, a physician of eminence, and sold by the defendant as his agent; the injury being, in the opinion of the court, one rather of defamation than of injury to’ property; and it being incumbent on the plaintiff to establish at law the defamatory character of the advertisements before he applied for the inter- ference of the court. Clark v. Freeman, 12 Jur. 149; 17L. J., Chanc. 142—R. Where a trade mark contained an emblem, with such a collo- cation of words as amounted to an advertisement of the charac- ter and quality of the goods, and contained statements which, though true as regarded the original adopter of the trade mark, were calculated to deceive the public when used by his assignee, the assignee is not to be entitled to protection in the use of such trade mark. Leather Cloth Company v. American Leather Cloth Company, 11 Jur., N. 8.5133 35 L. J., Chanc. 53; 13 W.R. 873; 12 L. T., N.S. 742; 11 H. L. Cas. 523. Although a trader may have a property ina trade mark, giving him a right to exclude all others from using it, if his goods de- rive their increased value from the personal skill or ability of the adopter of the trade mark, he can not give any other person the right to affix his name or mark upon their goods, for the effect thereof would be to give them the right to practice a fraud upon the public. Jb. Where A. introduces into the market an article which, though previously known to exist, is new as an article of commerce, and has acquired a reputation therefrom in the market by a name not merely descriptive of the article, B. will not be permitted to sell a similar article under the same name; and this, although the peculiarity of the name has long been in common use as ap- ENGLISH TRADE MARK CASES. 127 plied to goods of a different kind. Brabam v. Bustard, 1 Hem. -& M. 447; 11 W.R. ro613 9 L. T., N.S. 199. The original inventor of a new manufacture, and persons claiming under him, are alone entitled to designate such manu- facture as ‘“‘the original;” and if he or they have been in the habit of so designating their manufacture, an injunction will be granted to restrain another manufacturer from applying the designation ‘‘ original” to his goods. Cocks v. Chandler, 11 L. R., Eq. 446—M. R. The word “patent” having come to be applied in common language to various manufactured articles as descriptive of a par- ticular quality, without any reference to letters patent, the use of the word “‘ patent thread,” as part of the trade mark on an unpatented article, will not prevent a court of equity from pro- tecting such trade mark, Marshall v. Ross, 39 L. J., Chane. 225—V.-C. J. The duties of a person who discovers that he has in ignorance infringed a trade mark—considered. Upman v. Elkan, 12 L.R., Eq. 140. When a man has learned a trade secret from his employer, and practiced it after the employer’s death, selling the article under the old name, he will not acquire such a right to the exclusive use of the name as a trade mark as will be protected in a court of equity. Hovenden v. Lhyd, 18 W. R. 1132—V.-C. B. 2. Action for Infringement or Imitation. A declaration alleged that the plaintiffs prepared, vended, and sold for profit, medicines called ‘‘ Morison’s Universal Medi- cines,” which they sold in boxes wrapped up in paper, having those words printed thereon; that the defendant, intending to injure the plaintiffs in the sale of the medicines, and to deprive them of profits, deceitfully and fraudulently prepared and made ° medicines in imitation of the medicines so prepared by the plaint- iffs, and wrapped up the same in paper, having “¢ Morison’s Uni- versal Medicines” printed thereon, in order to denote that such medicine was the genuine medicine prepared, vended, and sold by the plaintiffs ; and that the defendant deceitfully and fraudu- lently vended and sold for his own lucre and gain the last- 128 DIGEST OF mentioned boxes of the articles, represented and termed by him to be medicine, by the name and description of “* Morison’s Uni- versal Medicines,” which had been prepared, vended, and sold by the plaintiffs ; whereas, in truth, the plaintiffs had never been the preparers, venders, or sellers thereof: Held, that the declaration disclosed a good cause of action. Morison v. Salmon, 2 Scott, N. R. 449; 2 M. & G. 385. Action for wrongfully, knowingly, and fraudulently stamping bars of iron, made by the defendants, with a stamp resembling one used by the plaintiff, which the defendants knew and in- tended to be in imitation of the plaintiff’s, and which was used by the defendants, in order to denote that their iron was made by the plaintiff; and for knowingly selling the iron so marked as and for the plaintiff’s iron. A correspondence between the parties was given in evidence, in which the plaintiff charged the defendants with using the mark, as being a fraud upon him. The defendants, in answer, asserted that they had used the mark for many years continuously. This was not so in fact; but it was shown that the mark had been adopted by them in the exe- cution of orders received from foreign correspondents: Held, that it was properly left to the jury to say, first, whether the de- fendants’ mark bore such a close resemblance to the plaintiff’s as was calculated to deceive the unwary, and injure the sale of the plaintiff’s goods; and, secondly, whether the defendants used the mark with the intention of supplanting the plaintiff, or whether it was done in the ordinary course of business in execu- tion of orders. Crawshay v. Thompson, 4 M. & G. 3573 5 Scott, N. R. 562; 11 L. J., C. P. 301. Held, also, that the notice of the resemblance of the mark, given by the plaintiff to the defendants, did not, in the absence of proof of any intention to imitate it on the part of the defend- ants, give the plaintiff any cause of action. Jb. An action may be maintained by a manufacturer against another manufacturer who marks his goods with the known and accustomed mark of the plaintiff, where the mark used by the defendant resembles the plaintiff’s mark so closely as to be cal- culated to deceive, and as to induce persons to believe the de- ENGLISH TRADE MARK CASES, . 129 fendant’s goods to be of the plaintiff’s manufacture, and the de- fendant uses such mark with intent to deceive and sells the goods so marked as and for goods of the plaintiff ’s manufacture, and proof of special damage is not necessary. Rodgers v. Nowill, 5 C. B. 1095 11 Jur. 1039; 17 L. J., C. P. 52. In such cases it is enough, at least after verdict, to allege generally that by means of the premises the plaintiff was de- prived of the sale of divers large quantities of goods, and lost the profits that would otherwise have accrued to him there- from. 1b. If A.,a manufacturer, uses the mark of B. for the purpose of giving to articles manufactured by A. the appearance of being of the manufacture of B., B. may maintain an action against A., although A.’s articles are not inferior in quality to B.’s, and although it is not shown that B. has sustained actual damage. Blofeld v. Payne, 1 N. & M. 353; 4B. & Ad. 4ro. Where a plaintiff marked his goods, ‘Sykes’ Patent,” to show that they were his own manufacture, and the defendant copied the mark on his goods to show that they were the plaintiff’s manufacture, and sold them, so marked, as and for his manufac- ture: Held, that an action would lie for the injury, though neither party had a valid patent, and both were named “ Sykes.” Sykes v. Sykes, 5 D. & R. 29233 B. & C. 541. The plaintiff’s father prepared and sold a medicine called “ Dr. J.’s Yellow Ointment,” for which no patent had been ob- tained. The plaintiff, after his father’s death, continued to sell the same. The defendant sold a medicine under the same name and mark: Held, that no action could be maintained against him by the plaintiff. Singleton v. Bolton, 3 Dougl. 293. A. declaration alleged that the plaintiff agreed with the de- fendant to manufacture for him fire-bricks, to be marked as he should direct ; that he directed that they should be marked with R.’s name, he well knowing that R. manufactured fire- bricks marked with that name, to indicate that they were manu- factured by him; that the plaintiff, ignorant of the manufacture of fire-bricks by R., and that marking fire-bricks according to - the direction of the defendant would be wrongful, manufactured 130 . DIGEST OF fire-bricks for the defendant, and marked them with the name of R.; that R. filed a bill in chancery for an injunction and ac- count against the plaintiff, and that the plaintiff, in order to compromise the suit, paid R. a sum of money: Held, that the declaration disclosed two grounds of action ; first, because the plaintiff was liable to the injunction, although he used the trade mark of R. innocently, and, secondly, because the natural con- sequence of the defendant’s act was to involve the plaintiff in a chancery suit, even if he had the means of defending it, by reason of his having used the trade mark of R. innocently. Dixon or Dickson v. Faweus, 7 Jur. N. S. 895; 30 L. J..Q B. 137; 9 W.R. 414; 3 L.T., N. S. 693; 3 El. & El. 537. W. originally manufactured starch at a place called Glenfield. ‘For this reason he called his starch the Glenfield starch, and it became well known in the market by that name. He continued to use this name, though he removed his manufactory from Glen- field, and on the labels which were placed on the packets of his starch, it was called the Glenfield starch. C.set up a starch manufactory at Glenfield, and called his starch by a different name. His labels were of the same color as those of W., but labels of this color were used by all starch manufacturers. At the bottom of C.’s labels were these words, ‘*C. & Co., man- ufacturers, Glenfield.” A bill was filed to restrain C. from making use of the word Glenfield: Held, that C. had done nothing to represent his starch to be the same as that of W., and that, consequently, no injunction ought to be granted. Wotherspoon v. Currie, 18 W. R. 942; 23 L. T., N.S. 443— eh 3. Restraining Use or Imitation by Injunction. The jurisdiction of the court of Chancery, in the protection -of trade marks, rests upon property, and fraud in the defendant is not necessary for the exercise of the jurisdiction. Hull v. Bar- rows, 10 Jur., N.S.55; 33 L.J., Chanc. 204; 12 W. R. 322; gL. T., N. 8. 561—C. Where a name, once affixed to a manufactured article, con- tinues to be used after the death of the manufacturer, the name in time becomes a mere trade mark, or sign of quality, and ENGLISH TRADE MARK CASES. 131 ceases to denote, or to be current as indicating, that any partic- ular person was the maker, and would, therefore, be protected. ib. If A. has acquired property in a trade mark, which is after- ward adopted and used by B., in ignorance of A.’s right, A. is entitled to an injunction, but not to an account of profits or to compensation, except in respect of any user by B. after he be- came aware of the prior ownership. Edelston v. Edelston, 9 Jur., N.S. 479; 1 DeG,, J. & S. 185; 11 W. R. 328; 7 L. T., N. S. 768. At law the proper remedy is by an action for deceit, and proof of fraud on the part of the defendant is of the essence of that action; but the court will act on the principle of protect- ing property alone, and it is not, therefore, necessary for the party applying for the injunction to prove fraud, or that the credit of the plaintiff was injured by the sale of an inferior article. J. The right to ask for the interference of the court in respect of a trade mark is founded, first, on the fact that the plaintiff has acquired the right of using the mark, properly: that is to say, that it has not been copied, and does not involve any false representation ; secondly, that the article so marked is actually a vendible article in the market ; and, thirdly, that the defendant, knowing that to be so, has imitated the mark for the purpose of passing in the market other articles of a similar description. McAndrew v. Bessett, 10 Jur, N. 8. 5503 33 L. J., Chance. 561; 12 W.R. 877; 10 L. T., N. S. 442—C. The court will grant a perpetual injunction against the use by one tradesman of the trade marks of another, although such marks have been so used in ignorance of their being any person’s property, and under the belief that they were merely technical terms. Millington'y. Fox, 3 Mylne & C. 338. Where a person is selling an article in his own name, fraud must be shown to constitute a case for restraining him from so doing, on the ground that the name is one on which another has long been selling a similar article. Burgess v. Burgess, 3 De G., M. & G. 896; 17 Jur. 292; 22 L. J., Chance. 675. Therefore, where a father had for many years exclusively sold 132 DIGEST OF a sauce under the title of ‘* Burgess’s” sauce, a court of equity would not restrain his son from selling a similar article under that name, no fraud being proved. J. It is not necessary, in order to give a right to an injunction, that a specific trade mark should be infringed; it is sufficient that a court should be satisfied that there was on the whole a fraudulent intention of palming off the defendant’s goods as those of the plaintiff; but in such a case it is essential that the imitation should be necessarily calculated to deceive. Woollam v. Ratcliff, 1 Hem. & M. 259. 4 To entitle a trader to relief against an illegal use of his trade mark, it is not necessary that the imitation should be so close as to deceive persons seeing the two marks side by side; but the degree of resemblance must be such, that ordinary purchasers proceeding with ordinary caution are likely to be misled. Setxo v. Provezende,1 L. R., Ch. 1923 12 Jur, N.S. 2153 14 W. R. 357; 14.L. T., N.S. 314—C. The actual physical resemblance of the two marks is not the sole question for the court, for if the plaintiff’s goods have, from his trade mark, become known in the market by a partic- ular name, the adoption by the defendant of a mark or name which wilk cause his goods to bear the same name in the market, is as much a violation of the plaintiff’s rights as the actual copy of his mark. JB. Although the defendant may have some title to the use of a name or mark, he will not be justified in adopting it, if the prob- able effect of his so doing is to lead the public to suppose, that in purchasing his goods they are purchasing those of the plaint- iff, J. 4. Practice. In substance there is no distinction between the sale of a business and good-will by a trader himself, and a sale by his as- signees in bankruptcy. Hudson v. Osborne, 39 L. J.. Chanc. 79—V.-C. J. Therefore, on sale of a business by a trader’s assignees in bankruptcy, the trader has no right, upon setting up a fresh busi- ENGLISH TRADE MARK CASES, 133 ness, after his discharge, to use the trade mark of his old busi- ness, or in any other way to represent himself as carrying on the identical business which was sold, although he has a right to set up again in business of the same kind next door to his old place of business. Jb, In such a case it is no objection to the purchaser coming ‘for the assistance of the court, that he has continued to use the name of thd old business which he found there. JA. The plaintiffs were, in August, 1869, and had for some time previously been carrying on business under the style of the Guinea Coal Company, their offices being at No. 22 Pall Mall. In the early part of 1869, the defendant, who had formerly managed their business, established a business on his own account under the style of the Pall Mall Guinea Coal Company ; his offices being first at Beaufort buildings, whence, in August, 1869, he removed to No. 46 Pall Mall. The defendant solicited orders principally by circular, sending circulars to many of plaintiff’s customers, and succeeded in obtaining orders, which the customers afterward said they had intended for the plaintiffs : Held, that they were entitled to restrain him from using the name “ The Pall Mall Guinea Coal Company.” Lee v. Halley, 39 L. J., Chanc. 284; 5 L. R., Chance. 155; 18 W. R. 242; 22 L. T., N.S. 251. The bill was filed on the 24th November, 1869: Held, that there was no laches, inasmuch as the plaintiffs must wait until sufficient proof of the injury they had received was col- lected. Jb. An appeal from a decree granting an injunction to restrain the use of a trade mark ordered to be advanced, on the ground that the injury done to the defendant by the continuance of the in- junction, if wrongly granted, would be irreparable. Lazenby v. White, 6 L. R., Chanc. Ap. 89—L. J. J. 5. Assignment. If a personal trade mark is in any respect less assignable than one referring to locality only, or a mere device, the distinction must be limited to mere cases where the mark is so clearly per- 134 DIGEST OF ENGLISH TRADE MARK CASES, sonal as to import that the goods bearing it are manufactured by a particular person. Bury v. Bedford, 10 Jur., N.S. 5033; 33 L. J., Chance. 