by virtue of the copyright, rather than by virtue of its use in publication and trade.

Watch Case Co. 179 U. S. 665, 45 L. ed. | protection, therefore, in that respect, came 365, 21 Sup. Ct. Rep. 270; Singleton v. Bolton, 3 Dougl. K. B. 293; Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. 128 U. S. 598, 32 L. ed. 535, 9 Sup. Ct. Rep. 166; Reddaway v. Banham [1896] A. C. 199; Cellular Clothing Co. v. Maxton [1899] A. C. 326; Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002.

The statutory monopoly having expired under statutory limitation, the word "Webster," used in connection with a dictionary, became public property, and any relief granted upon the idea of title or proprietorship in the tradename of "Webster" would necessarily involve an unwarrantable continuance of the statutory monopoly secured

Aldrich, District Judge, delivered the by the copyright. opinion of the court:

This case involves a bill and a cross bill, each party claiming injunctive relief against the other. There was an injunction below against each party. The Merriam company appeals upon the ground that it should not be restrained, and also upon the ground that the injunction against Ogilvie was not broad enough. Ogilvie did not appeal.

Whatever relief either party gets under these proceedings is afforded upon the ground of unfair competition, rather than upon any theory of infringement of copyright or protected tradename. This case does not, in any sense, stand like a case involving a tradename established in the course of business, where, independent of statutory monopoly, the right to its exclusive and continuous use results from its adoption, adaptation, and use in trade and commerce.

The authorities and the discussion of this phase of the case by the learned judge in the circuit court (Ogilvie v. G. & C. Merriam Co. [C. C.] 149 Fed. 858, where the facts sufficiently appear) satisfy us in respect to the soundness of the proposition that, upon the expiration of the copyright, the name "Webster" passed into the field of public right.

We perceive no difference in principle between patent rights and copyrights in this respect, and, as observed by Mr. Justice White in Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002, "where, during the life of a monopoly created by a patent, a name, whether it be arbitrary or be that of the inventor, has become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes The name "Webster" having been copy- to the public with the cessation of the morighted by the Merriams, they were pro- nopoly which the patent created." The tected in its use under a statutory right Singer Case declares a general and undoubtduring an expressed term of years. The ed principle which is quite decisive of the ship and origin of the article, and it is more clusive use of the name as a trademark exreadily to be inferred that the word is used pires with the expiration of the alleged patas a name merely to identify the article.ent, whether the patent was valid or not, Usually the protection given by a patent is since the Horlick company chose to mark its far greater, though of less duration in time, product as if it were a monopoly, thereby than that obtained by the use of a trade-obtaining, measurably, at least, the benefit mark; because if an article is patented, no- of the monopoly. body but the owner of the patent can, without his consent, make or sell anything em bodying the same principles or elements, while a trademark only secures one in the use of the name or emblem adopted by him and applied to the article. One may choose to rely on the name alone: and, if so, he may establish or create a trademark which will be permanent. But, if he seeks and obtains the protection afforded by a patent, he is bound to yield up his monopoly with all that belongs to it at the end of the term, and the right to the exclusive use of the name given to his goods, which might otherwise have become a trademark, will ordinarily fall with the patent itself."

In Horlick's Food Co. v. Elgin Milkine Co. 56 C. C. A. 544, 120 Fed. 264, where the manufacturer of "malted milk" placed upon the packages in which it was sold to the public a notice in the usual form, that the article was made under a patent of certain date, it was held that the right to the ex

And in Sykes v. Sykes, 3 Barn. & C. 541, where a manufacturer had adopted "Sykes's Patent" for his goods, it was held that an action on the case was maintainable against a pirate who adopted the same mark for imitation goods, notwithstanding the Sykes patent had been declared invalid.

Cases like Leather Cloth Co. v. American Leather Cloth Co. 11 H. L. Cas. 535. and Ford v. Foster, L. R. 7 Ch. 611. as to the effect of misrepresentations, whether by the trademark or tradename itself, or, collaterally thereto, that an article is subject to a patent, to forfeit the right to protection at the hands of a court of equity against infringement, are not within the scope of this note. The general question as to the effect of false representations extrinsic to a tradename or trademark, on the right to protec tion against the infringement of the same, is covered in a case note to Johnson & Johnson v. Seabury & Johnson, 12 L.R.A.(N.S.) 1201.

same considerations apply to the words and, and clearly disassociate his work from the phrases on the backs of some of the Ogilvie work of the one who has given significance publications, as, for instance, "The latest to the name, and sufficiently direct the mind complete authentic Webster's Dictionary." of the trading public to the fact that, though The word "authentic" was plainly borrowed the thing is of the same name, it is somefrom the backs of the Merriam publications, | thing produced and put upon the market and, though the setting was somewhat dif- by himself. ferent because they used "Imperial" and "Universal" rather than"International," the impression still remains that their purpose was a play upon the words and phrases of the Merriam publications.

