William K. White, of San Francisco, Cal., Harold Hirsch, of Atlanta, Ga., Joseph E. Morrison, of Phoenix, Ariz., and Edward S. Rogers and Frank F. Reed, both of Chicago., Ill., for appellee. Before GILBERT, ROSS, and HUNT, Circuit Judges.

ROSS, Circuit Judge. Our conclusion in this case, after a careful examination of it, may be very briefly stated. The suit was brought to obtain an injunction, preliminary and perpetual, an accounting for profits, and for the recovery of damages against the defendants thereto, upon the ground of their alleged joint and several infringement of the complainant's trade-mark "Coca-Cola," and for unfair competition on the part of the defendants. After long preceding use of it, the trade-mark was registered in the United States Patent Office on January 3, 1893, under the act of Congress of March 3, 1881, and was also registered under the subsequent act of Congress of February 20, 1905, entitled "An act to authorize the registration of trade-marks used in commerce with foreign nations, among the several states of the United States, and with the Indian tribes, and to protect the same." A very large amount of testimony was taken in the case, from which the court below found as a fact that the preparation manufactured and sold by the defendants to the suit was in imitation of that of the complainant, and that the name under which it was so manufactured and sold-"Koke"-was selected for the purpose of reaping the benefit of the reputation and advertising of the complainant, and because it would permit the defendants to better dispose of their product as and for Coca-Cola, especially in view of the fact that the label of the complainant was copied and imitated, and the barrels in which defendants' products were shipped were colored as nearly like those of complainant as possible.

Upon the record we would not be justified in holding that the trial court reached the wrong conclusion in that respect, and if that were the only point in the case would readily affirm the interlocutory decree appealed from. But it is the well-established law, as held by the Supreme Court in the case of Worden v. California Fig Syrup Co., 187 U. S. 516, 528, 23 Sup. Ct. 161, 164 (47 L. Ed. 282) that "when the owner of a trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trade-mark or in his advertisements and business, be himself guilty of any false or misleading representations; that if the plaintiff makes any material false statement in connection with the property which he seeks to protect, he loses his right to claim the assistance of a court of equity; that where any symbol or label claimed as a trade-mark is so constructed or worded as to make or contain a distinct assertion which is false, no property can be claimed on it, or, in other words, the right to the exclusive use of it cannot be maintained."

Many cases will be found referred to by the court in its opinion in that case in support of it, and by reference to 38 Cyc. 700, 704, 797, there will be found many others to the same effect. The evidence, we think, leaves no room for doubt that the appellee's very extensive

business conducted under the name "Coca-Cola" is not entitled to protection at the hands of a court of equity: First, because it shows that in the beginning, and for many years thereafter, the coca of which its compound was in large part made contained the deadly drug cocaine, and the caffeine, which constituted the other main ingredient, was derived mainly, and, indeed, almost exclusively, not from cola nuts, but from tea leaves. Yet the labels with which the preparation was adorned contained pictures of coca leaves and cola nuts, and was widely advertised and sold, first, under the name of "Coca-Cola Syrup & Extract," next as "Coca-Cola Syrup," and finally as "Coca-Cola," as a "valuable brain tonic," an "ideal nerve tonic and stimulant," as a cure of "headache, neuralgia, hysteria, and melancholy," and "of nervous afflictions," under which representations a tremendous consumption was built up, and under which large numbers of the appellee's customers still consume the mixture, although long prior to the bringing of the present suit the drug cocaine was practically eliminated from the drink, and the caffeine, of which it has since been mainly composed, still comes mainly, if not entirely, from other sources than the cola nut. We find such conduct on the part of the appellee to be, in fact, such deceptive, false, fraudulent, and unconscionable conduct as precludes a court of equity from affording it any relief.

Accordingly, under the rule and the decisions of the Supreme Court in the cases of Worden v. California Fig Syrup Co., 187 U. S. 516, 23 Sup. Ct. 161, 47 L. Ed. 282, and United States v. Coca-Cola Co., 241 U. S. 265, 36 Sup. Ct. 573, 60 L. Ed. 995, Ann. Cas. 1917C, 487 (decided subsequent to all the cases upon which the judgment of the court was based), we see no escape from the conclusion that the judgment appealed from must be reversed, and the cause remanded, with directions to the court below to dismiss the bill, at the complainant's cost.

