nature. Harms v. Stern, 231 F. 649 (CCA 2, 1916); Kerr on Injunction, 5th ed., 413. Obviously, they do not tend to promote the general welfare or the progress of science and useful arts, and so do not come within the constitutional provision.

The element of indecency has figured in a few copyright cases. For example, the old Negro song "Ma Angeline" (the 'hottest' gal in town) so shocked the court that copyright protection was denied until the offensive word was eliminated. Broder v. Zeno, 88 F. 74 (1904). But times and customs change and we find the present-day attitude fairly gauged by Judge Knox in Simonton v. Gordon, 12 F.2d 116 (1925): "Whatever may be the view of the prudist with respect to 'Hell's Playground', I think that the book, when judged by the standards of current literature, should not be held unentitled to copyright . . . If the copyright is invalid upon the gound of immorality, it augurs ill for many present-day novels and magazines, to say nothing of numerous dramas which now meet with public approval."

The mailing of obscene, libelous, fraudulent or treasonable matter is prohibited by the Criminal Code. Title 18 of the U.S. Code.

Titles, Names

The protection of titles is a constantly recurring question. From the importance given under the old copyright regime to the filing of the title, it became, and still continues, not uncommon for lawyers as well as laymen to speak of "copyrighting” the title of a work. But this notion that the title is in itself subject to copyright protection separate and apart from the particular work it identifies is directly contrary to the fundamental conception of copyright and to the uniform decisions of the courts.

So far as can be discovered, the question first came up in our courts in the oft-cited case of Jollie v. Jaques, 1 Blatch. 618 (1852), where the plaintiff argued that the title of his piece of music, "The Serious Family Polka", was original and that his prior registration entitled him to restrain the defendant from using the same title for another composition. On this point the court remarked: "The right secured is the property in the piece of music, the production of the mind and genius of the author, and not in the mere name given to the work. . . . The title is an

appendage to the book or piece of music for which the copyright is taken out, and if the latter fails to be protected, the title goes with it, as certainly as the principal carries with it the incident." This principle has been followed ever since in a large number of cases, not only with respect to music but as to books and other productions as well. Intern. Film Service v. Association Producers, 273 F. 585 (1921), and cases cited.

However, it is not to be supposed that an author or proprietor whose work has become identified in the public mind under a distinctive title is at the mercy of any person who may seek to gain advantage by appropriating it to his own use. The power of the courts may be invoked to restrain such practices under equitable principles relating to unfair competition, quite irrespective of the limitations of the copyright law.

The question has frequently come up with respect to the use of titles of stories and plays for motion picture purposes. Here the courts make an important distinction between works still under copyright and those which are in the public domain. In the case of the former, the same title may not ordinarily be used to designate a motion picture even though based upon an entirely different story, for the very good reason that the author still enjoys the exclusive right to exploit his story or play in the same manner and the use of his title by another might well result in destroying the value of that right. In the recent case of Hemingway v. Film Alliance, 46 USPQ 568 (1940), the defendant was enjoined from using "The Fifth Column" as the title of a motion picture because of its prior adoption by the plaintiff for his well-known play. See also Paramore v. Mack Sennett, Inc., 9 F.2d 66 (1925), in re "Yukon Jake"; and Patten v. Superior Talking Pictures, 23 USPQ 248 (1934), in re "Frank Merriwell".

Similar protection may also be accorded against any colorable imitation of a preempted title if its use under the circumstances is likely to mislead the public. Nat'l. Pictures Theatres, Inc. v. Foundation Film Corp., 266 F. 208 (CCA 2, 1920). Here the plaintiff had secured from the authors the motion-picture rights in their popular play "Blind Youth", and the defendant was enjoined from using the title "The Blindness of Youth" for a competitive picture founded upon another play bearing an entirely different title.

But where the words of the title are not distinctive in them

selves but merely terms of general description, the court may see fit to limit their use only so far as necessary to prevent unfair competition. This was accomplished in Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 21 USPQ 405 (CCA 2, 1934), by requiring defendants to announce in their advertisements and upon the film itself that their picture "Gold Diggers of Paris" was not based upon the play "Gold Diggers" by Avery Hopwood or upon the motion pictures of the plaintiff, or some equivalent words of differentiation to be settled by the District Court after hearing the respective parties.

On the other hand, where the original work has fallen into the public domain the title goes with it and may be freely used, subject to certain limitations. If the title has acquired a so-called "secondary meaning", equity acting to restrain unfair competition will prevent the use of such title in a misleading manner.