It is quite true that Ogilvie proceeded with his purpose under a claim of right, but, notwithstanding this, his title page, and his imprints upon the backs of his dictionaries, as well as his circulars and advertisements, involve legal and equitable wrong, because, in spirit and in fact, they ignore the obligation of full compliance with the condition which law and equity impose upon the copyrighted name when set at large, and, although the name "George W. Ogilvie" was used, it was not in fact intended that it should in all cases overcome the prominent features of the title page and the imprints upon the backs, and unmistakably lead the ordinary purchaser to a correct conclusion as to the identity and true character of the publication.

Under the history and the circumstances of the Ogilvie publication, including the fact that a dictionary was at one time put out with the 'name of Ogilvie as agent for the publisher, we think it reasonable to conclude that the title page and the imprints upon the backs, although containing the name of Ogilvie, were ingeniously planned with the idea of not giving a clear and definite designation of identity, but of leading those who casually examine into the supposition that they are getting the Webster Dictionary of which they have heard and read in years gone by.

It seems to us that Ogilvie was not content with using the word "Webster," which was at large as a word entitled to be used in connection with a dictionary, but purposely used words of description calculated to lead the ordinary purchaser to suppose that he was getting the publication which had been built up by the Merriams. This, we think, was an appropriation of something which he was not entitled to appropriate, and, under the circumstances, amounts to unfair competition.

The presence of an inequitable purpose is necessarily an element of great weight in the determination of a question of fairness in trade. And, where another avails himself of the principle of public dedication, he must in good faith fully identify his production

Use of a manufacturer's or producer's true name, alone, would not always suffice as an unmistakable designation, and especially where artifice and bad faith are present. Suppose, for instance, that another Gillette of precisely the same name as the one who has so extensively advertised his "Gillette Safety Razor" should, for the purpose of reaping the fruits of the original Gillette's advertising and reputation, put upon the market a different razor under descriptions and phrases calculated to lead the ordinary purchaser to suppose that he was buying the original Gillette razor, his competition would not be made fair by simply appending his own true name, which is identical with the name of the Gillette, who built up the reputation. This principle is recognized in International Silver Co. v. Simeon L. & George H. Rogers Co. (C. C.) 110 Fed. 955, and, though it only applies to an extreme situation, it illustrates the idea that the designation must be efficient and ample under the particular circumstances of a given situation.

While appending Ogilvie's name was doubtless intended as a technical compliance with the condition upon the public right to use the name "Webster," it was not intended that it should operate to wholly overcome the influence produced upon the public mind by the phrases descriptive of the Merriam publication. It is quite apparent that the intended effect of the whole was something contrary to that idea.

The decree of the Circuit Court with respect to the injunction against the Merriam company is affirmed.

The decree of the Circuit Court for an injunction against Ogilvie in respect to circulars and advertisements is affirmed, and the case is remanded to that court with directions that the injunction against George W. Ogilvie, his agents, attorneys, and servants, be so enlarged as to include the title pages and the backs of the dictionaries in the present form, or in any form calculated to deceive members of the public into purchasing his dictionary under the belief that it is a Merriam Webster's Dictionary, and for further proceedings not inconsistent with the opinion passed down this day. All questions of accounting, including the question whether or not the Merriam company is entitled to an accounting, are open to the Cir

Statement by Carpenter, J.:

Defendant is a mutual-benefit association organized under the laws of the state of New York. On the 24th of March, 1884, it insured the life of James Dolan, one of its members. The certificate or policy of insurance named Anna Dolan, the wife of the insured, beneficiary. Anna Dolan having died, the insured, on the 13th of March, 1900, took out a new certificate of insurance, in which one August Guerold was named as beneficiary. Said Guerold bore no relationship whatever to the insured. Rose James Dolan died October 7, 1904. Dolan, the plaintiff in this suit, is his only surviving sister, and, under the laws of defendant's order, is entitled to recover if the designation of Guerold as beneficiary is