Accordingly it is so ordered.

INSURANCE PRESS v. FORD MOTOR CO.

(Circuit Court of Appeals, Second Circuit. November 13, 1918.)

No. 37.

COPYRIGHTS 87-INFRINGEMENT DAMAGES.

Owner of a copyrighted article, reproduced by defendant and circu lated free in advertising matter without knowledge of complainant's rights, held entitled to a small award of damages for the infringement.

Appeal from the District Court of the United States for the Southern District of New York.

Suit by the Insurance Press against the Ford Motor Company. From the decree, complainant appeals. Affirmed.

The opinion of Augustus N. Hand, District Judge, in the District Court, is as follows:

The defendant printed in a booklet which it circulated among agents and owners of its automobiles an article entitled "Nerve," copyright of which

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

belonged to the complainant. This had a large circulation, but was distributed as advertising matter, and not sold, and the publication by the defendant in which the article appeared has now been discontinued. The complainant had sold a few copies of the single article which it had printed, and appears to have made a profit during the first year of the publication of about $260. The complainant waives any right to an accounting for profits, which doubtless could not be established, and seeks to recover for infringement of its copyright under the penal clause of the act.

I think it probable that the defendant was to some extent benefited by the use of the complainant's article, and it is not improbable that the complainant lost some chances to make sales by reason of the large circulation the article had in the automobile trade. While I am satisfied that the defendant was entirely innocent in the publication, and took the article from a copyrighted magazine with the permission of that magazine, nevertheless there was plainly a technical violation of complainant's rights, and I think some damages should be awarded. The amount is undoubtedly speculative, but the case is just one of those cases which I think are intended to be covered by the statute, where no exact amount could ever be worked out under strict rules of evidence upon an accounting. Hendricks Co. v. Thomas Publishing Co., 242 Fed. 37, 154 C. C. A. 629.

I feel reasonably sure that the complainant has suffered a very small amount of damages, and that the defendant has secured a very trifling advantage by the publication of the article in the automobile trade, and under the circumstances, shall award the sum of $250 to the complainant, in audition to costs and a counsel fee of $100.

The decree should also provide for an injunction.

Otis & Otis, of New York City (A. Walker Otis, of New York City, of counsel), for appellant.

Crisp, Randall & Crisp, of New York City (W. Benton Crisp and Cyril F. Dos Passos, both of New York City, of counsel), for appellee. Before ROGERS, HOUGH, and MANTON, Circuit Judges.

PER CURIAM. Decree affirmed.

CUNNINGHAM PIANO CO. v. ÆOLIAN CO.

(Circuit Court of Appeals, Third Circuit. January 31, 1919. Rehearing Denied March 26, 1919.)

No. 2418.

PATENTS 328-VALIDITY AND INFRINGEMENT-PIANO PLAYER.

The Young patent, No. 692,968, for controller for mechanical musical instruments, held valid and infringed.

Appeal from the District Court of the United States for the Eastern District of Pennsylvania; Oliver B. Dickinson, Judge.

Suit in equity by the Eolian Company against the Cunningham Piano Company. Decree for complainant, and defendant appeals. Affirmed.

For opinion below, see 251 Fed. 301.

Hector T. Fenton, of Philadelphia, Pa., for appellant.

George D. Beattys, of New York City, and Joseph C. Fraley, of Philadelphia, Pa., for appellee.

Before BUFFINGTON and WOOLLEY, Circuit Judges.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes 255 F.-57

WOOLLEY, Circuit Judge. By the decree of the District Court, claims 1 and 2 of Letters Patent No. 692,968, dated February 11, 1902, issued to complainant as assignee of the inventor, Francis L. Young, for an Improvement in Controllers for Mechanical Musical Instruments, were held valid and infringed. We affirm the decree on the court's opinion (D. C.) 251 Fed. 301, without doing more than to state very generally the feature of the case which has most impressed us.

