movement, and on tendering the price paid therefor to the holder thereof the company may retake possession of same." Notwithstanding these inhibitions, of which he had full knowledge, the defendant, Keene, advertised and sold the "16-size Riverside Movement," including a case, for $17.35.

In reaching his decision dismissing the bill Judge Ray discussed at some length, the case of Henry v. Dick. We quote:

"I desire to repeat and emphasize the distinction between this case and the license agreements, such as that in the Henry v. Dick Company Case, relating to the use of the patented article. Here the patentee or his assignee makes and cells the article imposing no condition as to use, and reserving no interest in or claim to any part of the proceeds of a resale by dealers. He receives his full consideration or compensation or tribute for his invention, so far as each particular article is concerned, when he sells. In the Henry v. Dick Co. Case, and other like cases, he reserves a right and interest in the use of the article; does not receive his full consideration, compensation, or tribute for his invention, so far as that particular article is concerned, but is to receive such consideration or tribute from the user by way of profits on the supply he is to furnish for use therewith and from which he derives his only profit, compensation, or tribute. In the first case the article, when sold, is freed from the monopoly, while in the latter it is not. And again, there is no rule of public policy, so far as I am aware, which forbids a restriction on the use to which a patented article shall be put, or the mode and manner of using it, while public policy does forbid the fixing of prices for future sales unless the right to do so be granted by legislative enactment. I am opposed to monopoly in prices, and think the rule in opposition thereto is declared by the Supreme Court should be enforced. Agreements, however designed and under whatever pretenses made, having in view for their object the monopoly or control of prices to the user and consumer and the destruction of competition, are void. But, of course, the Congress of the United States can authorize a monopoly as it has done in the case of articles covered by a patent, but that a monopoly has its limits, and a broad construction in contravention of public policy should be justified by the language of the patent statutes and not given when unnecessary to protect the legitimate rights of the patentee and make effectual the purpose of Congress in its enactment. If the Congress of the United States desires to authorize patentees to control and monopolize the retail prices of articles covered in part or in whole by a patent, after same have been once sold by the patentee or his assignee and placed on the market and after he has actually pocketed his full reward or tribute for the use of the monopoly by the public (as to the articles so sold), let it so say in plain terms."

He also discussed the Bobbs-Merrill Co. Copyright case, saying:

"To repeat, if the statute has given to the owner of the copyright 'the sole right to vend' the book, the product of his thought and conception, and he may not and cannot, when he sells such book, impose conditions fixing the price that must be charged on a resale, by what process do we arrive at the conclusion that the owner of the patent, to whom is given by statute the 'sole right to vend' the machine, the product of his thought and conception, may and can impose conditions, when he sells such machine, fixing the price that must be charged on a resale. Is the same right given in the

same legal langauge by statute to the inventor any more sacred than that given by the author, or to be broadened in the one case and narrowed in the other? Does 'the sole right to vend in the case of a patented article confer on the patentee or his assignee the right to fix prices on resale by the patentee's vendee, when 'the sole right to vend' in the case of a copyrighted book does not confer such right on the owner of the copyright? If so, why? True, a book is not a machine; but it is an article of commerce when once sold for resale the same as a machine, and in both cases, in the absence of a statute, such a restriction on resale is void as opposed to public policy. The sole right to vend is given in both cases as a reward and protection for a mental conception. The purpose and policy of the statute is the same in the one case as in the other, and I fail to discover any reason for giving a construction to the one statute different from that given the other so far as fixing prices on resales is concerned."

The decision dismissing the bill was carried on appeal to the Circuit Court of Appeals which affirmed the decision below without opinion. It was then taken to the Supreme Court of the United States, upon petition for writ of certiorari, which was denied.

Patents. Infringement. "The Rubber-tired Wheel Cases."

202 O. G., 316, 318, 3186.

Decisions in an important series of cases relating to infringement were rendereed by the United States Supreme Court on February 24, 1914.

The principle laid down in Kessler vs. Eldred, 206 U. S., 285, was relied upon by the defendants in each case, and with the statement of facts, is as follows:

Kessler and Eldred were rival manufacturers of electric cigar-lighters. Eldred being the owner of the Chambers patent, sued Kessler in the northern district of Indiana for infringement. The Circuit Court, finding non-infringement dismissed the bill; and this decree was affirmed by the Circuit Court of Appeals for the Seventh Circuit (106 Fed., 509). Subsequently, Eldred brought suit on the same patent in the Northern District of New York against Kirkland, who was selling a similar cigar-lighter, but not of the Kessler make. The Circuit Court of Appeals for the Second Circuit held the Kirkland lighter to be an infringement (130 Fed., 342). Eldred then began a suit for infringement in the western district of New York against Breitwieser, a user of Kessler's lighters. Thereupon Kessler filed his bill in the Circuit Court for the Northern District of Illinois to enjoin Eldred from prosecuting suit against any one for alleged infringement of the Chambers patent by purchase, use or sale of any electric cigarlighter manufactured by Kessler and identical with the lighter before the Court in the Suit of Eldred vs. Kessler. Kessler, being defeated in the Circuit Court, appealed to the Circuit Court of Appeals for the Seventh Circuit, this Court held that the decree in the suit of Eldred vs. Kessler had the effect of entitling Kessler to continue the business of manufacturing and selling throughout the Uniter States the same lighter he had theretofore been manufacturing and selling without molestation by Eldred through the patent which he held: And that the decree also had the effect of making a suit by Eldred against any customer of Kessler for alleged infringement of the patent by use or sale of Kessler's lighters; a wrongful interference with Kessler's business, with respect to which he was without adequate remedy at law (206 U. S., pp. 287, 290).

Mr. Justice Hughes delivered the opinion of the Court in each of the following cases:

In Rubber Tire Wheel Company, et al. vs. Goodyear Tire and Rubber Company, 202 O. G., 316. The facts are: Petitioners are the owners of the Grant patent (No. 554,675) issued February 19, 1896, for an improvement in rubber-tired wheels. In an infringement action brought by petitioners against the Goodyear Tire and Rubber Company (the respondent) the Circuit Court of Appeals for the Sixth Circuit held that the patent was void for want of novelty. (Goodyear Tire and Rubber Company vs. Rubber Tire Wheel Co., 116 Fed., 363.)

Thereupon the respondent instituted the present suit in the Southern District of Ohio to restrain petitioners from prosecuting suits for infringement against the respondent's customers. The preliminary injunction was granted and upon appeal to the Circuit Court of Appeals for the Sixth District was sustained in so far as it applied to the action, by petitioners against John Doherty, in the Circuit Court of the Southern District of New York (183 Fed., 978).

A writ of certiorari was then granted. The Grant tire, which is composed of three elements was held, in the sixth circuit to be not patentable because both the elements and the results were old. (Goodyear Tire and Rubber Co. vs. Rubber Tire Wheel Co., supra; Rubber Tire Wheel Co. vs. Victor Rubber Tire Co., 123 Fed., 85.) In the second circuit, and in the Circuit Court for the Northern District of Georgia, the patent was sustained. (Rubber Tire Wheel Co. vs. Columbia Pneumatic Wagon Wheel Co., 91 Fed., 978; Consolidated Rubber Tire Co. vs. Finley Rubber Tire Co., 116 Fed., 629; Consolidated Rubber Tire Co. vs. Firestone Tire & Rubber Co., 147 Fed., 739; 151 Fed., 237; Consolidated Rubber Tire Co. vs. Diamond Rubber Co., 157 Fed., 677; 162 Fed., 892). Upon certiorari, to the Supreme Court, in the case last mentioned, the patent was held valid (Diamond Rubber Co. vs. Consolidated Rubber Tire Co., 220 U. S., 428), in that the patented structure was not a mere aggregation of elements, but a new combination of parts co-acting so as to produce a new and useful result. It was found that the Grant tire possessed a distinctive characteristic, that is a "tipping and reseating" power which is the result of something more than each element acting separately, thus a patentable combination, the patentability of which did not depend on the novelty of any of the elements entering into it.

Doherty, against whom suit was enjoined, was engaged in the business of applying rubber tires to vehicle wheels, purchasing the rubber from respondent and the wire and channel from other parties. He combined these elements and fitted them to a carriage wheel, thus constructing a complete tire. This was assumed a typical case.

The decree in favor of the Goodyear Company in the former suit affords no defense to Doherty as he was not a party to the suit nor, with respect to the tires made by him can he be regarded as privy to the decree.

The question of purchasing the completed article from the respondent is not raised. Doherty did not purchase the complete article, he made it himself, assembling its various elements and effecting the combination.

The respondent is asserting its own right and not that of Doherty, insisting that it is entitled to the equitable relief of injunction, restraining suits, not only against those who buy from it the structure, which is the subject of the patent, but also against those who buy its rubber and then by combining other elements make the patented tire, and in urging this contention, rely upon the doctrine of Kessler vs. Eldred. The Kessler case is distinguished from the present one in that it was not held that Kessler would have been entitled to restrain Eldred from

suing other manufacturers of lighters who might buy from Kessler some of the materials used in such manufacture.

Under the doctrine of Kessler vs. Eldred, the respondent, by reason of the final adjudication in its favor, was entitled to make and sell the Grant structure and to have those who bought that structure from it unmolested in taking title and in enjoying the rights of ownership, and it also had the right to make and sell its rubber without hindrance by petitioners' claiming under the patent. But the decree gave the respondent no right to have others make Grant tires. So that when other persons became manufacturers on their own behalf, assembling. the various elements and uniting them so as to produce the patented device-a new article it is manifest that the respondent cannot insist upon their being protected from suit for infringement by reason merely of its right to make and sell, and the facts of its having made and sold, some component part of the article. The injunction order is reversed and cause remanded to District Court with instructions to enter an order denying application .for injunction.