Case Note. - Designation as beneficiary,, absence of bad faith, may himself contract in insurance policy or benefit certifi- directly with the insurer and make the cate, of one without insurable inter-policy payable to whomsoever he will, reest, as affected by considerations of public policy.

gardless of the party's insurable interest, is also supported by the following cases: Allen v. Hartford L. Ins. Co. 72 Conn, 693, 45 The scope of this note is limited, as the Atl. 955; Prudential Ins. Co. v. Hunn, 21 title shows, to the question whether the des- Ind. App. 525, 69 Am. St. Rep. 380, 52 N. E. ignation, by the insured, of a person without 772; New York L. Ins. Co. v. Greenlee (Ind. insurable interest, as the beneficiary of the App.) 84 N. E. 1101; New York L. Ins. Co. contract of insurance, contravenes public v. Neal, 114 La. 652, 38 So. 485; Ashford policy; and no attempt will be made to dis- v. Metropolitan L. Ins. Co. 80 Mo. App. 638; cuss such statutory or contractual provisions Van Cleave v. Union Casualty & Surety Co. as may restrict the classes to which the bene-82 Mo. App. 668; Locher v. Kuechenmiester, ficiary may belong.

120 Mo. App. 701, 98 S. W. 92; Reed v.
Provident Sav. Life Assur. Soc. 190 N. Y.
111, 82 N. E. 734; Ruoff v. John Hancock
Mut. L. Ins. Co. 86 App. Div. 447, 83 N. Y.
Supp. 758; Classey v. Metropolitan L. Ins.
Co. 84 Hun, 350, 65 N. Y. S. R. 493, 32 N. Y.
Supp. 335; Albert v. Mutual L. Ins. Co. 122
N. C. 92, 65 Am. St. Rep. 693, 30 S. E. 327;
Brett v. Warnick, 44 Or. 511, 102 Am. St.

The earlier decisions on the subject may be found in a note to Heinlein v. Imperial | L. Ins. Co. 25 L.R.A. 627, on the right to take life insurance for benefit of a stranger, in which it was said: "With one or two possible exceptions, the courts all agree that, in case the transaction is bona fide, a person may take insurance upon his own life for the benefit of one having no insurable interest in his life; and that the latter may col-Rep. 639, 75 Pac. 1061; Overbeck v. Overlect and hold the amount which becomes due beck, 155 Pa. 5, 25 Atl. 646; Crosswell v. upon the policy. Some requirements are in- Connecticut Indemnity Asso. 51 S. C. 103, sisted upon in some jurisdictions by way of safeguards which do not appear in others, but these are more by way of local regulations of the rule, than of exceptions to it." The general rule that, although a person without legal insurable interest in the life of another may not procure insurance upon the life of such other, the person insured, in the

28 S. E. 200; Lane v. Lane, 99 Tenn. 639, 42 S. W. 1058; Kentucky Life & Acci. Ins. Co. v. Hamilton, 11 C. C. A. 42, 22 U. S. App. 386, 548, 63 Fed. 93; Robinson v. United States Mut. Acci. Asso. 68 Fed. 825, Affirmed in 20 C. C. A. 262, 36 U. S. App. 690, 74 Fed. 10; American Employers' Liability Ins. Co. v. Barr, 16 C. C. A. 51, 32 U. S.

illegal, imperfect, or inoperative. There tenance, sustenance, or support; and no was nothing in defendant's laws prior to other person or classes of persons shall be 1903 prohibiting the insured making Guer- named." Under the laws of defendant orold his beneficiary, and such designation der, the insured had a right at any time was lawful under the laws of the state of to change his beneficiary, and it is to be New York, where it was incorporated. inferred that all the premiums for the inSabin v. Phinney, 134 N. Y. 423, 30 Am. St. surance were paid by the insured. Defend Rep. 681, 31 N. E. 1087; Levin v. Ritz, 17 ant paid the insurance to Guerold October Misc. 737, 41 N. Y. Supp. 405. Subsequent 28, 1904, and refused thereafter to pay it ly, however, in 1903, and before Dolan's to plaintiff. Subsequently this suit was death, the defendant order adopted a by- instituted. The foregoing facts were establaw which, if applicable, prohibited the lished by the testimony. A verdict was didesignation of Guerold as beneficiary. That rected in defendant's favor. We are asked by-law reads: "Any member shall have the to reverse the judgment entered thereon. right and the power to designate any one Two questions are raised: First. Had the or more of the following class or classes of insured, in 1900, a lawful right to desigpersons to receive his beneficiary fund innate Guerold as his beneficiary? Second. case of his death, to wit, his wife, his children or any child by legal adoption, father, mother, brother, or sisters, blood relations or persons dependent upon him for main