465; 12 W.R. 727; 10 L. T., N. S. 470—L. J. A corporation trade mark granted by the Cutler’s Company toa non-freeman, is assignable. Jb. 6. Forging and Costs. A firm of forwarding agents in London received from corre- spondents abroad several boxes of cigars bearing forged brands, which were to be delivered to several persons in England. On application by the makers whose brand had been forged, the agent gave information as to the consignees, and offered either to send back the cigars or to erase the brands: Held, on a bill for injunction filed by the makers whose brands were forged, that the fact of the agents being merely carriers was no defense to the suit; but that as they had giver sufficient information, and offered to erase the brands, they were not to pay costs. Upman v. Elkan, 7 L. R., Chane. Ap. 130, C. Affirming the decree of Master of the Rolls, 12 L. R., Eq. 140. The appellant gave notice to a respondent whose costs the appellant had been ordered to pay, that no alteration in the order as to his costs was asked for, and offered to pay his costs: Held, that thé respondent was not entitled to his costs of appearing on the appeal. Jb. Imitating or forging trade marks. See 25 and 26 Vict. c. 88. Page Missing in Printing and Binding Page Missing in Printing and Binding Copyright Cases. DIGEST English Copyright Cases. I. BOOKS. {. Statutory Enactments, The 8 Anne, c. 19, s. I, gave a copyright in books then printed Sor twenty-one years, and to authors and their assignees the exclusive copyright for fourteen years. And by s. 9, after the expiration of the fourteen years, another similar period, if the author was living. This act was extended to the United Kingdom by 41 Geo. 3, c. 107. By 54 Geo. 3, c. 156, s. 4, authors and their assignees had the exclusive copyright for twenty-eight years from the day of publication ; and if the authors were living at the end of that time, for the residue of their lives. And see Anon., 1 Chit. 24. The 5 and 6 Vict. c. 45, amends the general law of copyright in literary works and productions, repeals 8 Anne, c. 19, 41 Geo. 3, c. 107, and 54 Geo. 3, c. 156, and extends the period of copyright to the author's life, and for seven years after his death, or if that falls short of forty-two years, then for forty-two years from the first publication. The property of an author in an unpublished work exists in- dependently of the statute. Southey v. Sherwood, 2 Mer. 435; _ §. P. Tonson v. Collins, 1 W. Bl. 301. The right and property of an author or a composer of any work, whether of literature, art, or science, in such work, unpub- lished or kept for his private use or pleasure, entitle the owner 140 DIGEST OF to withhold the same altogether, or so far as he may please, from the knowledge of others; and the court of chancery will inter- fere to prevent the invasion of this right by the publication of a catalogue containing a description of such work. Albert (Prince) v. Strange, 1 Mac. & G. 25; 1 H. & T.1; 13 Jur. 109; 18 L. J., Chanc. 120. : Authors have not, by common law, the sole and exclusive copyright in themselves, or their assigns, in perpetuity, after having printed and published their compositions. Ad:ler v. Tay- lor, 4, Burr. 2303. Copyright does not exist at common law, it is the creature of Statute. Fefferys v. Boosey (in error), 4 H. L. Cas. 815; 3 C. L. R. 625; 1 Jur, N. S. 615; 24 L. J., Exch. 81—Lords Brougham and St. Leonards. An Englishman, though resident abroad, will have copyright in a work of his own first published in this country. Jb. Copyright in works of literature and art, after they are pub- lished, exists by statute only; and there is no co-existing com- mon-law protection during the statutable period. Reade v. Conquest, 7 Jur. N. S. 265; 30 L. J., C. P. 269; 9 C. B., N. 8. 755; 9 W.R. 434; 3 L. T., N. 5. 888. The first edition of a work of compilation was published before 5 and 6 Vict. c. 45; several editions of it were published after that act, and not registered: Held, that as to so much of the matter contained in the original edition as was contained in the subsequent ones, the owner might sue, although those sub- sequent editions were not registered; but as to the new matter, the subsequent editions were books which ought to be registered, and the owner could not sue for an infringement on that point. Murray v. Bogue, 1 Drew. 353; 17 Jur. 219; 22 L. J., Chanc. 457: An author whose works had been published more than twenty-eight years before the passing of 8 Anne, c. 19, was not entitled to the copyright for life. Brooke v. Clarke, 1 B. & A. 396. That statute did not impose upon authors as a condition precedent to their deriving any benefit under it, that the com- ENGLISH COPYRIGHT CASES. 14! position should be first printed ; and, therefore, an author did not lose his copyright by selling his work in manuscript before it was printed: White v. Gerach, 2 B. & A. 298; 1 Chit. 24. Upon a bill in equity by the king’s printer to restrain the de- fendant from the publication of certain acts of parliament, to which the patentees for printing law books were also defendants, the court refused to interfere between the contending patents, and therefore only restrained the defendant from printing at any other than a patent press. Baskett v. Cunningham, 2 Eden, 1173. 2. Subject Matter of Copyright. . Generally.|—Copyright may be either in respect of the matter or the arrangement, but no property can be acquired in any arti- cle copied from a prior work. Barfield v. Nicholson, 2 Sim. & Stu. I. Where a person simply makes corrections in and additions to a work in which he had originally no interest, he acquires a copyright in them, and may bring an action if they are pirated. Carey v. Longman, 1 East, 358; 3 Esp. 273. C. published.a book of roads of Great Britain, comprising Patterson’s book (to the copyright of which he was not entitled), with improvements and additions, obtained by actual survey and otherwise; an injunction to restrain a publication of an edition of Patterson, comprising C.’s improvements and additions, was refused in equity. Cary v. Fadin, 5 Ves. 24. There may be a copyright in a translation, whether produced by personal application and expense, or by gift. Wyatt v. Barnard, 3 Ves. & B. 77. The question whether one author has made a piratical use of another’s work does not necessarily depend upon the quantity of that work which he has quoted or introduced in his own book. Bramwell v. Halcomb, 3 Mylne & C. 737. If any person by pains and labor collects and reduces into the form of a systematic course of instruction those questions which he may find ordinary persons asking in reference to the common phenomena of life, with answers to those questions, and explana- 142 DIGEST OF ! tions of those phenomena, whether such explanations and answers are furnished by his own recollection of his former general read- ing, or out of works consulted by him for the express purpose, the reduction of questions so collected, with such answers, unde1 certain heads and ina scientific form, is sufficient to constitute an original work, of which the copyright will be protected _Farrold v. Houlston, 3 Kay & J. 708; 3 Jur., N. S. rosr. But another person may originate another work in the same general form, provided he does so from his own resources, and makes the work he so originates a work of his own by his own labor and industry bestowed upon it. Jb. If, instead of searching into the common sources, and obtain- ing your subject matter thence, you avail yourself of the labors of your predecessor, adopt his arrangement and questions, or adopt them with a colorable variation, it is an illegitimate use. 1b, Falsely to deny that you have copied or taken any idea or language from another work is a strong indication of an animus furandi. Jb. A newspaper not beinz within the copyright act, 5 and 6 Vict. c. 45, requires no registration under that act; but the proprietor of a newspaper has, without registration, such a property in all its contents as will entitle him to sue in respect of a piracy. Cox v. Land and Water Fournal Company, g L. R., Eq. 3243 39 L. J., Chane. 152—V.-C. M. Where the proprietor of a newspaper sought to restrain the piracy of ‘a list of hounds,” the court was of opinion that, although the piracy might be established, the list was liable to such frequent changes, and a correct list was so easily obtained, that it was not a case for an interlocutory injunction. lb, An author has no monopoly in any theory propounded by him. Pike v. Nicholas, 5 L. R., Chanc. 2513 39 L. J., Chane. 4353 18 W. R. 321. Public and General Works.|—There is no copyright in a gen- eral subject, though from its nature the consequence may be close resemblance and considerable interference, as in the case of maps and road-books. Wilkins v. Aikin, 17 Ves. 427. ENGLISH COPYRIGHT CASES. 143 Though copyright can not, as such, subsist in an East India calendar, as a general subject, any more than in a map, chart, or series of chronology, it may in the individual work ; and where it can be traced that another work upon the same subject is not an original compilation, but a mere copy with colorable varia- tions, it will be protected by injunction. Matthewson v. Stock- dale, 12, Ves. 270. An injunction was granted against pirating a court calendar, the individual work creating a copyright, though the general subject was common. Longman v. Winchester, 16 Ves. 269. There is no copyright in the specifications of patents. Wyatt v. Barnard, 3 Ves. & B. 77. But see Newton v. Cowie, 12 Moore, 4573; 4 Bing. 234. A voyage of discovery having been executed, and a narrative of it prepared under the orders of the crown, the narrative is the property of the crown; but ona bill in equity by a publisher, authorized by the secretary of the board of Admiralty to publish such a narrative, the profits remaining at their disposition, an in- junction restraining publication by a stranger was dissolved. Nicol v. Stockdale, 3 Swans. 687. Catalogues.|—There is copyright in a catalogue, unless it is a mere dry list of names. Hotten v. Arthur, 1 H. & M. 603; 32 L. J., Chance. 771; 11 W. R. 934; 9 L. T., N.S. 199. Compilations.|—A work consisting partly of compilations and selections from former works, and partly of original compositions, may be the subject of copyright. Lewis v. Fullarton, 2 Beav. 6; 3 Jur. 669. S. published a work containing an original essay on modern English poetry, biographical sketches of forty-three modern poets, and selections from their poems, amongst which were six short poems and parts of longer poems, the copyright whereof belonged to C. The selections constituted altogether the bulk of: S.’s work, but were alleged to have been introduced into it _ for the purpose of illustrating the essay. A court of equity restrained the publication,of S.’s work as being an infringement of C.’s copyright. Campbell v. Scott, 11 Sim. 31; 6 Jur. 186. 144 DIGEST OF A proprietor of a periodical professing to be an analytical digest of equity, common law, and other cases, copying verbatim the head or marginal notes of cases from reports, the copyright of which was in another person, without his consent, is a piracy (Maule, J., dissentiente). Sweet v. Benning, 16 C: B. 459; 1 Jur., N. 5. 5435 24 L. J.; C. P. 175. In making a map, or compiling a directory, or a similar work, a former work of an exactly similar nature may be used to cor- rect the new work, or as an aid in collecting information, but must not merely be copied or verified. Kelly v. Morris, 35 L. J., Chanc. 423; 1 L. R., Eq. 697; 14 W. R. 496; 14 L. T., N. S. 222—V.-C. W. Although the compiler of a new directory is not justified in using slips cut from one previously published, for the purpose of deriving information from them for his own work; yet he may use such slips for the purpose of directing him to the parties from whom such information is to be obtained. A@orris v. Wright, 5 L. R., Chane. 279; 18 W. R. 327; 22 L. T., N.S. 78. Music.}—A musical composition was a work within 8 Anne, c. 19. Bach v. Longman, Cowp. 623; 8. P.. 1 Chit. 26; Platt v. Button, 19 Ves. 447; Coop. C. C. 303. Though published on a single sheet of paper. Clementi v. Goulding, 11 East, 244; 2 Camp. 25; 8. P., Storace v. Longman, , -and Hime or Hine vy. Dale, 11 East, 244, n.; 2 Camp. 27, n In a declaration for pirating a book, an allegation that the plaintiff was the author of a book, being a musical composition called A., is well supported by showing him to be the author of a musical composition of that name, comprised in, and occupy- ing only one page of a work with a different title, which con- tained several other musical compositions. White v. Geroch, 2 B. & A. 298; 1 Chit. 24. MS8.]—An injunction was granted to restrain the printing of an unpublished MS. which had been, by the representative of the author, given to a person under whom the defendant claimed, but not with the intention that he should publish it. Queensberry (Duke) v. Shebbeare, 2 Eden, 329. Semble, unless there is a special contract, either express or ENGLISH COPYRIGHT CASES. 145 implied, reserving to the author a qualified copyright, the pur- chaser of a manuscript is at liberty to alter and deal with it as he thinks proper. Cox v. Cox, 11 Hare, 118. Letters.|—A copyright in private letters remains in the writer after transmission. Perceval (Lord) v. Phipps, 2 Ves. & B. 19. Letters written by the plaintiff to the defendant, having been returned by him, with a declaration that he did not consider him- self entitled to retain them, the publication of copies taken before the return, without the knowledge of the plaintiff, was restrained by injunction, though represented by the defendant as necessary for the vindication of his character. The jurisdiction to restrain the publication of letters is founded on a right of property in the writer. Gee v. Pritchard, 2 Swans. 402. The receiver of a letter has a sufficient property in the paper upon which it is written to entitle him to maintain an action of detinue for it against the sender, into whose hands it had come as a bailee. Oliver v. Oliver, 11 C. B., N. S. 139; 8 Jur., N. S. 512. When the solicitor of a company writes a letter, apparently on the behalf of the company, he has no such property in the letter as to entitle him to prevent its publication, although it was written in his private capacity. Howard v. Gunn, 32 Beav. 462. An injunction was granted to restrain the executor of the per- son to whom private letters were written from publishing them, without leave of the executors of the person who wrote them. Thompson v. Stanhope, Ambler, 737. Continuations of Works.|—An injunction was granted to restrain the publication of a magazine as a continuation of the plaintiff’s magazine, in numbers, and as to communications from corre- spondents received by the defendant while publishing for the plaintiff, not preventing the publication of an original work of the same nature, and under a similar title. Hogg v. Kirby, 8 Ves. 215. An author having sold the copyright of a work published under his own name, and covenanted with the purchaser not to publish any other work to prejudice the sale of it. Semble, that another publisher, who has no notice of this covenant, will be 146 DIGEST OF restrained from publishing a work subsequently purchased by him from the same author, and published under his name, on the same subject but under a different title, and though there is no piracy of the first work. Barfield v. Nicholson, 2 Sim. & Stu. I. Contrary to Morality, Religion, and Truth.|—The author or a publisher of a work of a libellous or of an immoral tendency can have no legal property in it. Stockdale v. Onwhyn, 7 D. & R. 625; 5 B. & C. 173; 2C. & P. 163. No action can be maintained for pirating a work which pro- fesses to be the amours of a courtezan, and it is no answer to the objection that the party is also a wrong-doer in publishing them, and that he therefore ought not to set up their immoral- ity. Jb. An injunction to restrain the infringement of the copyright in a work, as to which it appeared doubtful whether it did not tend to impugn the doctrine of the scriptures, was refused by a court of equity. Lawrence v. Smith, Jacob, 471. The court of chancery will not interfere by injunction, upon the author’s application, to restrain the publication of a work which is of such a nature as that an action could not be main- tained upon it for damages. Southey v. Sherwood, 2 Mer. 435. To an action for infringing the copyright in a work entitled “ Evening Devotions; or, the Worship of God in Spirit and in Truth, for every Day in the Year, from the German of Sturm ;” a plea that Sturm was a well-known writer on religious subjects, and that the plaintiff procured H. to write the book in question, as a translation from a work in the German, by Sturm, whereas no such work existed, and, with a view to defraud the public, and obtain a profit to himself, published a title-page and preface to the work, falsely representing it to be the genuine production of Sturm: Held, that the plea disclosed a transaction, on the part of the plaintiff, in the nature of crimen falsi; that he had no copyright in the work; and that the plea afforded a good defense to the action. Wright v. Tallis, 1 C. B. 893; 9 Jur. 946; 14. L. J., C. P. 283. ENGLISH COPYRIGHT CASES, 147 3. In Periodicals and Serials. (5 and 6 Vict. ¢. 45, ss. 8, 9.) By the effect of 5 and 6 Vict. c. 45, s. 18, the proprietor of a periodical is precluded from re-publishing, without the consent of the author, articles written by the latter for and published in such periodical in any other form than as reprints of the entire numbers of the periodical in which the articles appeared. Smith v. Johnson, 33 L. J.. Chanc. 