The term "secondary meaning" necessarily implies that the work shall have acquired a public reputation, otherwise no one would be deceived. Moreover, it must be shown that the defendant has in fact acted so as to lead the public to suppose that his publication is the same as the plaintiff's, thereby damaging the latter by making his work less remunerative. But given these three factors-public reputation, deception, damage-a court of equity will usually grant relief by prohibiting, not necessarily all use of the name or title, but merely its unqualified, unexplained or misleading use. Thus, in the Webster Dictionary cases the right of defendant to publish a facsimile of the 1847 edition upon which the copyright had expired and to call it "Webster's Dictionary" was fully recognized by the court, but he was enjoined from issuing deceptive advertisements and circulars, and also required to print in large type on the title page of the reprint a statement clearly differentiating it from the later revised editions of the plaintiff, whose name had been associated with the famous dictionary from the beginning. Merriam Co. v. Ogilvie, 159 F. 638 (CCA 1, 1908); Merriam Co. v. Saalfield, 238 F. 1 (CCA 6, 1917).

The same principle is applicable to the use of names of businesses and manufactures without regard to whether there is actual market competition between the parties for the same trade, so long as such use of the names will result in injury to one of the parties and tend to mislead the public. Tiffany & Co.

v. Tiffany Productions, 237 N.Y.S. 801, aff'd. 262 N.Y. 482; Yale Electric Corp. v. Robertson, 26 F.2d 972 (CCA 2, 1928).

It seems that titles or names may in some cases qualify for registration as trade marks, especially as applied to periodicals or a series of cartoons and the like, but without thereby extending the term of copyright in the work itself. In Atlas Mfg. Co. v. Street & Smith, 204 F. 398 (CCA 8, 1913), the latter "lost out" on their registered trade mark "Nick Carter" on the technical ground that they had incorrectly specified the class of goods as "a weekly periodical," whereas each issue was a complete story in itself, and the court held it was not a periodical but a "book." Aside from this, the court thought that the use of the name "Nick Carter" alone for a motion picture did not compete with the publication in question. One of the judges strongly dissented. "The defendants," he said, "are engaged in appropriating the fruits of complainants' current endeavors, and are deceiving the public."

So also an arbitrary designation applied to a set or series of books may constitute a valid trade mark, such as "Dr. Eliot's five-foot shelf of books", Collier v. Jones, 120 N.Y.S. 991 (1910). But if it is merely the name of one of the books in the series, it is regarded as descriptive and therefore not subject to trade mark protection. In re Page Co., 47 App. D.C. 195 (1917), the "Pollyanna" case.

In the Mark Twain case, Clemens v. Belford, 14 F. 728 (1883), the author tried unsuccessfully to prevent the use of his pen name upon a reprint of some of his works which were out of copyright; but the court held that once a work has fallen into the public domain, anyone may reprint it and attribute the authorship to the one who wrote it, either by his real name or pen name, or both; for there is no deception. See also Ellis v. Hurst, 128 N.Y.S. 144 (1910).

Under the prior law the copyright was initiated by entering the title in the copyright records, and if upon publication of the work a substantially different title was used the result was likely to be fatal to the copyright. Blume v. Spear, 30 F. 631 (1887). This defense would hardly now be available since, under existing law, the copyright (for a published work) is secured by publication with notice, and the presence of such notice on the copies should be sufficient in itself to warn the public not to infringe,

irrespective of a subsequent change of the title. In the case of books for which ad interim copyright has been secured (section 21) it frequently happens that the American edition is brought out under a wholly different title from that borne by the original English edition. In such cases it would be well for the American publisher to print an explanatory note on the title page of his edition as to the change of title, in order to facilitate searches with respect to the ad interim entry.

Only one reported case under the present law is found in which the question of change of title was touched upon, Collier v. Imperial Films Co., 214 F. 272 (1913). It had to do with an unpublished play which was registered under the title "A White Slave's Love," but the author afterwards adopted a new title, "The Undertow," under which it was produced by his assignee. The defendant sought to take advantage of his change of title as destroying the identity of the copyrighted play, and might have succeeded but for the fact that the evidence disclosed that he had produced the play with full knowledge of the existing copyright. Said the judge: "I am not satisfied that an author can copyright a play under one title, produce it under another, and hold as an infringer a person who has been misled by his action. But I am not called upon to determine that question, as it does not arise upon these pleadings. The bill avers that the defendant produced the complainant's work with full knowledge of all the facts. As to such a person I think it clear that an author or his assignee does not forfeit a copyright by a change of the title of the work." The statute might well be amended so as to permit the author to file in the Copyright Office a notice of change of title to be placed against his original application and published in the Catalogue of Copyright Entries as constructive notice to all the world; and especially with respect to that class of works which, under section 11 of the Act, may be registered for copyright prior to publication (dramas, musical compositions, lectures, motion pictures, etc.).

Toys, Dolls, Game-boards, Fabrics and the Like

Generally speaking, the protection of such articles should be sought under the design patent law as embodied in section 4929 of the Revised Statutes. While an artistic drawing or a printed picture of the article itself (such as fashion illustrations in a