question whether, in the same bill, relief can be prayed against trade-mark and unfair competition, both parties being citizens of the same State, is still sub judice. It has been held that where the trade-mark is invalid,15 the court cannot then consider the question of unfair competition, nor when it is valid, but not infringed.16 It has been held that where the trade-mark is valid and has been infringed, and the acts of unfair trade are not separate and distinct from the acts of infringement, that then. an injunction against them may be joined with the decrce for

the purchasing public makes no distinguishment between the packages of your orator and the Spearmint packages of this defendant, and that the Spearmint product of this defendant can be palmed off on the public and trade generally as the goods and product of your

orator.

"That your orator avers, upon information and belief, that the said defendant is preparing to rush and flood the trade with vast quantities of chewing gum having the exact trade-dress as your orator, and that unless the honorable court shall grant an immediate injunetion or restraining order preventing the sale or delivery of said packages that said defendant will at once utilize such delay and put upon the market his fraudulent imitation of your orator's trade-dress, as above set forth, to the great and irreparable damage of your orator, your orator averring that said chewing gum product known as 'Helmet Spearmint' and as made by the defendant, is of an inferior grade or quality to the product of your orator, is not of the same flavor as your orator's product, and is calculated and intended to and does, as a matter of fact, greatly injure the high reputation, charac

ter, and quality of your orator's goods.

"And your orator avers that this defendant has simulated style of lettering, shape of package, peculiar markings, form of wrapper and general color scheme, thereby producing and giving to its style of package, carton, and wrappers, the peculiar visual appearance that was adopted by your orator and your orator's predecessors in the year 1894 and through long years of usage has become the predominating means for distinguishing your orator's well-known Spearmint product from other gum products upon the market. Helmet Company v. William Wrigley, Jr., Co., C. C. A., 245 Fed. 824, 825.

15 Elgin Watch Co. V. Illinois Watch Co., 179 U. S. 665, 21 Sup. Ct. 270, 45 L. ed. 365; Leschen Rope Co. v. Broderick, 201 U. S. 166, 26 Sup. Ct. 424, 50 L. ed. 710; Bernstein v. Danwitz, 190 Fed. 604; Diederich v. W. Schneider Wholesale Wine & Liquor Co., C. C. A., 195 Fed. 35. See supra, § 146.

16 Burt v. Smith, C. C. A., 71 Fed. 161, 17 C. C. A. 573; Hutchinson v. Loewy, C. C. A., 163 Fed. 42, 90 C. C. A.; Bernstein v. Danwitz, 190 Fed. 604; Sprigg v. Fisher, 222 Fed. 964. See §§ 24, 132, 146,

supra.

bidding the infringement of the trade-mark; 17 but that the rule is otherwise when they are separate and distinct acts, 18 unless the jurisdictional diversity of citizenship exists; in which case if the value of the matter in dispute exceeds the jurisdictional amount, the court may grant such relief and also relief against infringement of common law rights to trade-marks which do not depend on transactions in interstate or international commerce, although the infringements consist of separate and distinct acts. 19

§ 149. Bills to obtain relief against interfering trade marks. "That whenever there are interfering registered trade-marks, any person interested in any one of them may have relief against the interfering registrant, and all persons interested under him, by suit in equity against the said registrant; and the court, on notice to adverse parties and other due proceedings had according to the course of equity, may adjudge and declare either of the registrations void in whole or in part according to the interest of the parties in the trade-mark, and may order the certificate of registration to be delivered up to the Commissioner of Patents for cancellation." The pleading and practice under bills of this sort is substantially similar to that of bills to obtain relief against interfering patents.2 The suit must be brought within a year after final action thereupon in the Patent Office or the determination of any appeal from its decision, unless it is shown that the delay is unavoidable. It was held to be insufficient to

1

17 Globe-Wernicke Co. V. Fred Macey Co., C. C. A., 119 Fed. 696, 703, 56 C. C. A. 304 (a patent case); T. B. Woods Sons Co. v. Valley Iron Works, 166 Fed. 770 (a patent case); Ross v. H. S. Geer Co., 188 Fed. 731, 734. See Saxlehner v. Eisner & Mendelson Co., 179 U. S. 19, 37, 41, 21 Sup. Ct. 7, 45 L. ed. 60; s. c., C. C. A., 147 Fed. 189, 77 C. C. A. 417, s. c., C. C. A., 25 Fed. 1; Stark Bros. Nurseries & Orchards Co. v. Stark, 248 Fed. 143, supra, 147. Contra, Cushman v. Atlantis Fountain Pen Co., 164 Fed. 94 (a patent case); Mecky v. Grabowski, 177 Fed. 591 (a patent case).

18 Ross v. H. S. Geer Co., 188 Fed. 731, 734; C. L. King & Co. v. Inlander, 133 Fed. 416; Cushman v. Atlantis Fountain Pen Co., 164 Fed. 94; Mecky v. Grabowski, 177 Fed. 591; National Casket Co. v. N. Y. & Brooklyn Casket Co., 185 Fed. 533; the four last cases were patent cases.

19 Ingersoll v. Doyle, 247 Fed. 620, supra, $146.

§ 149. 1 Act of March 2, 1907, 34 St. at L. 1251, § 22, Pierce Fed. Code, § 8828.