137; 4 Giff. 6323 9 Jur., N.S. 1223; 12 W. R. 122; 9 L. T., N.S. 437. A republication in supplemental numbers of a selection of various tales previously published in a periodical is a separate publication within the section. Jd. The right of an author of an article in a periodical, under 5 and 6 Vict. c. 45, s. 18, to prevent a separate publication, is not copyright within the meaning of section 24, and it is no objection to a motion for an injunction in such a case that the author has not entered his work at Stationers’ Hall. Adayhew or Murray v. Maxwell, 1 Johns. & H. 312;.8 W. R. 118; 3 L. T., N. 5S. 466. The republication of the Christmas number of a periodical under a different title, form, and price, is a separate publication of an article contained in such number, which the author is entitled to restrain. Jb. Under 5 and 6 Vict. c. 45, s. 18, actual payment for an arti- cle written for a periodical work is a condition precedent to the vesting of the copyright, in the article, in the proprietor of the work ; a contract for payment is not sufficient. Richardson vy. Gilbert, 1 Sim., N.S. 336; 15 Jur. 389; 20 L. J., Chane. 553. A proprietor of an encyclopedia, who employs a person to write an article for publication in that work, can not, without the writer’s consent, publish an article in a separate form, or otherwise than in the encyclopedia, unless the article was written on the terms that the copyright therein should belong to the proprietor of the encyclopedia for all purposes. Hereford (Bishop) v. Griffin, 16 Sim. 190; 12 Jur. 2553; 17 L. J., Chanc. 210. By 5 and 6 Vict..c. 45, s. 18, when a proprietor of any 148 DIGEST OF periodical work shall employ any person to compose any article, and the same shall have been composed on the terms that the copyright therein shall belong to such proprietor, the copyright shall be the property of such proprietor: Held, that these terms need not be expressed, but may be implied. Sweet v. Benning, 16 C. B. 459; 1 Jur, N.S. 543; 24 L. J., C. P. 175. Where an author is employed by the proprietor of a period- ical to write for it articles on certain terms as to price, but without any mention of the copyright, it is to be inferred that the copyright is to belong to such proprietor. Jb. 4, In Plays and Novels, A. published a play, and afterwards published a novel founded upon it, into which he introduced many scenes and passages from the play. B. afterward published a play, compiled from A.’s novel, without (as was alleged) any knowledge of A.’s play. B.’s play contained scenes and passages, substantially identical with scenes and passages which were common both to A.’s play and novel: Held, that even if B.’s play was a fair adaptation of the novel, and not an infringement of the copyright therein, it was an infringement of the copyright in A.’s play. Reade v. Lacy, 1 Johns. & H. 524; 7 Jur.. N.S. 463; 30 L. J., Chanc, 655; 9 W.R. 5313 4 L. T., N.S. 354. Dramatizing the incidents of a novel without the author’s con- ‘sent is not an infringement of his copyright. Reade v. Conquest, 9 C. B., N. S. 7553 7 Jur, N. S. 265; 30 L. J., C. P. 209; g W.R. 434; 3 L. T., N.S. 888. It is no infringement of copyright to represent a play drama- tized from a novel written by another author; but it is an ‘infringement to print and publish a play so constructed. Tinsley v. Lacy, 1 H. & M. 747; 32 L. J., Chanc. 535; 11 W.R. 876. ‘5. In Songs. One who adapts words of his own to an old air, adding thereto a prelude and an accompaniment, also his own, acquires a copy- right in the combination, and may, in an action for an infringe- ment against one who has pirated the whole, properly describe ENGLISH COPYRIGHT CASES. 149 himself as the proprietor of the entire composition. Lover v. Davidson, 1 C. B., N.S. 182. Certain music publishers having adapted original words to an old American air, which was re-arranged for them, gave to the song so composed the name of “ Minnie,” and procured it to be sung by Madame Anna Thillon, a popular singer, at M. Julien’s concerts in London; and when it had by that means become a favorite song, they published it with a title-page containing a picture of the singer who had brought the song into notice, and the words, ‘‘ Minnie, sung by Madame Anna Thillon and Miss Dolby at Julien’s Concerts, written by George Linley:” Held, that the publishers had by these means obtained a right of prop- erty in that name and description of their song, which a court of equity would restrain any person from infringing. Chappell v. Sheard, 2 Kay & J. 117; 1 Jur, N.S. 996. Another music publisher subsequently published the same melody with different words, and upon the title-page they placed a similar portrait of Madame Anna Thillon, with the words “ Minnie Dale, sung at Julien’s Concerts (and always encored), by Madame Anna Thillon; the music composed by H. S. Thompson ;” this song having never, in truth, been sung by Madame Anna Thillon at Julien’s concerts: Held, that this was a palpable attempt to induce the public to believe that the song so published was the same as that of the first publishers; and an injunction was granted to restrain this or any other sim- ilar infringement of their right to the name and description of their song. Jb. There are four indicia in the title of a song, the imitation of which by another party may be restrained by injunction, viz., the name of the song, the name of the singer, of the composer, and of the publisher. Jb. There can not be,a copyright claimed fora part of a book and disclaimed for another part, as in a patent; and the plaintiffs were entitled to protection, although they had simply registered their song, without mentioning that they claimed no copyright in the tune. Jb. The statement in the title-page, “written by L.,” when the 150 DIGEST OF music was not, although the words were, composed by L.., is not such a misrepresentation as to disentitle the plaintiffs to protec- tion. 1b. C. having published a song, on the title-page of which was a portrait of Madame Anna Thillon, and the words “ Minnie, sung by Madame Anna Thillon and Miss Dolby at Julien’s Concerts, written by George Linley,” and this song having be- come very popular, D. subsequently published another song, consisting of different words to the same air (in which there was no copyright), with a title-page on which was a different portrait of Madame Anna Thillon, copied from an American publication, and the words ‘** Minnie, dear Minnie. Madame Anna Thillon:” Held, that this was an obvious attempt to pass off D.’s publication for that of C.’s, which had obtained the public favor; and this attempt was restrained by an interlocutory injunction, without imposing upon the parties the necessity of . trying the right at law. Chappell v. Davidson, 2 Kay & J. 123. A count stated that a song, of which the plaintiff was the pro- prietor, had been sung by an eminent singer at public concerts, and had acquired great popularity, and became in great demand; that he published it with a likeness of the singer on the outside leaf, and that the defendant, after such publication, deceitfully and fraudulently, and without his consent, caused to be printed another song, the music, melody, and words whereof closely resembled the music, melody, and words of the plaintiff’s song, and with an outside leaf bearing the likeness of the same singer, and similar words to those of the plaintiff's song, with the fraudulent intention of representing and inducing a belief that it was the song of the plaintiff, and deceitfully and fraudulently, and without his consent, offered for sale and sold great numbers, under the false color and pretense that it was the song so published by the plaintiff, whereby he was injured in the sale of his song. A second count was substantially the same, but limited to the piratical use of the title-page and devices on the outside leaf of the plaintiff’s song. A third count stated that the plaintiff was the proprietor of the copyright in a certain book, and that the defendant, without his consent in writing, wrongfully and in- juriously printed for sale divers copies of the work, whereby his ¥ ENGLISH COPYRIGHT CASES. 151. profits were lessened. A fourth count charged the defendant with having in his possession for sale, and selling, copies of the work so unlawfully, and without the consent of the plaintiff, printed. He pleaded to these counts, that the song was printed and published without the name and place of abode of the printer upon the first or last leaves thereof, in violation of the 2 and 3 Vict. c. 12: Held, that the plea disclosed no defense as to the charges contained in the third and fourth counts; and semble, that it could not be taken distributively. Chappell v. Davidson, 18 C. B. 194; 2 Jur., N. S. 544; 25 L. J., C. P. 225. 6. By Foreigners. The object of the 8 Anne, c. 19, was to encourage literature among British subjects, which description includes such foreigners as, by residence here, owe the crown a temporary allegiance; and any such foreigner, first publishing his work here, is an author within the meaning of the statute, no matter where his work was composed, or whether he came here solely with a view to its publication. ‘Fefferys v. Boosey (in error), 4 H. L. Cas. 815; 3 C.L.R. 625; 1 Jur., N.S. 615; 24 L. J., Exch. 81 (overruling Boosey v. Fefferys, 6 Exch. 580; 15 Jur. 540; 20 L. J., Exch. 354—Exch. Cham.; Cocks v. Purday, 5 C. B. 860; 12 Jur. 677; 17 L. J., C. P. 2733; Boosey v. Davidson, 13 Q. B. 257; 13 Jur. 678; 18 L. J., Q, B. 1743 and Ollendorf v. Black, 14 Jur. 1080; 4 De G. & S. 209; 20 L. J., Chance. 1080. And affirming Boosey v. Purday, 4 Exch. 145; 13 Jur. 918; 18 L. J., Exch. 378; and Chappell v. Purday, 14 M. & W. 303; 9 Jur..495; 14 L. J., Exch. 258). Copyright commences by publication; if at that time a foreign author is not in this country, he is not a person whom the statute meant to protect. Jb. : B., a foreigner, resident at Milan, composed a musical work, and, according to the law of Milan, assigned his copyright to R., also a foreigner, who coming to London, assigned his interest therein to an Englishman, but for publication in Great Britain and Ireland only, and thereupon the first publication took place 152 DIGEST OF in England: Held, that B. had no copyright in the publica- tion. Jb. If a foreigner translates an English work, and then an English- man retranslates the foreign work into English, that would ‘be an infringement of the original copyright. AZurray v. Bogue, 1 Drew. 3533 17 Jur. 219; 22 L. J., Chane. 457. An alien friend, coming into a British colony, and residing there for the purpose of acquiring copyright during and at the time of the publication in England of a work composed by him, and first published ‘in this country, is entitled to copyright in England in the work so published, though he may not, under the laws in force in the colony where he is residing, be entitled to copyright there. Low v. Routledge, 11 Jur., N.S. 939; 35 L. J., Chance. 114; 1 L. R., Ch. App. 42; 14 W. R. go; 13 L. T., N. 5. 421. z 7. Free Copies. To British Museum.|—By 5 and 6 Vict. c. 45, s. 6, @ printed copy of the whole of every book, together with all maps, prints, or other engravings, and also of any second or subsequent edition, shall, within one calendar month after the day on which the book is first sold, published, or offered for sale within the bills of mortality, or within three calendar months, if first sold, published, or offered for sale in any other part of the United Kingdom, or within twelve calendar months if first sold, published, or offered for sale in any other part of the British dominions, be delivered, on behalf of the publisher, at the British Museum. By s. 7, the mode and time of delivering are pointed out and pre- scribed. To other Public Libraries. |—By 5 and 6 Vict. c. 45, s. 8, @ copy of the whole of every book and of any second or subsequent edition of every book containing additions and alterations, together with all maps and prints belonging thereto, are on demand in writing left at the place of abode of the publisher at any time within twelve months after publication to be delivered within one month after the demand for the use of the following libraries, viz., Bodleian Library at Oxford, Public Library at Cambridge, Faculty of Advocates at ENGLISH COPYRIGHT CASES. 153 Edinburgh and Trinity College, Dublin. By s. 10, a penalty not exceeding 5/., besides the value of the copy, on neglecting or failing to deliver is incurred for every default. A single part of a work published at uncertain intervals, of which thirty copies only were printed, twenty-six of which were subscribed for, the principal costs of publication being defrayed by funds devised for that purpose, was not a periodical publica- tion, or book, which need be entered at Stationers’ Hall; nor was it demandable by the public libraries under 54 Geo. 3, c. 156. British Museum v. Payne, 2 Y. & J. 166; 1 M. & P. 415; 4 Bing. 549. The 8 Anne, c. 19, s. 5, made it necessary for a printer of a book, composed after the passing of the act, and published for the first time after the composition, which book was printed and published with the consent of the proprietor of the copyright, to deliver a copy upon the best paper to the warehouse-keeper of the Company of Stationers, for the use of the library of the © University of Cambridge, notwithstanding the title to the copy of such book, and the consent of the proprietor to the publica- tion, was not entered in the registry book of the company. Cambridge University v. Bryer, 16 East, 317. 3. Entry of Proprietorship at Stationers’ Hall. By 5 and 6 Vict. c. 45, s. 13, it shall be lawful for the pro- prietor of copyright in any book published or to be published, to make entry in the registry book of the Stationers’ Company of the title of such book, the time of the first publication thereof, the name and place of abode of the publisher thereof, and the name and place of abode of the proprietor of the copyright of the said book, or of any por- tion of such copyright, in the form in the schedule given to the act, upon payment of 55. to the officer of the company. No copyright is acquired. by the registration of a book before its actual publication. Correspondent Newspaper Company v. Saunders, 11 Jur. N. S. 540; 13 W. R. 804; 12 L. T., N.S. 540—V. C. W. To entitle any one but the author of a literary work to register 154 DIGEST OF it at Stationers’ Hall, there must be an absolute assignment of the copyright. Bastow, ex parte, 14 C. B. 163. Where in registering the proprietorship of a copyright, either the date of the first publication or the name of the publisher, is incorrectly entered, a subsequent assignment by entry in the book of registry is invalid. Low v. Routledge, 10 Jur., N. S. 922; 33 L. J., Chance. 717; 12 W. R. 1069; 10 L. T., N.S. 8383—V. C.K. The author and proprietor of copyright in a song, in the entry at Stationers’ Hall, describing his place of abode as 65 Oxford street, he being in America at the time of the publication, and having no place of abode in England,-but 65 Oxford street being the address of his publishers, is a sufficient description. Lover v. Davidson, 1 C. B., N.S. 182. A,, being in New York, and wishing to publish a song there, and in London simultaneously, entered into an agreement for an assignment of the American copyright toa publisher in New York: Held, that a receipt for the purchase money was no evidence of the assignment; and also, that the date on the title- page (as required by the American law) was not conclusive evidence of the time of publication in New York. J. H. agreed with T. to edit a translation of a foreign work, and compose a biographical sketch of the author, and give notes of his own. It was intended that T. should have the sole right of multiplying copies of the work, and the work was published be- fore 5 and 6 Vict. c. 45.- There was no assignment of the copy- right from H. to T. After T.’s death, his widow, with H.’s knowledge and assent, registered the copyright in her own name under 5 and 6 Vict. c. 45: Held, that the copyright was in T.’s widow and not in H. Hazlitt v. Templeman, 13 L. T., N. S. 593—Q., B. After H.’s assent to T.’s widow registering the copyright in her own name, she paid to him money, and he received from her books on the publication of a fresh edition on the same terms as stipulated in the agreement between H. and her husband in his lifetime. H., on three occasions, claimed remuneration on those terms, and she did not repudiate all liability, but disputed the ENGLISH COPYRIGHT CASES. 155 quantum merely: Held, evidence from which the jury might infer an agreement by the widow to remunerate H. on the same scale as in the agreement with her husband in consideration of his assenting to her registering the copyright in her own name. Jd. The proprietor of the copyright in a map, whether forming part or published independently of a book, can not maintain a suit in respect of any infringement of his copyright until he has registered the map at Stationers’ Hall, under the provisions of 5 and 6 Vict. c. 45. Decision of Malius, V.-C., reversed. Stan- nard v. Lee, 6 L. R., Chance. App. 346—L. J. J. Before this Enactment.