In the case of Seim and Reissig vs. Hurd, et al., 202 O. G., 318, a like principle is involved.

Hurd, a licensee for a limited territory under the Grant patent joining with him the legal owner of the patent and the holder of an exclusive license subject to the rights of Hurd and another, brought suit against Seim and Reissig for infringement

Defendants claimed they had purchased the infringing tires from the Diamond Rubber Company of New York who in turn had bought the tires from the Kokomo Company which had the right to make and sell the tires. It was further stated that the defendants did not purchase the patented structure but made it themselves, and the Court said:

"In this aspect, it is immaterial from whom they bought the rubber, or the wires or the channel. It is not the case of the purchase of the article in question from one who had a right to sell. There was no actual infringement until they made the tire and for their act in making it they could not escape liability by the purchase of parts from others."

In the case of The Woodward Company vs. Hurd, et al., O. G., 3186, the same principle is involved and the facts are identical with those in the case of Seim, et al. vs. Hurd, et al. (above), except that the alleged infringing party, instead of assembling the parts and producing the completed article itself, brought the various elements together and sold them to others with the intent and purpose that they should be so combined, thereby contributing to the infringement. The Court held that the doctrine of Eldred vs. Kessler was not a defense and that the Woodward Co. was not immune from prosecution.

Trade-Marks.

Through the courtesy of Messrs. Mastick & Lucke, of New York, we are enabled to give an advance report of the following case:

UNITED STATES CIRCUIT COURT OF APPEALS.
For the Second Circuit.

THE WARNER BROTHERS CO., Complainant-Appellant vs. DAVID WIENER,
Defendant-Appellee.

Before: LACOMBE, COXE and WARD, Circuit Judges.

On appeal from an order of the District Court for the Southern District of

New York which granted a preliminary injunction restraining the defendant from selling or offering for sale corsets having thereon, or on the boxes containing the same, the name "Wiener's" printed in the style or type shown in complainant's registered trade-mark "Warner's" or in any such near resemblance thereto as might be calculated to deceive. The order concludes as follows:

"The motion is denied in so far as it asks that the defendant be restrained from using the name 'Wiener's' in connection with the sale of corsets, irrespective of the style of type in which said name is printed unless the name is accompanied by the defendant's given name 'David.'"

The error assigned is that the Court erred in refusing to grant an injunction restraining the defendant from using his name in connection with the sale of corsets irrespective of the style of type in which the said name is printed unless the name is accompanied by the defendant's given name "David."

Seabury C. Mastick, for appellant.

John Bogert and Isodore Weckstein, for appellee.

COXE, J.:

The complainant moved in the District Court for a preliminary injunction restraining the defendant from using his name in connection with the sale of corsets which the complainant contends infringes its registered trade-mark. This trade-mark consists of the name "Warner's" printed in heavy black script. The defendant printed his name in similar black script in such a way that a purchaser might easily mistake it for that of the complainant. Both parties are engaged in selling corsets. The District Court enjoined the defendant from using his name printed in script and said in its opinion that the defendant must not use script "but must use plain type not similar to the script used by Warner."

This is exactly what the defendant has done. He now prints on his boxes in heavy black letters his name WIENER. It is this use of his name which the complainant now seeks to enjoin. We think there is no merit in this contention. The defendant's name is Wiener, he is a corset maker, he has a right to make corsets and to use his own name in the business. The name as now used by him is as different from the name "Warner's," as it appears in the trade-mark, as it well can be. Assuming that he has a right to do business in his own name he could hardly differentiate the names more clearly. His name is not printed in script but in heavy black print and the only resemblance between the two names is inherent similarity between the names Warner and Wiener. There is, therefore, no infringement of the trade-mark. Of course, unfair competition cannot be predicated of the use of a name which the defendant has a perfect right to use. The order is affirmed.

LACOMBE, C. J., dissenting:

This suit originally involved a charge of pirating trade-mark, and also a charge of unfair competition in printing the trade-mark in such type, etc., as to mislead purchasers. The latter branch of the case is not now here; relief as to the style of printing was given below and no cross-appeal was taken.

The registered trade-mark is the word "Warner's." It is not the word printed in any particular way. The statment says that, "The trade-mark consists of the word 'Warner's'" that it is appropriated to corsets and that it is usually displayed on the packages containing the goods "by placing thereon a printed label on which the same is shown." In the opinion of this Court in the Davids case (April 18th, 1910), although in that case the statement said that the applicant had