The invention of the patent relates to mechanical musical instruments such as the "pianola," and more particularly the "piano player," wherein musical notes are automatically sounded by pneumatic mechanism actuated by a traveling sheet of perforated paper. The state of the art-that is, the point which the art had reached and at which it had stopped just before the patentee entered it-records the advance of a remarkable though imperfect mechanical musical instrument. The organization of this instrument contained, first, means for the mechanical sounding of musical notes, governed in their production and duration by the other mechanical means of a traveling sheet of perforated paper; and second, means for giving artistic effects to the sounds thus mechanically produced, by controlling their speed and volume. The latter means embraced a number of parts termed "controllers." Though connected with the sound producing mechanism, these were operated, not mechanically, but manually by the performer, and were the particular instruments the performer used to control variation in sound volume and time and thereby to give to a musical composition the artistic interpretation he desired. Without controllers, the instrument produced an unmusical jumble of sounds. With controllers, the production was musical according to the skill with which the performer moved the controllers and governed the artistic effects of time and sound. One unskilled in music could render very little real music from the sounds with which the mechanism supplied him. Skill of a musician in some measure was required for the production of music.

Obviously, instruments with a musical range limited to musicians. more or less skilled were limited in their sale. To broaden the commercial field, manufacturers found it necessary to qualify the unmusical as musical performers by affording them a modicum of skill that could be easily acquired. With this in view, they printed instructions on the margin of the perforated music sheet so as to convey to the mind of the performer, as the music sheet traveled into view, the musical effects which were appropriate at the moment when later the sheet passed over the point at which its perforations called forth sounds. These instructions consisted of words familiar to ordinary music, such as, "accel," or "ritard," when they related to speed or tempo effects; and "piano," or "forte," when they related to sound volume or dynamic effects. Webber, No. 452,203.

Numerals also were printed in vertical alignment on the margin of the sheet or on the body of the sheet out of alignment. These numerals corresponded to others on a dial placed conveniently within the range of the performer's vision. They indicated the tempo; and as

they moved on the sheet toward the sound actuating board, the performer could obtain the appropriate speed or time by moving a controller-connected pointer to the appropriate numeral on the face of the tempo indicator. Chase, No. 571,746; 638,955; Richards, No. 653,529.

In addition to these instructions there were others, the most useful perhaps being a line printed lengthwise the traveling sheet but shifting across its face, from side to side, technically known as the "expression line." This line-the invention of Webber, Letters Patent No. 452,203-was not truly sinuous in the sense of bending in and out in a wavelike course, but shifted its direction abruptly and at angles. In its position and change of direction, this line denoted generally but not precisely the appropriate sound volume and its changes, and when followed by the eye, it carried to the mind of the performer some measure of the artistic interpretation as to loud and soft sounds and as to changes from one to the other which the musical composition called for. The Webber line was an interpretative guide. Whatever its merits, it was only a guide. The musical interpretation it conveyed to the performer was capable of reproduction by him only according to his skill in following the line with his eye and mind -in reading what the line imparted—and in manipulating the controllers in a way to produce the effects the line intended.

It thus appears very clearly that the art, when Young entered it, called for some musical knowledge and some musical skill on the part of the performer to render artistically a musical composition mechanically sounded. It is equally clear that the art enabled him to render music only according to his own skill, or, at most, only according to his skill in reproducing the interpretation of another so far as that interpretation was shown by words, numerals and by the Webber expression line and its angles.

The conception of Young, the patentee, also contains a line, but a line different in character and function. In the line of the invention, nothing is left to the skill or interpretation of the performer in supplying musical effects when the line changes its position and direction., The performer does not have to read it. The purpose of the invention, therefore, is to facilitate, continuously and without breaks, the rendering or "shading" of music whose notes are mechanically sounded, so that a person who has no musical knowledge and who is without artistic skill in any degree can reproduce a musical composition of high order, not with tolerable fidelity, but exactly as the skilled pianist had played it and interpreted it.

What Young did was to extend the tempo controller mechanism over the traveling sheet and fasten a pencil to it. When he played the piano, the sheet moved against the pencil, which drew a line lengthwise the sheet and throughout the musical composition. This line varied in direction with each variation of musical effect given by the performer. The changes of direction were not sudden, abrupt, or angular, as in Webber, but were bending and sinuous, and it was found that in the sinuosities of the line were exactly recorded every variation of tempo expression. What Young achieved was to im