|—An author, whose work was pirated before the expiration of 28 years (under 54 Geo. 3, c. 156) from the first publication of it, might maintain an action for damages against the offending party, although the work was not entered at Stationers’ Hall, and although it was first published without the name of the author affixed. Beckford v. Hood, 7 T. R. 260. 9. Expunging or Varying Entry. By 5 and 6 Vict. c. 45, s. 14, if auy person shall deem himself aggrieved by any entry under color of the act in the book of registry, it shall be lawful for such person to apply by motion to the Court of Queen's Bench, Common Pleas, or Exchequer, in term time, or by summons to a judge in vacation, for an order that such entry may be ‘expunged or varied, and upon the application the court or judge shall make such order for expunging, varying, or confirming such entry, either with or without costs, as to the court or judge shall seem just, and the officer appointed by the Stationers’ Company shall, on the pro- duction of such order, expunge, or vary the same according to the requisitions of the order. Before the act, a plaintiff instituted proceedings in equity for an alleged infringement of his copyright, and an issue had been directed, whereupon he caused the entry to be made, and com- menced an action: Held, that the defendant was entitled to have the entry expunged; but the court discharged the rule for that purpose, on the plaintiff undertaking not to use the entry as evidence at the trial. Chappell v. Purday,1 D. & L. 458; 12 M. & W. 303; 13 L. J., Exch. 7. ° 156 DIGEST OF An entry having been improperly made on the registry, the court granted a rule to vary or expunge it. Bastow, ex parte, 14 C. B. 631. Upon a rule nisi to expunge three entries made in the registry on the ground that they would be prima facie evidence in an action against the defendant for publishing the pieces of music men- tioned in them, alleged to be the copyright of the plaintiff, the court (the plaintiff refusing to consent not to use the entries on the trial) declined to expunge the entries, but directed an issue whether there was a copyright in the music, and whether the plaintiff was the proprietor of the copyright, on the trial of which the entries should not be used; and ordered that the rule should be enlarged until the trial of the issue. Davidson, ex parte, 2 EI. & Bl. 5773 18 Jur. 57. The court will not exercise its power to expunge an entry of proprietorship of copyright in the registry, unless it is clearly and unequivocally shown that it is false, or vary it, unless satis- fied by affidavit that in so doing the court would make a true entry; repudiating the power exercised by the Court of Queen’s Bench in the above case. Davidson, ex parte, 18 C. B. 2973 2 Jur., N. 5. 1024; 25 L. J., C. P. 237. A., the author of a song, wishing to preserve his copyright therein in America as well as in England, caused his agents simultaneously to register it in New York and London. In the entry in the registry, the name of the London agent was inserted by mistake as the proprietor of the copyright. A., when he discovered this, procured such entry to be altered under a judge’s order, by inserting his own name as proprietor in lieu of that of his agent, and he afterward brought an action for piracy against B., who had published the song in this country before the entry had been altered. B. claimed no title in himself to the copy- right, but relied on such prior publication, and also on an alleged publication in America anterior to that stated in the original reg- istration. "The court refused, on the application of B., to ex- punge or vary such altered entry in the registry, because it did not clearly appear that there had been a prior publication in America, or that the entry ‘was untrue. Jb. ENGLISH COPYRIGHT CASES. 157 Expunging Entries.|—An information was laid by G., against W., charging that he, not being the proprietor of copyright in certain paintings and photographs mentioned in the information, had unlawfully sold copies thereof. At the hearing, certified copies of entries in the register kept under 25 and 26 Vict. c. 68, were produced as proof that G. was the proprietor of the paintings and photographs. The photographs were copies of engravings made for G. from engravings of which he was the proprietor. The description of one of the paintings in the ‘register was, “‘ A piper and a pair of nut-crackers,” with the name of the painter, Sir E. Landseer, R. A. W. was convicted, and G. subsequently applied, under 5 and 6 Vict. c. 45, s. 14, to have the entries expunged: Held, first, that G. was not a per- son who could deem himself “‘ aggrieved ” within the meaning of that section. Walker, ex parte, Graves, in re, 39 L. J., QO. B. 31. Held, secondly, that the entries were not invalid by reason of their not showing that the author or former proprietor had reg- istered in addition toG. Jd, Held, thirdly, that the description, “‘A piper and a pair of nut-crackers ” was not so uncertain as that the court would, on application of G., expunge the entry. Jd. 10. Assignment of Copyright. By 5 and 6 Vict. c. 45, 8.13, it shall be lawful for every regis- tered proprietor to assign his interest or any portion of bis interest’ therein, by making entry in the book of registry of such assign- ment, and of the name and place of abode of the assignee thereof, in the form in the schedule, on payment of the sum of 53.3 and such as- signment so entered shall be effectual in law to all intents and purposes whatsoever, without being subject to any stamp duty, and shall be of the same force and effect as if such assignment had been made by deed. To entitle a party to maintain an action as assignee for an in- fringement of the copyright in a song, under 8 Anne, c. 19, s. I, there must have been an assignment of the copyright by an instrument in writing, attested by two witnesses. Davidson vy. 158 DIGEST OF Bohn, 6 C. B. 456; 12 Jur. 922; 18 L. J., C. P. 15; 8. P Power v. Walker, 3 M. & S. 73 4 Camp. 8. No assignment of copyright under 8 Anne, c. 19, the benefit of which was claimed by the assignee, although from a foreigner, could be good in this country, unless it was attested by two wit- nesses. ‘Fefferys v. Boosey, 4 H. L. Cas. 815; 3 C. L. R. 625; 1 Jur. N.S. 615: 24 L. J., Exch. 81. There can not be a partial assignment of copyright. /6.— Lord St. Leonards, A foreign author can not, by assigning his copyright accord- ing to the law of his country, give the assignee a copyright which will be recognized in England so as to entitle the pur- chaser of it here to the right of exclusive publication. J. (Overruling Boosey v. Davidson, 13 Q. B. 257; 13 Jur. 678; 18 L. J., Q. B. 1743 Cocks v. Purday, 5 C. B. 860; 12 Jur., 677; 17 L. J., C. P. 273; and Boosey v. Fefferys, 6 Exch. 580; 15 Jur. 540; 20 L. J., Exch. 354—Exch. Cham.) A. wrote words to an old air, and got his friend D. to com- pose an accompaniment, and A. agreed in writing with D. to exe- cute a proper assignment of the whole work to him or any per- son whom he might name. A. accordingly executed a deed of assignment to D. and C. The defendant published a copy of the whole work: Held, that the agreement to assign was execu- ‘tory, and did not operate as an assignment, so as to render the subsequent deed of assignment inoperative. Leader v. Purday, 7 C. B.4; 12 Jur. rogr; 18 L. J., C. P. 197. If a prima facie title to the copyright in a book is rebutted, the right may be supported without the production of a formal assignment attested by two witnesses under 5 and 6 Vict. c. 45. Kyle v. Fefferys, 3 Macq. H. L. Cas. 611. A receipt in writing for the price of the copyright operates as an effectual assignment. Jb. An assignment of copyright made after the 54 Geo. 3, c. 156, and before the 5 and 6 Vict. c. 45, needs not be attested. Cum- berland v. Copeland, 1 H. & C. 194; 9 Jur, N.S. 253; 31 L. J., Exch. 3533 7 L. T., N. S. 334—Exch. Cham. ENGLISH COPYRIGHT CASES, 159 The 54 Geo. 3, c. 156, repealed, by sect. 4, the 8 Ann. c. 19, s. 1, in this particular. Jd. Action for the copyright of a play. Plea, non assumpsit : Held, that it could not be objected that the assignment was not in writing, but that it ought to have been specially pleaded. Barnett v. Glossop, 1 Scott, 621 ; 1 Bing. N.C. 633; 1 Hodges, 94. In an action for pirating a work, evidence that the plaintiff acquiesced in the publication six years ago is no proof of. an as- signment of the copyright. Latour v. Bland, 2 Stark. 382— Abbott. Where an author who had sold his copyright, by living more than fourteen years obtained the resulting right for fourteen years more, under 8 Anne, c. 19: Held, to belong to his assignee, and not to himself. Carnan v. Bowles, 2 Bro. C. C. 80; 1 Cox, 283. An author having given a work to a publisher, who, by the sale of it, reimbursed his expenses and made considerable profit, can not, at the end of the first fourteen years, restrain him by injunction from continuing the publication. Rundell v. Murray, Jacob, 311. \ {1. Proof of Registry. By 5and 6 Vict. c. 45, s. 11, @ book of registry, wherein may be registered the proprietorship in the copyright of books, and assignments thereof, and in dramatic and musical pieces, whether in manuscript or otherwise, and licenses affecting such copyright, is to be kept at the Hall of the Stationers’ Company, by the Officer appointed by the company, and open at all conevnient times to inspection on payment of a shilling. Such officer must give a copy of any entry in this book, certified under his hand and impressed with the stamp of the company, to any one on payment of five shillings. Id. Copies so certified and impressed shall be received in evidence in all courts, and in all summary proceedings, and shall be prima facie proof of the proprietorship or assignment of copyright or license as therein expressed, but subject to be rebutted by other evidence ; and, in 160 DIGEST OF the case of dramatic or musical pieces, shall be prima facie proof of the right of representation or performance, subject to be rebutted as aforesaid, Id, 12. Penaltits on Importation of prohibited Works. (5 and 6 Vict. c. 45, 5. 17.) Two penalties might be incurred on the same day, on 12 Geo. 2, c. 36, for selling books, originally written and published here, and afterward reprinted in any other country, and imported into this, if the acts of sale were distinct. Brooke v. Millikin, 3 T. R. 509. 13. Rights of Authors, Editors, and Publishers, Semble, where an author agrees with a bookseller to publish his work, and to allow him interest for the money he should ad- vance, and also a share of the profits, the bookseller has a lien on the copyright for his disbursements. Brook v. Wentworth, 3 Anst. 881. An author may maintain an action for an injury to his repu- tation against a publisher of an inaccurate edition of his work, falsely purporting to be executed by him, though the publisher is the owner of the copyright. Archbold v. Sweet, 1 M. & Rob. 62; 5 C. & P. 219—Tenterden. A., having printed a work, sold 300 copies to B., a bookseller, at 40s. a copy, binding himself not to sell to others, in quires, under 48s., and in single copies under 50s. a copy, until B.’s 300 were sold, or his consent was obtained. In his letter, which con- stituted the agreement, he saidto B., ‘I do not expect you to sell under 48s. and 50s., but do as you like.” When B. had sold a part of the 300 copies, he went into partnership with C. and transferred all his stock at the cost price. He also sold some copies at 45s. and 46s. A.,in contravention of his agreement, sold under the stipulated prices; but, on being threatened with proceedings by B., persuaded D., who had purchased the prin- cipal part, to consent to give them back, if it would satisfy B. D. had an interview with B., andtold him this. D., said that he understood the arrangement was a settlement of the difference’ ENGLISH COPYRIGHT CASES. 161 and that B. went away from the interview perfectly satisfied: Held, in an action by B. against A. for a breach of the agree- ment, that neither the underselling by B., nor the transfer of the stock to the partnership, were grounds of a nonsuit ; but that the arrangement with D. was an answer to the action, if the jury thought that it made an end of the dispute between the par- ties. Held, also, that, on the question of damage, it might be considered whether B.’s own underselling had or had not con- tributed to affect the price of the work in the market. Benning v. Dove, 5 C. & P. 427—Denman. The court of chancery can not specifically perform an agree- ment, whereby A. agrees to compose and write reports of cases determined in a court of justice, to be printed and published by a particular individual, fora stipulated remuneration, nor inter- fere by an injunction to restrain the party from permitting the reports written by him to be published by another person ; the remedy, if any, is at law. Clarke v. Price, 2 Wils. C. C. 157. S. entered into a contract with the author of a work, which had already passed through nine editions, to purchase from him, and to sell to the public at a fixed price, a tenth edition, consist- ing of 2,500 copies: Held, that he had obtained a right in the copyright of the work until he should have sold off the tenth edition; that, during such time, he had bound himself to sell the book at the fixed price, and the author would be bound not to interfere in the sale. Sweet v. Cater, 11 Sim. §72; 5 Jur. 38. Held also, after examination by the court of the two books, that there had been such an abstraction of matter from S.’s work as executed the limits of fair quotation; and that, though the pirated passages might be contained in the prior editions, in which the author had the entire copyright, yet that being also in- corporated in the tenth edition, S. was entitled to an injunction. Db. The defendant having been applied to by the plaintiff for per- mission to publish a work, wrote to him as follows: ‘ You for- merly made me an offer of 50/. for the exclusive right of pub- lishing for ten years Captain M.’s work, ‘ Monsieur Violet,’ which offer I accepted, and wrote to you to that effect. I pos- 162 DIGEST OF sess but few of the copyrights of the earlier portions of Captain M.’s works, and they are many of them published in a cheap edition. I will let you know, in a few days, those of the works that belong to me that I feel disposed to offer to you; in the meantime I shall be glad to know if you received my last letter accepting your offer for ‘ Monsieur Violet,’ and if not, whether you still hold the same proposal.” The sum of 50/. was after- ward paid, for which the defendant gave a receipt to the plaint- iff, expressed to be “for permission to publish Captain M.’s work, ‘ Monsieur Violet,’ so long as the copyright may endure, that right to be exclusively his own for ten years:” Held, this amounted to an express warranty by the defendant that he had the title to the copyright in question. Sims or Simms v. Marryat, 17 Q. B. 281; 20 L. J., Q. B. 454. Prior to this transaction Captain M., by an instrument in writing, not sealed or attested so as to pass the legal copyright,’ agreed to assign the copyright in “ Monsieur Violet” to B. for 300/., with a stipulation that a deed of assignment of the copy- right should be executed. “The money was duly paid by B.: Held, that the effect of this was to vest the equitable copyright in B., who would be entitled to a decree in equity fora specific performance of the contract. Jb. — Publishers agreed with an author to print, reprint, and publish a work by him at their own risk, on the terms of dividing equally with him any profits that there might be after payment of all ex- penses; and that if all the copies should be sold and another edition should be required, the author should make all necessary alterations and additions, and the publishers should print and publish a second and subsequent edition on the same terms. After the publication of the first edition the firm of the publish- ers was changed, and the interest of the old firm in the work was in another publisher, with the author’s concurrence, the agree- ment being held to be of a personal nature on both sides, and the benefit of it not assignable by either party without the other’s consent. Stevens v. Benning, 6 De G. Mac. & G. 223; 1 Jur., N.S. 743 24 L. J., Chanc. 153. Semble, unless there is a special contract, either express or implied, reserving to the author a qualified copyright, the pur- ENGLISH COPYRIGHT CASES. 163 chaser of a manuscript is at liberty to alter and deal with it as he thinks proper. Cox v. Cox, rr Hare, 118; 1 Eq. R. 4. R., an author, agreed with B., a publisher, that he should publish, at his own expense and fk a work named W., and after deducting from the produce of the sale all exssenves and certain allowances, the profits remaining of every edition that should be printed were to be divided equally between them; the books to be accounted for at trade price, unless it was thought advisable to dispose of any at a lower price, which was to be left to the discretion of B.: Held, first, that this was a license to publish, and not a parting with the copyright. Reade v. Bentley, 3 K. & J. 271; 4 Jur, N. 8. 823; 27 L. J., Chance. 