App. 444, 68 Fed. 873; Foster v. Preferred |
Acci. Ins. Co. 125 Fed. 536.

As is said in Reed v. Provident Sav. Life Assur. Soc. supra: "What will distinguish the one contract from the other is the fact as to the party actually contracting with the insurer; and the distinction is substantial and controlling accordingly."

The doctrine is based upon the theory that it is not reasonable to suppose that a person will insure his own life for the purpose of speculation, or be tempted to take his own life in order to secure the payment of money to another, or designate as the beneficiary a person interested in the destruction, and not in the continuance, of his own life. Hess v. Segenfelter (Morgan v. Segenfelter) 32 Ky. L. Rep. 225, 14 L.R.A. (N.S.) 1172, 105 S. W. 476.

And the same has been held with respect to benefit certificates, in the absence of stat utes or rules of the order restricting beneficiaries, in Berkeley v. Harper, 3 App. D. C. 308; United States Mut. Acci. Asso. v. Hodgkin, 4 App. D. C. 516; Union Fraternal League v. Walton, 109 Ga. 1, 46 L.R.A. 424, 77 Am. St. Rep. 350, 34 S. E. 317; Ancient Order U. W. v. Brown, 112 Ga. 545, 37 S. E. 890; Stake v. Stake, 228 Ill. 630, 81 N. E. 1146; Sabin v. Phinney, 134 N. Y. 423, 30 Am. St. Rep. 681, 31 N. E. 1087; Bogart v. Thompson, 24 Misc. 581, 53 N. Y. Supp. 622; Zinn's Estate, 2 Pa. Dist. R. 801; Supreme Council C. K. A. v. Fitzpatrick (R. I.) 68 Atl. 367; Supreme Assembly, R. S. G. F. v. Adams, 107 Fed. 335.

A dictum to the contrary may be found in Caudell v. Woodward, 96 Ky. 646, 29 S. W. 614, where it is said: "If the law of the order is to be so construed as to allow the member to name a stranger, the certificate would be void as to the stranger, and, under the policy of our law, the appellant, the mere friend of Mrs. Woodward, could not take; for nothing is better settled in this state than that one obtaining a policy of

Assuming that the insured had a right, in 1900, to designate Guerold as his beneficiary, was he deprived of that right by the enactment of the by-law in 1903?

insurance on the lite of another must have an insurable interest in the life of that other. It is said, however, that the appellant did not, in fact, obtain the insurance; that the assured voluntarily did so for the other's benefit. It may be that in this case all the dangerous features are, as a matter of fact, wanting; nevertheless, the dangerous principle remains."

But a dictum of precisely opposite effect may be found in the later case of Hess v. Segenfelter, supra, where it is said: "If we did not feel constrained to follow the provisions of the statute that will be hereafter noticed, we would announce the principle that the question of insurable interest was not involved, when a member of a fraternal or benevolent association in good faith obtained insurance upon his own life, and himself paid the premium, and there was no fact or circumstance connected with the transaction tending to show that it had any of the elements of a wagering or speculative contract; and that a person obtaining such insurance might designate any person as a beneficiary within the limits prescribed by the rules of the order."

The transaction, however, will not be upheld where it appears that the arrangement is a mere subterfuge and attempt to evade the rule that a wager policy is not valid.

Thus, in West v. Sanders, 104 Ga. 727, 31 S. E. 619, it was held that, where the insured agreed with another person to take out two policies of insurance, one payable to his wife and the other to such person, who agreed to pay all the premiums on both policies, and who was to receive the proceeds of the policy payable to him and one half the proceeds of the policy payable to the wife, such contract was a wager contract contrary to public policy; and that, therefore, no action could be based thereon against the wife for one half the amount collected by her.

And in Cisna v. Sheibley, 88 Ill App. 385,