2 Supra, § 146.

3 U. S. R. S., § 4969, 2 Fed. St Ann. 271, Pierce Fed. Code, § 8862.

aver that complainants brought suit within the year against the party who succeeded in the Patent Office, and several months thereafter, after learning for the first time that the defendant had assigned the patent, dismissed such suit, and brought the present one against the assignee; there being no allegation that the assignment was not recorded, nor that the complainant had no means of ascertaining that it had been made. When the decision of the Patent Office has been affirmed or approved by the District Court of Appeals, it will be followed by other courts in suits to enjoin infringements unless they are clearly convinced that it is not correct.

The

§ 150. Bills to restrain infringement of copyrights. Copyright Act of March 4, 1909, provides: "That if any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable: (a) To an injunction restraining such infringement;

(b) To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or in lieu of actual damages and profits such damages as to the court shall appear to be just, and in assessing such damages the court may, in its discretion, allow the amounts as hereinafter stated, but in the case of a newspaper reproduction of a copyrighted photograph such damages shall not exceed the sum of two hundred dollars nor be less than the sum of fifty dollars, and such damages shall in no other case exceed the sum of five thousand dollars nor be less than the sum of two hundred and fifty dollars, and shall not be regarded as a penalty: First. In the case of a painting, statue, or sculpture, ten dollars for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees; Second. In the case of any work enumerated in section five of this Act, except a painting, statue, or sculpture, one dollar for every infringing copy made or sold

4 Westinghouse El. & Mfg. Co. v. Ohio Brass Co., 186 Fed. 518.

5 Gold v. Newton, C. C. A., 254 Fed. 824.

by or found in the possession of the infringer or his agents or employees; Third. In the case of a lecture, sermon, or address, fifty dollars for every infringing delivery; Fourth. In the case of a dramatic or dramatico-musical or a choral or orchestral composition, one hundred dollars for the first and fifty dollars for every subsequent infringing performance; in the case of other musical compositions, ten dollars for every infringing performance;

(c) To deliver up on oath, to be impounded during the pendency of the action, upon such terms and conditions as the court may prescribe, all articles alleged to infringe a copyright;

(d) To deliver up on oath for destruction all the infringing copies or devices, as well as all plates, molds, matrices, or other means for making such infringing copies as the court may order;

(e) Whenever the owner of a musical copyright has used or permitted the use of the copyrighted work upon the parts of musical instruments serving to reproduce mechanically the musical work, then in case of infringement of such copyright by the unauthorized manufacture, use, or sale of interchangeable parts, such as disks, rolls, bands, or cylinders for use in mechanical music-producing machines adapted to reproduce the copyrighted music, no criminal action shall be brought, but in a civil action an injunction may be granted upon such terms as the court may impose, and the plaintiff shall be entitled to recover in lieu of profits and damages a royalty as provided in section one, subsection (e), of this Act: Provided also, That whenever any person, in the absence of a license agreement, intends to use a copyrighted musical composition upon the parts of instruments serving to reproduce mechanically the musical work, relying upon the compulsory license provision of this Act, he shall serve notice of such intention, by registered mail, upon the copyright proprietor at his last address disclosed by the records of the copyright office sending to the copyright office a duplicate of such notice; and in case of his failure so to do the court may, in its discretion, in addition to sums hereinabove mentioned, award the complainant a further sum, not to exceed three times the amount provided by section one, subsection (e), by way of damages, and not as a penalty, and also a temporary injunction until the full award is paid. Rules and regulations

for practice and procedure under this section shall be prescribed by the Supreme Court of the United States." 1

"Any court given jurisdiction under section thirty-four of this Act may proceed in any action, suit, or proceeding instituted for violation of any provision hereof to enter a judgment or deeree enforcing the remedies herein provided." 2

"That the proceedings for an injunction, damages, and profits, and those for the seizure of infringing copies, plates, molds, matrices, and so forth, aforementioned, may be united in one action." 3 "That civil actions, suits, or proceedings arising under this Act may be instituted in the district of which the defendant or his agent is an inhabitant, or in which he may be found." "That any such court or judge thereof shall have power, upon bill in equity filed by any party aggrieved, to grant injunctions to prevent and restrain the violation of any right secured by said laws, according to the course and principles of courts of equity, on such terms as said court or judge may deem reasonable. Any injunction that may be granted restraining and enjoining the doing of anything forbidden by this Act may be served on the parties against whom such injunction may be granted anywhere in the United States, and shall be operative throughout the United States and be enforceable by proceedings in contempt or otherwise by any other court or judge possessing jurisdiction of the defendants."' 5

By the Act of December 22, 1896: "Any injunction that may be granted upon hearing after notice to the defendant by any Circuit Court of the United States or by a judge thereof, restraining and enjoining the performance or representation of any such dramatic or musical composition may be served on the parties against whom such injunction may be granted anywhere in the United States, and shall be operative and may be enforced by proceedings to punish for contempt or otherwise by any other Circuit Court or judge in the United States; but the defendants in said action, or any or either of them, may make a motion in any other circuit in which he or they may be engaged in performing or representing said dra

$ 150. 136 St. at L. 1075, § 25, Pierce Fed. Code Supp., § 1587.

2 Thid, $26, 35 St. at L. 1082, Comp. St. § 9547.

3 Ibid., § 27.

4 Ibid., $35; Pierce Fed. Code Supp., 8 1589.

5 Ibid., § 36.