254- / Held, secondly, that B. could at any time put an end to the agreement by refusing to publish any more. 1b. Held, thirdly, that the form, type, price, time, number, etc., of every edition were left to the sole judgment and discretion of ~B. dh * Held, fourthly, that edition meant every quantity of books put forth to the bookselling trade and to the world at one time by B.; and that when the advertisements, the printing, and other well-known expenses and acts by a publisher bringing out such quantity of copies in the ordinary way are closed, that constitutes the completion of the edition, whether the copies are taken from fixed or movable plates or types, and whether the types or plates are broken up or not, and whether all the copies taken are given forth and advertised for sale, or retained and stored in the warehouse of the publisher. 5. Held, fifthly, that on the completion of any edition as above defined, R. had a right to put an end to the agreement between himself and B., by notice given to B, before any expense has been incurred toward another edition. Jd. An agreement between the author of a work and a publisher, by which the publisher agreed to publish the work at his own expense and risk, and after deducting all charges and expenses, and a percentage on the gross amount of the sale for commission, and risk of bad debts, the profits remaining of every edition that \ 164 “ DIGEST’ OF should be printed of the work to be equally divided between the author and publisher, creates a joint adventure between the parties, which the author was at liberty to terminate upon notice to his publisher, after the publication of a given edition, it ap- pearing that, at the date of such notice, no fresh expense had been incurred by the publisher in printing, advertisements, or otherwise, since the publication of that edition. Reade v. Bentley, 4 Kay & J. 656. The circumstance of the publisher having stereotyped the work previously to the publication of the last published edition, did not affect the right of the author to terminate the agreement. JA. On the meaning of the word edition as applied to cases where a work is stereotyped, and printed in “thousands.” Jb. D., being one of the proprietors and the editor of a weekly periodical, called Household Words, is not, on a dissolution of the partnership, justified in advertising that the publication would be discontinued; for the right to use the name must be sold for the benefit of all the partners, it being part of thé partnership assets; but he might advertise the discontinuance of the publica- tion as regarded himself. Bradbury v. Dickens, 27 Beav. 533; 28 L. J., Chanc. 667. The name of the editor appearing upon the title-page forms no part of the title; and a court of equity refused to restrain, by injunction, the proprietors of a journal from omitting the publi- cation of the editor’s name on the title-page, although the agree- ment between the proprietors and editor provided that the title .of the journal should not be altered without mutual consent. Crookes v. Petter, 6 Jur., N.S. 1131—R. Without determining the extent to which the owners of the ‘copyright in a journal are justified in interfering with the editor in his editorial capacity, where the remuneration of the editor depends on the success of the journal, a court of equity refused to restrain the proprietors from altering articles proposed to be inserted by the editor, or inserting others contrary to his wish, it being the province of a jury to determine the amount of damage, if any, which the editor sustained by reason of the con- duct of the proprietors. Jd. ENGLISH COPYRIGHT CASES. 165 « §., a proprietor of a weekly newspaper, by a letter to F., an author, agreed that he should write two tales, extending over one year, at 10/, per week for each number, to contain about the ‘same quantity as was sent under a former similar engage- ment, and to receive the first number on the 22d April, 1855, and to continue to receive one number weekly during one year, conditionally that he should not write for any other newspaper published at less than 6d. He accepted the engagement, received 20/. as a deposit, and wrote regularly for some weeks; then went to Paris, sent an abrupt conclusion of a current tale in a small quantity of manuscript, refused to proceed with his engagement with S., and entered into another engagement with C. 5. there- upon stopped his payments to F., and employed another author to conclude the half-finished tale: Held, first, that the engage- ment was a yearly engagement, and could not be terminated by F. as a weekly engagement. Stiff v. Cassell, 2 Jur., N. S. 348 —V.C. W. Held, secondly, that the condition as to F. not engaging else- where was valid. Jb. Where publishers of a magazine employ and pay an editor, and the editor employs and pays persons for writing articles in the magazine: Semble, the copyright in such articles is not vested in the publishers under 5 and 6 Vict. c. 45, s. 18. Brown v. Cooke, 11 Jur. 773 16 L. J., Chanc. 140—Shadwell, V. C. E. By 5 and 6 Vict. c. 45, s. 18, when the proprietor of any periodical work shall employ any person to compose any article, and the same shall have been composed on the terms that the copyright therein shall belong to such proprietor, the copyright shall be the property of such proprietor: Held, that these terms need not be expressed, but may be implied. Sweet v. Benning, 16 C. B..459; 1 Jur., N.S. 543; 24 L. J., C. P. 175. Where an author is employed by a proprietor of a periodical work for its articles on certain terms as to remuneration, but without any mention of the copyright, it is to be inferred that the copyright is to belong to such proprietor. Jb. 166 DIGEST OF 14, Piracy. (a) What amounts to. An action will lie if parts of a book of chronology are servilely imitated, though other parts of the book are different. Trusler v. Murray, 1 East, 363, n. But not for publishing sea-charts on an improved and a more useful principle, with material corrections, though many of the lines are copied from old charts. Sayre v. Moore, 1 East, 361, n. A count for pirating generally, is not supported by evidence that there are in the original work particular errors and mistakes, with which the pirated edition corresponds verbatim. Cary v. Kearsley, 4 Esp. 168—Ellenborough. But such evidence would support a count for transcribing particular matter, without consent. Jb. It is lawful to incorporate part of the works of a contemporary writer in a new work, provided it is not a pretext for stealing the original copyright. Jb. But it is otherwise, if so much is copied as to form a substitute for the original work. Roworth v. Wilkes, 1 Camp. 94—Ellen- borough. ‘ To publish, in the form of quadrilles and waltzes, the airs of an opera of which there exists an exclusive copyright is an act of piracy. D’Almaine v. Boosey, 1 Y. & C. 289. A fair abridgment is no infringement of copyright. Anon., Lofft. 775; 8. P., Bell v. Walker, 1 Bro. C. C. 451. An abstract published in an annual register or a magazine is not piracy, especially if the author himself has published extracts in a periodical paper. Dodsley v. Kinnersley, Amb. 403. Upon an action by several for piracy of copyright, it appeared that the defendant had published the work in question, pursuant to the conditions of a cognovit given by him to one of the plaint- ifs and P., in an action for not performing an agreement to write the work in question: Held, a sufficient defense. Sweet v. Arch- bold, 10 Bing. 133; 3 M. & Scott, 299. An action will lie for multiplying copies of a work, in which ENGLISH COPYRIGHT CASES. 167 there is a subsisting copyright, without the consent of the pro- prietor, although the copies are not printed, and are made for gratuitous distribution, and not for sale or hire. Novello v. Sud- lw, 12 C..B. 177; 16 Jur. 689; 21 L. J., C. P. 169. A work may be a piracy from another, though the passages copied are stated to be quotations, and are not so extensive as to render the piratical work a substitute for the original work. Bohn v. Bogue, 10 Jur. 420—V. C. E. In an action for an infringement of copyright, by merely publishing a work printed or caused to be printed by others, knowledge of the copyright so infringed must be proved Leader v. Strange, 2 C. & K. 1o10o—Wilde. The proprietors of a periodical professing to be an analytical digest of equity, common law, and other cases, copying verbatim the head or marginal notes of cases from the reports, the copy- right of which was in another person, without his consent, are guilty of a piracy. Maule, J., dissentiente. Sweet v. Benning, 16 C. B. 4593 1 Jur., N. S. 543; 24 L. J., C. P. 175. A. published a work called Why and Because, treating of the scientific explanations of various common phenomena of life. B. afterward published a work on similar subjects, called The Reason Why, of which A. complained that the name and the plan were suggested by his own work, and the arrangement and phraseology in many instances taken bodily from his work: Held, first, that there was no such similarity or colorable imita- tion in the title as to support A.’s claim for an injunction. Farrold v. Houlston, 3 Jur., N.S. 10513; 3 Kay & J. 708. Held, secondly, that the method of communicating informa- tion by question and answer being of unknown antiquity, A. could not claim any originality in the plan of his work. Jb. Held, thirdly, that many of the questions in A.’s book, being the simplest forms in which the questions could be asked, were not the subject of copyright, and could not be the privilege of A. Jb. But arrangement of questions and answers, however simple in themselves, and on subjects however common, may be the sub- ject of copyright. Jb. 168 DIGEST OF Where two authors, A. and B., treat of the same subject, each being merely a compiler from various other original works, it is a fair use of A.’s work if B. examines it for the purpose of seeing what works, unprotected by copyright, were referred to by A., and B. may then himself refer to such unprotected work, and take from it whatever may be suggested by A.’s book. Jb. It is also a legitimate use of A’s work if B., after having by his Jabor brought his own work into shape, refer to A.’s work to supply omissions. J. But it is a piratical use of A.’s work if B. takes the matter therein borrowed from authorities open to all the world, in order to save his own labor and expense of consulting the original work. JB. It is no defense to say that a pirated work is not offered for sale itself, but merely used to promote the sale of the books mentioned in it. Hotton v. Arthur, 1 H. & M. 603; 32 L. J., Chanc. 771; 11 W. R. 9343.9 L. T., N.S. 199. Where a party sets up a case that his work is a fair compila- tion from a number of others, and not a mere copy from any one, it is of the highest importance that he should produce his original manuscript. Jb. The author of a published work can not prohibit a subsequent ’ writer from making use of the authorities quoted by him, even if it is proved that the latter was put on the track of these authorities by reading the earlier work, but the subsequent writer must, bona fide, go to the common sources, and not copy the quotations or passages from the earlier work, But the taking of a single quotation without verification, and of a single argument founded on facts stated in the earlier book, are not sufficient grounds for granting an injunction. Pike v. Nicholas, 39 L. J., Chance. 435; 5 L. R., Ch. 251; 18 W. R. 321. If any part of a work complained of is a transcript of another work, or with only colorable additions and variations, and pre- pared without any real independent literary labor, such portion of the work complained of is piratical. ‘arrold v. Haywood, 18 _W. R. 279—V.-C. J. But it is impossible to establish a charge of piracy where it is necessary to track mere passages and lines through hundreds of ENGLISH COPYRIGHT CASES. 169 pages, or where the authors of a work challenged as piratical have honestly applied their labors to various sources of informa tion, Jb, (b) Proceedings by Action. Tn an action for an infringement of copyright, the court refused to allow a count founded upon a common-law right to be joined with counts on the 5 and 6 Vict. c. 45, upon the same cause of action. Boosey v. Tolkien, 5 C. B. 476; 5 D. & L. 5475 17 L. J. C. P. 137. The 5 and 6 Vict. c. 45, s. 15, which gives a remedy for piracy in certain cases, does not exclude the common-law remedy in other cases in which’ that statute has given a right. Novello v. Sudlow, 12 C. B. 177; 16 Jur. 689; 21 L. J., C. P. 169. In an action for infringement of copyright in a book, the court will permit interrogatories, as to the sale of the book for a certain period before and after the date of the alleged infringe- ment, to_be administered to the plaintiff for the purpose of as- certaining the amount of damage sustained, and enabling the de- fendant to pay a sufficient sum into court to meet it. Wright v. Goodlake, 13 L. T., N. S. 120; 3 H. & C. 540; 34 L. J., Exch. 82; 12 Jur., N. 8. 143 13 W. R. 349. In an action for infringing the copyright in an opera, in order to prove a prior publication, a statement by a witness that he had seen in print, in Milan, many parts of the opera before the roth June, 1831, is inadmissible, without accounting for the non- production of the printed copies. Boosey v. Davidson, 13 Q. B. 2573 13 Jur, 678; 18 L: J. 2. B. 1974, A statement by a witness of his having heard, before the roth of June, 1831, persons in society sing parts of the opera at a piano, with printed music before them, is no evidence that the music in the printed papers was the same as that of the opera in question. Jb. To an action for the infringement of a copyright in a work, the defendant was allowed to plead that the plaintiff was not the proprietor of the copyright at the time of committing the griev- ance, and also that he was not the proprietor of the copyright * 170 DIGEST OF when the books were printed. Chappell v. Purday, 1 D. & L. 458; 12 M. & W. 303; 13L. J., Exch. 7. The proprietor of a copyright in a book needs not, in an action for its infringement, aver that the defendant published the plaint- iff’s book. The declaration states a good cause of action if it avers that the defendant published parts of the plaintiff’s book. Rooney v. Kelley, 14 Ir, C. L. R. 158—Q. B. Such a cause of action is not answered by a plea in confession and avoidance, to the effect that the book of the plaintiff and the books of the defendant were composed by one and the same author, from common sources of information; and that no part of the defendant’s books, or either of them, was copied or color- ably altered from the book of the plaintiff. 2. , A declaration alleging that the plaintiff agreed to manufacture for the defendant bricks according to his directions ; that the de- fendant directed the plaintiff to mark them in a way which to the defendant’s knowledge amounted to a piracy of R.’s trade mark; that the plaintiff, being ignorant of R.’s rights, marked the bricks as directed, and delivered them to the defendant ; that R. thereupon filed a bill in chancery for an injunction and account against the plaintiff, which he compromised on the pay- ment of costs, discloses a good cause of action, as equity would grant an injunction against a person who innocently uses anoth- er’s trade mark. Dixon v. Fawcus, 7 Jur. N.S. 895; 30 L. J., QO. B. 137. The costs of a successful appeal will not be given in the ab- sence of misconduct on the part of the respondent. Stannard v. Lee, 6 L. R., Chane. Ap. 346—L. J. J. (c) Notice of Objections. By 5 and 6 Vict. c. 45, s. 16, in an action for piracy the de- fendant is to give written notice of the objections to the plaintiff’s title on which he means to rely. Notice of objections required by the statute is sufficiently complied_with, by alleging a definite publication of the disputed work at some particular place, by some definite party, either be- fore, or simultaneously with, the publication by the plaintiff, or 1 ENGLISH COPYRIGHT CASES. 171 with a publication in another place. Boosey v. Purday, 10 Jur. 1038—Exch. In an action by A. for the infringement of copyright in a musical composition, consisting of an air which was old and not the subjeet of copyright, of words which were written by B., and of an accompaniment which was composed by C. at the request and for the benefit of B.: Held, that it was not competent to the defendant, under a notice of objections, stating merely that A. was not the owner of the copyright, and that there was no subsisting copyright in the work, to object at the trial that there had been no assignment by C., even though the point arose upon the evidence adduced on the part of the plaintiff. Leader v. Purday,7 C. B. 4; 6 D. & L. 408; 12 Jur. 1091; 18 L. J., C. P. 197. In anaction for the infringement of a copyright of a book, the defendant pleaded several pleas, denying that the plaintiff was the proprietor of the copyright; that there was any copy- right subsisting; that the books were first published in England, and that the copies complained of were unlawfully printed: Held, on an application by the plaintiff to have the notice of ob- jection delivered with the pleas amended, that the alleged first publication having taken place abroad, and so far back as 1831, it was sufficient for the defendant to state the year of the first publication, and that it was not necessary that he should specify the day or month; but that he was bound to state the name of the party whom he alleged to be the proprieter or first publisher, the title of the work, the place where and the time when the first publication took place. Boosey v. Davidson, 4 D. & L. 147 —B. C.—Wightman. Held, also that he was not entitled to object that some person whose name was to the defendant unknown, and not the plaint- iff, was the proprietor of the copyright; nor that the plaintiff was not himself the author; nor that the work was not first printed or published in the British dominions: nor that the plaintiff ever acquired any title, by assignment or otherwise, to the copyright; nor that there was no valid assignment ; nor that there is no copyright in a work first published out of the British dominions under such circumstances as the books in question 172 DIGEST OF were published. But that he might object that A., if any one, and not the plaintiff, was the proprietor; and that at the time of committing the grievances no copyright in the work was subsist- ing. 1b. (d) Proceedings by Injunction. ' Where there are two rival works, a court of equity will re- strain the proprietor of one of them from advertising it in terms calculated to induce the public to believe that it-is the other work, but will not restrain him from publishing an advertisement tending to disparage that other work. Seeley v. Fisher, 11 Sim. 581. A bill in equity stated, that one of the plaintiffs had composed a book, and that all the plaintiffs had caused the book to be printed and published for their joint benefit, and the book had been duly registered by the plaintiffs, as proprietors of the copy- right thereof, at Stationers’ Hall; and the copyright had ever since remained in them for their joint benefit. The bill also al- leged that the defendant had published a book, in which numer- ous passages were copied from the plaintiffs’ book ; and it prayed an injunction to restrain the sale of the defendant’s book: Held, that the plaintiffs had a joint right to sue. Stevens v. Wildy, 19 L. J., Chance. rgo—V. C, E. Held, also, upon comparison of the two books, and in the de- fendant’s book ‘there had been such copying from the plaintiffs’ book as would entitle them to the injunction. J. A fraudulent intention in infringing copyright is not necessary to entitle the proprietor of the copyright to relief in equity if his right of property has been invaded. Clement v. Maddick, 1 Giff. 98; 5 Jur., N.S. 592; 33 L. T. 117. The registered proprietors of Bell’s Life in London and Sport- ing Chronicle, published weekly, at the price of 54., filed a bill in equity against the proprietors and publishers of a newspaper, called The Penny Bell’s Life and Sporting News, which was published at the price of 1d. The evidence showed, that from the similarity of the two names mistakes had occurred, and were likely to occur, on the part of the public, and that inquiries had ENGLISH COPYRIGHT CASES. 173 been made at the office of Bell’s Life in London for The Penny Bell’s Life. The court granted an injunction to restrain the proprietors of the latter publication from the use of the words Bell’s Life in the title of their newspaper. Jb. In 1857, A., being proprietor of a weekly publication, The London Journal, the price of which was 1d., assigned his copy- right and interest therein to B. for value, and entered into a covenant with B. not to publish, either alone or in partnership with any other person, any weekly periodical of a nature similar to the London Journal. In 1859, A. issued an advertisement, announcing the publication by him of a daily newspaper, to be called The Daily London Journal, and to be sold at 1d. B. thereupon filed a bill in equity against A. for an injunction to restrain A. from publishing The Daily London Journal ; and Wood, V. C., made an order for an injunction. Upon appeal, Knight Bruce, L. J. (dissentiente Turner, L. J.), confirmed the order for an injunction, upon B. undertaking to abide by any ’ order the court might make as to damages, and to bring an action against A. within one week. Ingram v. Stiff, 5 Jur., N.S. 9473 33 L. T. 195—L. J. (e) Destroying or Delivering up of Pirated Copies. A proprietor of a book, whose copyright has been invaded by the printing of a similar work, and who is entitled to an injunc- tion to restrain the printing and sale of the unlawful work, was not, under 54 Geo. 3, c. 156, s. 4, entitled to an order for the delivery up of illegal copies, if the book, the copyright of which had been infringed, was not composed, and entered according to the statutes, at the time the illegal copies were printed. Colburn v. Simms, 2 Hare. 543; 7 Jur. 1104. The registered owner of a copyright in a work is entitled to have all the unsold copies of a piratical edition delivered up to him for his own use, without making any compensation for the cost of production or publication. De/fv. Delamotte, 3 Kay & J. 581; 3 Jur., N.S. 933. : But as to the copies of such piratical edition which bay have been sold, he is not entitled in equity to the gross produce 174 DIGEST OF of the sale thereof, but only to the profits which the party may have made by the sale thereof. Jb. To recover the pirated copies, he must proceed at law. J. Where a party obtains possession by purchase of impressions of etchings, the plates of which are the property of another, knowing that the vendor has obtained such impressions through a breach of trust, a court of equity will interfere by injunction, and, without giving him the right to try the question of property at Jaw, will order the impressions to be delivered up; and the material on which the impressions is taken being substantially worthless, except for that in which the possessor had no property, viz., the impressions, the court will order their destruction. Albert (Prince) v. Strange, 2 De G. & S. 6525 13 Jur. 507. see S. C.1 Mac. & G. 253 13 Jur. 109; 18 L. J., Chance. 120. II. INTERNATIONAL AND COLONIAL COPY- RIGHT. Statutes.|—7 and 8 Vict. c. 12, is the International Copyright Act, which repealed 1 and 2 Vict. c. 59. g and 10 Vict. c. 58, reduced the duties payable upon books and engravings on importation from foreign parts into this country. By 15 and 16 Vict. c. 12, ber Majesty is enabled to carry into effect a convention with France on the subject of copyright. This act extends and explains 7 and 8 Vict. c. 12, and g and 10 Vict. c. 58. As to the provisions for prohibiting the importation into the United Kingdom of foreign reprints of books wherein the copyright is subsist- ing, see 16 and 17 Vict. c. 107, ss. 44, 46, 160, and 18 and 19 Vict. c. 96, ss. 39, 40. 1o and 11 Vict. c. 95, amends the law in regard to the copyright of books published in the colonies. International.|—Before the statutes the court would not pro- tect a foreigner’s copyright. Delondre v. Shaw, 2 Sim. 237. The privileges conferred by 54 Geo. 3, c. 150, did not extend ENGLISH COPYRIGHT CASES. 175 to books printed abroad. Clementi v. Walker, 4 D. & R. 598; 2B. & C. 861. : Prints engraved and struck off abroad, but published here, were not protected from piracy. Page v. Townsend, 5 Sim. 305. A proprietor of a foreign print can not claim copyright there- in, under 7 & 8 Vict. c. 12, unless the date of publication, and name of the proprietor are engraved on the plate, and printed on the print, as required by 8 Geo. 3, c. 13. Avanzo v. Mudie, 10 Ex, 203. ; The 7 and 8 Vict. c. 12, 15 and 16 Vict. c. 12, and the con- vention with France and order in council made thereunder, do not exempt authors of works in France claiming copyright in this country from the conditions affecting authors of works in this country. Cassell v. Stiff, 2 Kay & J. 279. The order in council of the roth of January, 1852, providing that French works must be registered at Stationers’ Hall within three months after the first publication thereof in France, “or, if such works be published in parts, then within three months after the publication of the last part thereof :” Held, that a French news- paper, published weekly, and not intended to be completed in any definite number or parts, must be registered within three months after the commencement, or, if it had commenced be- fore 1852, within three months after the date of the order in council. Jd. Neglect to register on the part of the officials at Stationers’ Hall prevents an author having the benefit of the statute as against the public. ZB. The 7 and 8 Vict, c. 12, s. 19, applies to British subjects first publishing in a country with which no international convention exists. Boucicault v. Delafield, 1 H. & M. 5973; 9 Jur., N.S. 1282; 33 L. J., Chanc. 38; 12 W. R. 101; 9 L. T., N. S. 799: A British subject first produced for representation a dramatic piece or entertainment at New York, in America. He subse- quently produced it in London: Held, that there being no inter- national treaty or arrangement (which was alluded to by 7 and 8 176 DIGEST OF Vict. c 12, s. 14), he had not obtained the copyright to such piece in England. Jd. The assignee of a foreign dramatic work, in order to entitle himself to the exclusive right to represent it on the stage in English, must register a translation. Such translation must be sufficiently literal to enable an Englishman to see from it the character of the original work. Wood v. Chart, 39 L. J., Chanc. 641; 10 L. R., Eq. 193; 22 L. T., N.S. 432; 18 W. R. 822— V.-C. J. . When the original work sought to be protected was a French comedy entitled ‘ Frou-Frou,” and the version sanctioned by the foreign authors and published in England was entitled ‘ Like to Like,” the names of the eharacters and the scenery were changed from French to English; in some instances English manners were substituted for French; and considerable omis- sions of speeches and alterations of passages were made: Held, that the version was not a translation within the meaning of the 15 Vict. c. 12, International’ Copyright Act, such as to entitle the foreign authors and their assignee to the benefit of the stat- ute. 1d. Colonial.|—An alien who, whilst resident in any possession of the British crown, first publishes his work in England, ac- quires a copyright throughout the British dominions. Low v. Routledge, 10 Jur., N.S. 9225 33 L. J.. Chance. 717; 12 W. R. 1069; 10 L. T., N. 8. 838—V. C. K. Affirmed on appeal: 35 L. J., Chanc. 114; 1 L. R., Ch. App. 423 11 Jur., N. S. 939; 14 W. R.go; 13 L. T., N.S. 421. a ENGLISH COPYRIGHT CASES. 77 III. DRAMATIC PRODUCTIONS AND MUSICAL COMPOSITIONS. Statutes.|—By 3 and 4 Will. 4, c. 15, the author, or his assignee, of any tragedy, comedy, play, opera, farce, or other dramatic piece or entertainment, composed and not printed and published, shall have, as his own property, the sole liberty of representing the same for twenty-eight years at any place or places of dramatic entertain- ment whatsoever; and if the author shall be living at the end of that time, for the rest of his life. By 5 and 6 Vict. c. 45, s. 20, the provisions of the statute are extended to musical compositions, and the terms of copyright as pro- vided by 5 and 6 Vict. c. 45, applied to the liberty of representing dramatic pieces and musical compositions; and by s. 21, the person who has the sole liberty of representing a dramatic piece or musical composition has and enjoys the remedies given and provided by 3 and 4 Will. 4, c. 15, during the whole of bis interest therein. Dramatic Pieces.|—Before the statute, a proprietor of the copyright of a tragedy, which had been printed and published for sale, could not maintain an action against the manager of a the- ater for publicly acting and representing such tragedy in an un- abridged form for profit. AdZurray v. Elliston, 1 D. & R. 299; 5 B.& A. 657. : An injunction; however, had been granted in chancery to re- strain the publication in a magazine of a farce occasionally suf- fered by the author to be acted, but never printed or published. Macklin v. Richardson, Amb. 694. An introduction to a pantomime—that is, the only written part of the entertainment—is within the protection of the stat- ute. Lee v. Simpson, 3 C. B. 8713-4 D. & L. 666; rr Jur. 127; 16 L. J., C. P. 105. A person who employs another to adapt a foreign dramatic piece for representation upon the English stage, and who has no other share in the design or execution of the work than that of suggesting the subject, is not the author of such adaptation 178 DIGEST OF within the meaning of the 3 and 4 Will. 4, c. 153 and, there- fore, when such employment is by parol, the employer has not the right of representing it without an assignment in writing from the author. Shepherd v. Conquest, 17 C. B. 4373 2 Jur., N.S. 286; 25 L. J.,C. P. 127. An author of a drama called ‘*Gold,” which had been printed and represented on the stage, published a novel founded upon it, called ‘*It is never too late to Mend,” to which novel he trans- ferred some of the scenes from the drama. The defendant caused another drama to be constructed from the novel, which he called ‘* Never too late to Mend,” taking many of the scenes from the novel which had been imported into the novel from the original drama, and produced it at his theater: Held, that this was an infringement of the plaintiff’s copyright in his drama. Reade v. Conquest, 11 C. B., N.S. 479; 8 Jur, N.S. 764; 31 L. J., C. P. 153; 5 L. T., N. 5. 677. If a manager of a theater, having designed to bring out an old play, with new scenery, dresses, and musical accompani- ments, hires A.to compose the requisite music, who does so, and is paid for it, the sole right to the representation or perform- ance of such musical compositions, as part of the whole, becomes thereby vested in the former, without assignment or the consent in writing of A., the terms of the contract between them being, that the compositions should become part of the entire dramatic piece, and that the manager should have the sole liberty of representing and performing the compositions with the dramatic piece. Hatton v. Kean, 7 C. B., N.S. 268; 6 Jur., N. 5. 226; 8 W.R.7; 2L. T., N.S. 10; 29 L. J., C. P. 20. One who employs another to write a play for him, and even suggests the subject, does not thereby become the proprietor of the copyright. Levy v. Rutky, 6 L. R., C. P. 523. In order to constitute a’ joint authorship of a dramatic piece, or other literary work, it must be the result of preconcerted joint design. Mere alterations, additions, or improvements by another person, whether with or without the sanction of the author, will not entitle such other person to claim to be “joint author ” of the work. Jb. 7 ee ENGLISH COPYRIGHT CASES. 179 The plaintiff, the lessee of a theater, employed one W. to write a play for him, suggesting the subject. W. having com- pleted it, the plaintiff and some members of his company intro- duced various alterations in the incidents and in the dialogue, to make the play more attractive, and one of them wrote an addi- tional scene: Held, that these circumstances did not make the plaintiff joint author of the play with W. Jb. The play being finished, a sum of 4/. 15s. was paid to W. on account, and he signed a receipt, drawn up by the plaintiff’s attorney, as follows: ‘“‘ Received of Mr. L. (the plaintiff) the sum of 4/. 15s. [on] account of 15 guineas for my share, title, and interest as co-author with him in the drama instituted, etc. ; balance of 15 guineas to be paid on assigning my share to him.” The balance was never paid, nor was any assignment executed by W.: Held, no evidence that the plaintiff was either ‘joint author ” or assignee of the author. Jd. Musical Compositions.|—T he copyright in musical compositions is more extensively protected than the copyright in dramatic pieces. Russell v. Smith, 15 Sim. 181. An alien resident abroad composed three musical pieces in a foreign country, and sold the copyright in this country to a British subject, who published the work in London. The work was on the same day published in Prussia. On motion in a suit instituted by the purchaser of the coypright against a person who had, without leave, published the three musical compositions in this country: Held, that the publication was within the 5 and 6 Vict. c. 45 ; and the court granted an injunction, restraining the unauthorized publication. Buxton v. Fames, 5 De G. & S. 80; 16 Jur. 15. A person who writes words to an old air, and procures an ac- companiment and publishes them together, is entitled to the copy- right in the whole work. Leader v. Purday, 7 C. B. 43 12 Jur. togt; 18 L. J., C. P. 197. A. was the composer of a musical composition of a represen- tative character, called “¢ The Ship on Fire ;” B. sang it ata vocal entertainment, announced by bills, with the price of tickets of admission, and giving a programme of the two parts of the 180 DIGEST OF performance. The performance was at Crosby Hall, which was licensed for musical entertainments, and was prepared with seats for the audience, and a stage for the performer; and B., without scenes or appropriate dresses, accompanied his singing with a piano, and gave considerable expression to the matters described: Held, first, that “‘ The Ship on Fire,” was a dramatic piece within 5 and 6 Vict. c. 45, s. 20. Russell v. Smith, 12 QO. B. 217: 12 Jur. 723; 17 L. J., Q. B. 225. Held, secondly, that Crosby Hall was, on the occasion of the performance, a place of dramatic entertainment, within 3 and 4 Will. 4, c. 15, s. 1, and 5 and 6 Vict.c. 44. Jb. Held, thirdly, that it was not necessary that A.’s right should be registered under 5 and 6 Vict. c. 45, s. 24. Jb. The publication of a piece of music, not for sale or hire, but by the gratuitous distribution of lithographed copies amongst the members of a musical society, is a publication for which a party is liableas for an invasion of the property of the proprietor therein, independently of 5 and 6 Vict. c. 45,8. 15. Novello v. Sudlow, 12 C. B. 1773 16 Jur. 689; 21 L. J., C. P. 169. Rights of Assignees.}—By 5 and 6 Vict. c. 45, Ss. 22, 10 as- signment of the copyright of any book consisting of or containing a dramatic piece or musical composition, shall be holden to convey to the assignee the right of representing or performing such dramatic piece or musical composition, unless an entry in the registry book shall be made of such assignment, wherein shall be expressed the intention of the parties that such right should pass by such assignment. Before this statute, the assignee of the copyright of a dramatic work, printed and published within ten years of the passing of 3 and 4 Will. 4, c. 15, and not the author, who had assigned such copyright, was entitled to the sole right of representing the piece or causing it to be represented. Cumberland v. Planche, 3 N. & M. 537; 1A. & E. 580. So, where the work was printed and published subsequently to the act, and no reservation of the right to the exclusive repre- sentation was expressly made by the author. J. A deed, subsequently to 5 and 6 Vict.'c. 45, assigning all the right, title, and interest in a dramatic piece, both copyright and ENGLISH COPYRIGHT CASES. r8I acting right, does not require registration under that act, in order to entitle the assignee to the exclusive right of repre- sentation, and to all the other rights. and remedies conferred by 3 and 4 Will. 4, c. 15, on the author of a dramatic piece and his assignee. Lacy v. Rhys, 10 Jur., N. S. 612; 4 B. & S. 873; 33 L.J.. Q. B.157; 12 W.R. 309; 9 L. T., N. 5. 607. The 5 and 6 Vict. c. 45, s. 22, applies only where a copy- right only is assigned, and not the exclusive right of representa- tion, Jb. It is competent to an assignee of the sole tight of represent- ing a dramatic piece, to sue for penalties under 3 and 4 Will. 4, Cc. 15, Ss. 2, notwithstanding the assignment is not by deed, or registered under 5 and 6 Vict. c. 45. Marsh v. Conquest, 17.C. B., N. S. 418; 10 Jur., N. S. 989; 33 L. J., C. P. 3195; 12 W. R. 309; 10 L. T., N.S. 717. The assignment of the copyright of a book consisting of or containing a dramatic piece does not, in the absence of an ex- pressed intention that it should be so, pass the right of represent- ing or performing it. That may be the subject of a subsequent assignment to a third person. Jb. What is a Representation.|—No one can be considered as an offender against the provisions of the 3 and 4 Will. 4, c. 15, so as to be liable to an action at the suit of the author or proprietor, unless he, by himself or his agent, actually takes part in the representation, which is a violation of the copyright. Russell v. Briant, 8 C. B.836; 14 Jur. 201; 19 L. J., C. P. 33. Therefore, one who merely lets a room to the offender is not liable, even though he supplies the benches and lights, or sells a ticket of admission, himself deriving no other profit than that arising from the letting of the room. Jb. It is a question of fact, and not of law, whether there has been a representation of a part of a dramatic entertainment. Planche v. Braham, 8 C. & P. 68; 5 Scott, 242; 4 Bing, N.C. 173 3 Hodges, 288; 1 Jur. 823. Where the jury found that the singing the words of a song 182 DIGEST OF taken from an opera written by the plaintiff amounted to such a representation, the court refused to disturb the verdict. Jb. A proprietor of a theater let it for one night for the benefit of one of his performers, who was to pay him 30/. for the use of it for that night, together with the services of the corps dra- matique, band, lights, and accessories. The performer who so had the use of the theater represented therein a dramatic piece the sole right of representing which had been assigned to the plaintiff: Held, that the proprietor of the theater caused the piece to be represented, and consequently was guilty of an infringe- ment of the plaintiff’s right, and liable to the penalty imposed by 3 and 4 Will. 4,c.15,s.2. Marsh v. Conquest, 17 C.B., N. S. 418; ro Jur., N. S. 989; 33 L. J. C. P. 319; 12 W. R. 409; 10 L,°T., N.S. 717. The licensed proprietor of a theater entered into an arrange- ment with D., whereby he had the use of the theater for dra- matic entertainments. D. provided the company, had the selec- tion of the pieces to be represented, together with the entire management of their representation, and exclusive control over the persons employed in the theater. The proprietor of the theater on his part paid for printing and advertising, furnished the lighting, door-keepers, scene-shifters and supernumeraries, and hired the band, music being the necessary part of the perform- ance. The money taken at the door was taken by the servants of the proprietor, who retained one-half of the gross receipts as his remuneration for the use of the theater, and handed the other half to D. Among the pieces represented were two of which L. had the sole liberty of representing, as assignee of the author, under 3 and 4 Will. 4, c. 15, and 5 and 6 Vict. c. 45: Held, that no action under those statutes was maintainable by L. against the proprietor of the theater, as the facts did not show that those pieces had been represented by him, or that there was a partnership between D. and him so as to render him liable for the representation of them by D. Lyon v. Knowles, 3 B. & S. 556; 9 Jur. N.S. 774; 32 L. J.. QO. B. 713 11 W. R. 266; 7L. T., N.S. 670. Affirmed on appeal, 5 B. & S. 751; 12 W. R. 1083; 10 L. T., N. 8. 876—Exch. Cham. ENGLISH COPYRIGHT CASES. 183 Necessary Consent of Author.|—By 3and 4 Will. 4, c. 15, s. 2, a penalty is imposed on any who shall represent any dramatic piece without the consent in writing of the author or other proprietor first had and obtained: Held, that this consent need not be in the handwriting of, or signed by, the author or other proprietor, and that the statute is satisfied if it is in writing, though given only by the agent of the author. Morton v. Copeland, 16 C. B. 517; 1 Jur, N.S. 979; 24 L. J., C. P. 517. In an action by a dramatic author for a penalty under the stat- ute, it appeared that he was a member of a society of dramatic authors, the secretary of which had given the defendant a con- sent in writing to play dramas belonging to the authors forming such society, upon his punctual transmission of the monthly bills, and payment of the prices for the performance of such dramas. The society published a prospectus, showing the terms on which permission might be obtained from the secretary for the perform- ance of pieces the property of its members, and that supple- mentary lists would be annually published of the plays of its members which should from time to time be added to the stock of the society: Held, that such consent exempted the defend- ant from any penalty under the act for the performance of dramas of the plaintiff which had been composed by him subse- quently to such consent, and belonged to the stock of the society, although the same had not been published by the society in any supplementary list, and although the defendant had not complied with the terms of transmitting monthly bills and paying the prices for such performances. Jb. Proceedings.|—After 5 and 6 Vict. c. 45, the administrator of the author of a dramatic piece first acted in 1843, by deed, dated the 14th of April, 1859, in consideration of roo/. assigned to the plaintiff the copyright and acting right in all dramatic pieces written by the author; no entry of the assignment to the plaint- iff had been made in the registry book in pursuance of 5 and 6 Vict. c. 45, 8. 22. The letters of administration were not stamped until March, 1863: Held, first, that the administrator might maintain an action for penalties under 3 and 4 Will. 4, c. 15, against the defendant for representing the piece without his 184 DIGEST OF license within twenty-eight years of its publication, the period for which the sole liberty of representation is given by that statute, although the deed was not registered under 5 and 6 Vict. c. 45, Ss. 22. Lacy v. Rhys, 4 B. & S. 873; 33 L.J., Q B. 157. Held, also, that the defendant could not object to the admis- sibility of the letters of administration in evidence, on the ground that they had not been stamped within six months after the dis- covery of the mistake in omitting to get them stamped, and the penalty had not been paid, in pursuance of 55 Geo. 3, c. 185, s.43. 1b. In an action upon the 3 and 4 Will. 4, c. 15, s. 2, for penal- ties for the representation of a dramatic piece at a place of dramatic entertainment, without the author’s consent, it is suffi- cient to describe the offense in the words of the act. Lee v. Simpson, 3 C. B. 8713 4 D. & L. 666; 11 Jur. 127; 16 L. J., C. P. 105. To constitute the offense, it is not necessary to show, nor need the declaration aver, that the defendant knowingly invaded the right. Jb. Declaration upon section 20 of 5 and 6 Vict. c. 45, that the plaintiff had the sole liberty of representing and performing a musical composition; yet the defendant, without the consent of the plaintiff, at a place of dramatic entertainment, wrongfully represented and performed the musical composition, Upon motion in arrest of judgment, on the ground that the right of the plaintiff was stated too largely: Held, that it was insufficient, inasmuch as it followed the words of the statute. Russell v. Smith, 12 Q. B. 2173; 12 Jur. 723; 17 L. J., Q B. 225. IV. LECTURES. By 5 and 6 Will. 4, c. 65,8. 1, the author of any lecture, or person to whom he hath sold or otherwise conveyed the copy thereof, in order to deliver the same in any school, seminary, institution, or other place, or for any other purpose, ts to have ENGLISH COPYRIGHT CASES, 1 85 the sole right and liberty of printing and publishing such lec- ture; and tf any person shall, by taking down the same in short-hand, or otherwise in wrtting, or in any other way, obtain or make.a copy of such lecture, and shall print, litho- eLraph, or otherwise copy and publish the same, without leave of the author or other person, to whom the author has sold or otherwise conveyed the same, and every person who, knowing the same to have been printed or copied and published without such consent, shall sell, publish, or expose to sale any such lec- ture, shall forfeit such printed or otherwise copied lecture or parts thereof, together with one penny per sheet which shalt be found in hts custody, to be recovered by action of debt. By s. 2, the penalty ts imposed for publication in news- papers. By s. 3, persons having leave to attend lectures are not to be deemed to have leave to publish them. By s. 4, zothing zs to prevent persons from printing and publishing lectures which have been printed and published with leave of the authors or their assigns, and of which the period of copyright has expired. By s. 5, che act ts not to extend to lectures delivered in un- licensed places, untversities, or public schools, or colleges, or on any public foundation, or by any individual tn virtue of or according to any gift, endowment, or foundation. Before this enactment an injunction would be granted against third persons publishing lectures orally delivered, who had pro- cured the means of publishing those lectures from parties who had attended the oral delivery of them. Abernethy v. Hutchinson, 1H. & T. 28; 3 L. J. (1825), Chance. 209. V. PRINTS AND ENGRAVINGS. By 8 Geo. 2, c. 13, the property in prints and engravings ts vested in the proprietor for fourteen years, if the proprietors name and the date of the publication are affixed on each print. By 7 Geo. 3, c. 38, the time is extended to twenty-eight years. By 17 Geo. 3, c. 57, persons who pirate prints are liable to 186 DIGEST .OF damages and double costs; but by 24 and 25 Vict. c. 101, thds provision as to double costs ts repealed. Actions for offenses against the 8 Geo. 2, c. 13, to be brought in three months, &. 4. Against 7 Geo. 3, c. 38, 72 six months, s. 6. 6 and 7 Will. 4, c. 59, extends these acts to Ireland. And by 15 and 16 Vict. c. 12, s. 14, the provisions of the acts were intended to include prints taken by lithography or any other mechanical process by which prints or impressions of drawings or designs are capable of indefinite multiplication tmmediately. g and 10 Vict. c. 58, reduced the duties payable on the im- portation from abroad of engravings. In order to sustain an action for pirating prints, the proprietor’s name, and the date of the publication, must appear on the orig- inal print, pursuant to 8 Geo. 2, c. 13; but it is not necessary that the designation of proprietor should be added to the name. Newton v. Cowie, 12 Moore, 457; 4 Bing. 234. No action can be maintained for pirating a print, where the date of the first publication has not been engraved on the plate, according to 8 Geo. 2, c. 13, 8.1; the performance of the direc- tions of the statute in that respect being a condition precedent to the right of property vesting in the proprietor. Brooks v. Cock, 4. N. & M. 652; 3 A. & E. 138; 1 H. & W. 129. The assignee of a print may maintain an action on 17 Geo. 3, C. 57, against any person who pirates it. Thompson v. Symonds, 5 T.R. 41. In such an action, it is not necessary to produce the plate itself in evidence; one of the prints taken from the original plate is good evidence. 1b. The date must always appear on the print. Jb. It is no piracy of one engraving, to make another from the original picture. Berenger v. Wheble, 2 Stark. 548—Abbott. A. made a copy of a print invented by B. in colors, and of large dimensions, and exhibited it as a diorama. A court of equity refused to restrain the exhibition until the right had been established by law. Martin v. Wright, 6 Sim. 297. ENGLISH COPYRIGHT CASES. 187 The mere seller or publisher of a pirated copy of a print, is liable to an action under 17 Geo. 3, c. 57, although not an exact copy of the original, and though the seller did not know it to be acopy. West v. Francis, 1 D. & R. 400; 5 B. & A. 737. A., being employed by B. to engrave plates fiom drawings belonging to B., took off from the plates so engraved by hima number of proof impressions, which he retained for his own use. A. afterward became bankrupt, and the proofs of which he had so possessed himself were advertised by his assignees for sale: Held, that neither he was nor were his assignees liable to an action for having disposed of pirated prints without the con- sent of the proprietor, inasmuch as the 17 Geo. 3, c. 57, applied to the impressions of engravings pirated from other engravings, and not prints taken from a lawful plate. Adurray v. Heath, 1 B. & Ad. 804. In an action for pirating an engraving, brought under 17 Geo. 3, ¢. 57, which gives a right of action against any one who shall copy any print in the whole or in part, by varying, adding to or diminishing from, the main design, the judge directed the jury to consider whether the defendant’s engraving was substantially a copy of the plaintiff’s: Held, that this direction was correct. Moore v. Clarke, g M. & W. 622; 6 Jur. 648. In order to avail himself, by his plea, of the provisions of the 8 Geo. .2, c. 13, s. 1, and 17 Geo. 3, c. 57, prohibiting persons from engraving any print, without the consent of the proprietor first had in writing, it is necessary for a defendant to aver that the date and name of the proprietor were truly engraven on each plate, and printed on every such print, according to the pro- visions of that statute. Colnaghi v. Ward, 6 Jur. 969; 12 L. J., Q. B. r. B. published a book containing letterpress, illustrated by wood engravings, printed on the same paper at the same time. A. published a similar book, with different letterpress, but con- taining pirated copies of the wood engravings. B., upon motion for an injunction, proved that he had complied with the requisi- tions of the 5 and 6 Vict. c. 45, but he had not complied with the 8 Geo. 2, c, 13, by printing the date of publication and the 188 DIGEST OF name of the proprietor on each copy: Held, that the 5 and 6 Vict. c. 45, extended to the wood engravings equally with the letterpress, and the court granted an injunction. Bogue v. Houl- ston, 5 De G. & S. 267; 16 Jur. 372; 21 L. J., Chane. 470. A person having a copyright in a print or an engraving may maintain an action against a person for selling pirated copies of it, though such person has no. knowledge thatthe prints are piracies. Gambart v. Sumner, 5 H.& N.5; 5 Jur., N.S. 1109; 29 L. J., Exch. 98; 8 W. R..27. The piracy of a picture or an engraving by the process of photography, or by any other process, mechanical or otherwise, whereby copies may be .indefinitely multiplied, is within 8 Geo. 2, c. 13, 7 Geo. 3, c. 38, and 17 Geo. 3, ¢. 57. Gambart v. Ball, 14 C. B., N.S. 306; 9 Jur., N.S. 1059; 32 L.J.,C. P. 166; 11 W.R. 699; 8 L. T., N.5. 426. VI. PICTURES, PAINTINGS, DRAWINGS, AND PHOTOGRAPHS. ! By 25 and 26 Vict. c. 68, the author, being a British subject or resident within the dominions of the crown, of every orig- inal painting, drawing, and photograph made either in the British dominions or elsewhere, and which shall not have been sold or disposed of before the 29th of Fuly, 1862, and his assigns, have the sole and exclusive right of copying, engrav- ing, reproducing, and multiplying such painting or drawing, and the design thereof; or such photograph and the negative thereof, by any means and of any size, for the term of the natural life of such author, and seven years after his death. A person lending prints or photographs to another, who, with his consent, takes and sells copies, can not only sue in detinue for the originals, but also for the copies, and can likewise sus- tain an injunction to prevent the sale of any copies remaining, and this quite apart from copyright, and although there has been a publication. Mayall v. Higby, 10 W. R. 631; 6 L. T., N. S. 362—Exch. ENGLISH COPYRIGHT CASES. 189 At common law, a painter has, before publication of his picture, a right to prevent any person from copying it. Turner v. Robinson, 10 Ir. Chanc. Rep. 121—R. Affirmed on appeal, 1o Ir, Chane. Rep. 510—A. C. The owner of the picture who has purchased it from the painter has the same right. Jd. But after publication, that right is lost. Jb. The sale of a picture is not a publication of it. Jb, The publication of a wood engraving in a magazine, with an article describing the picture, is not a publication of the picture itself. Jb. The exhibition of a picture at a public exhibition or gallery, where copying it would not be permitted, is not a publication of the picture, nor is the exhibition of the picture for the purpose of obtaining subscribers to an engraving of it. Jb. A., the painter of a picture, sold it to B., who, for a valuable considerationgagreed to sell to C. the sole right to make and publish an engraving of the picture, and to exhibit it for short periods at any of the principal towns either in Great Britain or Ireland, in order that C, might obtain subscribers, and otherwise derive a full advantage in the publication and sale of the engrav- ing. The picture having been exhibited for that purpose, D. arranged in his own studio a group, which bore an exact resem- blance to the picture, and took photographs for the stereoscope (colored so as to correspond with the picture), which he pub- lished and sold: Held, that C. was entitled to an injunction to restrain the publication and sale of the photographs, if the pic- ture had not previously been published. J. But it appearing that the picture had been previously exhibited at the Royal Academy, London, and at the Manchester Exhibi- tion of 1857, the court referred it to the master to inquire whether there were rules, resolutions, by-laws, or regulations to prevent the taking of copies, sketches, or drawings of painting or works of art sent there for exhibition. Jd. There may be copyright in a photograph taken from an en- graving of a painting. Walker, ex parte, Graves, in re, 39 L. J.. Q B. 31. 190 DIGEST OF VII. BUSTS. By 38 Geo. 3, c. 71, 8. 1, the sole property of models or casts was vested in the original proprietor for fourteen years, repealed by 24 and 25 Vict. c. ror. By 54 Geo. 3, c. 56,s. 1, the inefficiency of the former act was attempted to be remedied, and the sole right and property of all new and original sculptures, models, copies, and casts are vested in the pro- prietor for fourteen years: provided that the name of the proprietor, with the date of publication, is put on each article. Sect. 5, actions for offenses against this act to be brought within six months. Sect. 6 gives the original proprietor an additional term of four- teen years, if he is living at the expiration of the first. The selling of a pirated cast of a bust was no offense under 38 Geo. 3, c. 71, before the passing of 54 Geo. 3, c. 56, if the piracy had any addition to or diminution from the original ; and, semble, that it was no offense to make a pirated bust if it was a perfect fac-simile of the original. Gahagan v. Cooper, 3 Camp. 111—Ellenborough. VIII. DESIGNS. Statutes.]—6 and 7 Vict. c. 65, commonly called the Designs Act, 1843, aménds 5 and 6 Vict. c. 100, and 13 and 14 Vict. c. 104, further amends these acts. ar and 22 Vict. c. 70, “the Copyright of Designs Act, 1858,” amends 5 and 6 Vict. c. 100, relating to the copyright of designs for ornamenting articles of manufacture ; and by s. 8 proceedings for the prevention of piracy of designs may be instituted in the county courts. By 24 and 25 Vict. c. 73, 8. 1, 5 and 6 Vict. c. 100, and all acts extending or amending the same, shall be construed as if the words ** provided the same be done within the United Kingdom of Great Britain and Ireland,” had not been contained in 5 and 6 Vict. ENGLISH COPYRIGHT CASES. 1g! c. 100; and that act, and all acts extending or amending the same, shall apply to every such design as therein referred to, whether the application thereof be done within the United Kingdom or elsewhere, and whether the inventor or proprietor of such design be or be not a subject of ber Majesty. By s. 2, these acts shall not be construed to apply to the subjects of her Majesty only. By 25 Vict. c. 12, s. 3, designs exhibited at the International Ex- hibition of 1861 were protected. Distinction between the 5 and 6 Vict. c. roo, and the 6 and 7 Vict. c. 65. The first applies to new designs for the orna- mentation of articles, the second to new designs of articles of utility. Waindover v. Smith, 32 Beav. 200; 32 L. J., Chanc. 561. What within.|—D. registered a design under 6 and 7 Vict. c. 65, for ventilation by opening a hinged pane of window by means of a screw; and it was stated that the parts of the design which were not new or original were all the parts, if taken per se, and apart from the purposes thereof, and that what was claimed as new was the general configuration and combination of the parts. The utility of the design was, in fact, not produced by the shape of any of the parts, but only by the mode of putting them together: Held, not a proper subject of registration, the statute not applying to designs which have refer- ence to a purpose of utility through the combination of parts, independently of their shape and configuration. Reg. v. Bessell, 16 Q. B. 810; 15 Jur. 773; 20 L. J.. M. C. 177. And the court quashed a conviction for pirating such design for want of jurisdiction. 1b. See Bessell v. Wilson, 1 El. & Bl. 489. The proprietors of a registered design for ornamenting paper- hangings, sold as patterns small pieces containing the whole de- sign, which were not marked with the letters ‘“‘ Rd.” nor had they the letter corresponding with the date of the registration, as directed by 5 and 6 Vict. c. 100, s. 4. Paper-hangings were sold in lengths of twelve yards ; and it wasa general practice in the trade to send out patterns stamped with the marks of registration : Held, that the pattern was an article of manufacture withins. 4. Heywood v. Potter, 1 El. & Bl. 439; 17 Jur. 528; 22 L. J., Q. B. 133. 192 DIGEST OF A newly invented brick, the utility of which consisted in its being so shaped, that when several bricks were laid together in building, a series of apertures was left in the wall, by which the air was admitted to circulate, and a saving in the number of bricks required was effected, is a design capable of being regis- tered under 6 and 7 Vict. c. 65. Rogers v. Driver, 16 Q. B. 102; 20 L. J., Q. B. 3. The protection granted by 6 and 7 Vict. c. 65, to any new or original design for any article of manufacture, having reference to some purpose of utility, so far as such design shall be for the shape or configuration of such article, is not clearly applicable to the design of a protector label, which consisted in making in the label an eyelet-hole, and lining it with a ring of a metallic sub- stance, through which a string attached to the packages passed. Margetson v. Wright, 2 De G. & 8. 420. A new combination of old patterns may be a new and an orig- inal design, so as to be susceptible of registration under 5 and 6 Vict. c. 100. Harrison v. Taylor, 4 H. & N. 8153 5 Jur., N.S. 1219; 29 L. J., Exch. 3—Exch. Cham. The question is solely for the jury. Jb. There is little or no analogy between a patent and a design. Lb. A. registered under 5 and 6 Vict. c. 100, a design for orna- menting woven fabrics. ‘The design was applied to a fabric woven in cells, called ‘‘ The Honeycomb Pattern,” and it con- sisted of a combination of the large and small honeycomb, so as to form a large honeycomb stripe, or a small honeycomb ground. The large honeycomb was not new, but they had never been used in combination before A. registered his design. Other fabrics had been woven with a similar combination of a large and small pattern: Held, that the design was a new and an orig- inal design within 5 and 6 Vict.c. 100. Jb. A new combination of several old and known designs may constitute a new design, capable of being protected under 5 and 6. Vict. c. 100; but such combination must, in order to be so protected, constitute one design, and not a multiplicity of designs. \ ENGLISH COPYRIGHT CASES. 193 Norton v. Nicholls, 1 El. & El. 7613 5 Jur. N. S. 1203; 27 L. J.. Q, B. 225; 7 W. R. 420; 33 L. T. 131. An article of manufacture to which a new design is applied (whether such design is single or the result of a new combina- tion of old and known designs) is not itself a design within the meaning of the statute, and can not be protected by registration. Ib. Four old designs were respectively applied to three ribbons, and to a button; and the three ribbons were then united by the button, so as to forma badge. The badge was registered under 5 and 6 Vict. c. 100: Held, that this union did not amount toa new design, within the statute. AZulloney v. Stevens, 10 L. T., N. 5. rgo—V. C. W. The 6 and 7 Vict. c. 65, applies only to new designs having reference to some purpose of utility; and in order to obtain the benefit of the act, the purpose must be specified in the descrip- tion supplied for registration. Windover v. Smith, 9 Jur., N.S. 397 3 32 L.J., Chanc. 561; 7 L. T., N.S. 776; 32 Beav. 200. A coachmaker caused to be registered a design for a dog-cart, specifying as the purpose of utility, that higher front wheels could be used orcloser coupling effected. ‘The design consisted of parts I, 2, 3, 4,0f which 1, 2, and 3 had nothing to do with front wheels or closer coupling, and No. 4 was not new: Held, that no exclusive privilege was gained by the registration. JB. It is a sufficient registration of a design applicable to the or- namenting woven fabrics comprised in class 12, of the 5 and 6 Vict. c. 100, to leave with the registrar a pattern or portion of the article of manufacture. MdcCrea v. Holdsworth, 5 B. & S. 495; 33 L. J.,Q. B. 329; 12 W. R. 955. Affirmed on ap- peal, 35 L. J.. Q. B. 1233; 1 L. R., Q, B. 264; 14 W.R. 374; 13 L. T., N. S. 801—Exch. Cham. A person claiming as his design the particular collection of the shaded and bored stars upon an ornamented chain surface, as shown in the registered pattern, thus forming together the orna- mentation of the woven fabric: the stars and surface were sold, but the combination was new, is a new design, capable of being registered. 1b. 194 DIGEST OF Where a pattern of an article has been registered under 21 and 22 Vict. c. 70, s. 5, the design will be infringed by an article to all appearance the same, though not actually identical. Ob- servations in Holdsworth v. McCrea, L. R., 2H. L. 384, ex- plained. AdcCrea v. Holdsworth, 6 L. R., Chance. Ap. 418—C. Registering.|—The provisions of the 5 and 6 Vict.’ c. 100, s. 15, relative to furnishing the registrar of designs with copies, drawing points of the design to be registered prior to obtaining registration, are not complied with by furnishing him with a specimen of the article to which the design was applied. Norton v. Nichols, 4 Kay & J. 475. It is not a sufficient registration of a design applied to the manufacture of an article comprised in class 8 of sect. 3 of 5 and 6 Vict. c. 100, to leave with the registrar the article so man- ufactured, with an intimation that it is to be applied to class 8. Norton v. Nicholls, 1 El. & El. 761; 5 Jur., N.S. 1203; 27 L. J. Q. B. 225; 7 W. R. 420; 33 L. T. 131. A statement, in a notice, that if the parties to whom the no- tice is given either apply the design to an article of manufacture, or sell or expose to sale an article of manufacture with the de- sign applied to it, the proprietor will sue them, is not a sufficient statement that he has not given his consent to the application of his design to the manufactured article. Jb. A proprietor of a design duly registered under 5 and 6 Vict. c. 100, and 24 and 25 Vict. c. 73, whether he is a British subject or a foreigner, forfeits the benefit of the acts unless the proper registration marks are attached to all articles and substances to which the design is applied, whether the same are sold abroad or in the British dominions. Sarazin v. Hamel, g Jur., N. 8. 192; 32 L. J., Chance. 380; 11 W. R. 326; 7 L. T.,N. S. 660; 32 Beav. 151. Proceedings for Pirating.|—An inventor of new designs pub- lishing and selling them in a book, registered under 5 and 6 Vict. c. 100, and containing a notice that persons wishing to manu- facture them for the purpose of sale must have the inventor’s permission, do not amount to a license to sell articles to which ENGLISH COPYRIGHT CASES. 195 the designs have been applied. Branchardiere vy. Elvery, 4 Exch. 380; 18 L. J., Exch, 381. The book does not require to be stamped with the letters men- tioned in the 4th section. Jb. Under 5 and 6 Vict. c. 100, the design protected by the act is entitled to an injunction, restraining not merely the sale, but the manufacture of any article to which the design is ap- plied during the period of the protection. A/acRae v. Holdsworth, 2 De G. & S. 496; 12 Jur. 820. _ A plea that the plaintiff was not, before or at the time of reg- istration, the inventor or proprietor of the design mentioned in the declaration to have been registered under 6 and 7 Vict. c.65, does not put in issue the question whether the design was the subject of a certificate of registration under that act. Millengen v. Picken, 1 C. B. 7993 9 Jur. 714; 14L. J., C. P. 254. _ An action will lie for falsely representing a pattern under 6 and 7 Vict. c. 65, s. 7, whereby the party is damnified. Barley v. Walford, 8 Q. B. 197. See Rodgers v. Nowell, 5 C. B. 109. IX: LINENS, CALICOES, AND MUSLINS. By 27 Geo. 3, c. 38 (continued by 29 Geo. 3, c. 19, and made perpetual by 34 Geo. 3, c. 23), the proprietor of original patterns for printing linen, cotton, calico, or muslin is to have the sole right of printing them for two months from the first publication ; and whoever shall, within that period, print the same, is to be liable to an action upon the case for damages, to be brought within six months. 34 Geo. 3 c. 23, extends the time to three months, so that the name of the proprietor and the date of publication, is printed at each end of the piece of goods: the statute also gives a remedy by action. By 2 and 3 Vict. c. 13, 8. 3, the provisions of the 27 Geo. 3, c. 38, and 34 Geo. 3, c. 23, are extended to fabrics composed of wool, silk, or hair, and to mixed fabrics composed of any two or more of the following materials, viz., linen, cotton, wool, silk, or hair. 196 DIGEST OF ENGLISH COPYRIGHT CASES. By 2 and 3 Vict: c. 17,8. 1, every proprietor of a new and original design made for any of the following purposes shall have the sole right to use the same for any such purpose during twelve calendar months, to be computed from the time of the same being registered: 1. For the pattern or print, to be either worked into or worked on, or printed on or painted on, any article of manufacture, being a tis- sue or textile fabric, except lace, and also except linens, cottons, cali- coes, muslins, and any other article within the meaning of the acts mentioned in the schedule thereunto annexed; 2. For the modeling, or the casting, or the embossment, or the chasing, or the engraving, or for any other kind of impression or ornament, on any article of man- ufacture, not being a tissue or textile fabric ; 3. For the shape or con- Jiguration of any article of manufacture, except as in No. 1. The 6 and 7 Vict. ¢. 65, does not extend to the designs within these enactments. ‘ In an action on 34 Geo. 3, c. 23, for pirating a pattern for printing calico, the omission of an averment in the declaration, “ that the day of first publishing the pattern was printed at each end of the piece of calico” (which, together with the name of the proprietor, is required by that statute, the monopoly being limited for three months from the first day of publishing the pattern), was aided by verdict ; it being stated in the declaration that the defendant pirated the pattern within the term of three months from the day of the first publishing thereof, and while the plaintiff was entitled to have the sole right of printing the same: Macmurdo vy. Smith,7 T.R. 518.