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(274 F.) the internal revenue laws compelling them to register, put up a distillery sign, and pay a tax for the manufacture, etc., of liquor which is prohibited and for which specific penalties and punishments are provided.

In the case of United States v. Boze Yuginovich and another, 255 U.S. —,41 Sup. Ct. 551, 65 L. Ed. —, decided by the Supreme Court of the United States on June 1, 1921, it was held that Congress must have necessarily intended to repeal the internal revenue laws in so far as they verbally or literally required performance of acts prohibited as crimes. In the same way it would seem that Congress could not have intended to require the captain of a vessel to make a report to the effect that he was committing a crime against the laws of the United States, in order to avoid liability for a penalty not expressly defined, but only forced out of language which, taken literally, is not broad enough to justify such interpretation.

This makes it unnecessary to base the conclusion upon the proposition that articles which cannot be brought in or disposed of can have no "value" for the purpose of computing the amount of the penalty.

[3] When we come to the second cause of action, a similar question is presented. If the smoking opium cannot be considered "merchandise,” then of course no permit to unload “merchandise” could be obtained for the opium, and inferentially the passage of the law making smoking opium contraband has rendered futile (and therefore invalid or inferentially repealed) the provisions as to permits. Again, the criminal statutes cover the act, and the penalty under the customs law is not needed.

It follows from the decision in the Yuginovich Case, supra, that the captain should not be penalized for not obtaining that which he could not obtain. If he unloaded articles or chattels which were not "merchandise" within the sense in which that term is used with respect to permits, he committed a crime and should be punished under other sections rather than that regulating the handling and unloading of articles "capable of importation."

If the captain had no knowledge of the presence of the smoking opium and it is sought to punish him for failing to discover it, it is apparent that in the absence of negligence he should not be penalized. If he had discovered it before reaching the point where a manifest must be ready (section 2811 (section 5508]), he would have been compelled to destroy it rather than to manifest it. If he had no knowledge of importable goods which were being smuggled by the crew, he might be punished for his negligence under section 2806, if the statute be so interpreted, but whether he would thus be liable or not furnishes no solution of the present case.

Demurrer sustained.

CLINE v. HORTON. (District Court, E. D. New York. June 17, 1921.) 1. Patents w90(7) -Acceptance of suggestions from others does not defeat

right to patent.

Acceptance of suggestions made by workmen or associates of the inventor during experimentation do not deprive the inventor of the right to

claim sole invention, if the improvements are not of themselves patentable. 2. Patents (328Design 49,204, for an insulator, held valid.

The Cline design patent, No. 49,204, for a design for an insulator, held

valid. 3. Patents w209 (1)-License may be granted by parol.

Where defendant manufactured and marketed an article patented by complainant, with complainant's acquiescence, though the oral agreement between them was never made definite as to terms, defendant cannot be charged as an infringer, but is accountable for an equal share of the net protits, as a partner. In Equity. Suit by Jerome G. Cline against John T. Horton. Decree for complainant.

Paul L. Kiernan, of New York City (Maurice J. Moore, of New York City, of counsel), for plaintiff.

Conrad A. Dieterich, of New York City, for defendant.

CHATFIELD, District Judge. The plaintiff is the patentee of design patent No. 49,204, granted June 20, 1916. The object depicted in the design is an insulator body intended for use in supporting an electric conductor dependent from overhead beams or similar surfaces. It consists of a rectangular block terminating in a square plate, from the lower surface of which depends a solid flange or petticoat around its outer edge, and with a thin round boss or washer on the top of the flat plate, by which the bearing surface is diminished, in order to prevent cracking when the insulator is drawn up close and tight to the supporting suriace. The conductor is carried through an opening in the lower part of the rectangular body. The different parts, viz. the rectangular body, the plate, and the boss, are all integral and constructed of insulating material. A threaded attaching bolt is imbedded in the insulator.

It appears from the testimony that the plaintiff, who was a salesman dealing with the defendant, interested the defendant in the manufacture of these insulators. At that time the plaintiff showed a drawing to the defendant, representing only the rectangular block, the aperture for carrying the conductor, and the threaded bolt inserted in the upper side. Some discussion arose before the defendant undertook to manufacture the article, and the obvious and well-known feature of a petticoat (but in a somewhat unusual shape) was added as soon as the question of using the insulating body out of doors was considered. The novel form of the petticoat consists in its having square corners, corresponding to the rectangular shape of the block; but it is admitted by all the parties that the use of a peiticoat on an insulator was well known in the art.

It appears from the testimony that the suggestion of the petticoat came from the defendant, Horton, while the precise form of the pettiCm For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexen

(274 F.) coat, as set forth in the design, was worked out by a draftsman and was evidently agreed to by the plaintiff. In the same way, upon the trial it was apparent that the flat plate carrying the petticoat was fragile when the block was closely drawn up to the supporting surface. An iron washer was used by the defendant in experimentation, and the plaintiff then embodied the use of such a washer in his design, but constructed it of the material of which the block was made, and showed it as an actual part of the block.

Before the patent was obtained, the plaintiff and the defendant discussed various arrangements for putting the device upon the market. The defendant insisted upon an assignment of a part interest in the patent. The plaintiff demanded some interest in the other business of the defendant. No written agreement was entered into, but the defendant by oral agreement was in the meantime given the right to manufacture and dispose of the articles, which were stamped “Patent Applied For."

The parties never reached an agreement as to the terms under which the business should be conducted. The defendant has been putting the device upon the market, and the plaintiff, after obtaining the design patent, has demanded an accounting, and now charges infringement against the defendant.

The defendant alleges that the patent is invalid, inasmuch as the plaintiff filed a verified application as sole inventor, and also denies the right of the plaintiff to charge the defendant with infringement, claiming an oral assignment of one-half interest in the patent, as well as a share in the invention as joint inventor.

It is evident that the plaintiff cannot charge infringement against the defendant, if it be established that plaintiff has assigned to the defendant a one-half interest in his patent. Nor can the defendant allege invalidity, if he has any valid assignment of interest in, or license under, the patent. The assignment would give the defendant the right to manufacture, and methods of accounting or division of profits would depend upon the details of the arrangement. But this would not be a suit under the patent law.

The present action is not maintainable on any grounds of United States jurisdiction, even if maintainable in equity for an accounting, unless the plaintiff can make out his charge of patent infringement, as the parties are both residents of this state and citizens of the United States.

The defendant has not, however, attacked the jurisdiction of the court, nor presented any evidence to oust the court from hearing ihe action. On the contrary, the defendant has gone into the merits and submitted much of the testimony necessary on the accounting. Unless, therefore, the case is evidently one where lack of jurisdiction over the cause of action is apparent (Danks v. Gordon (C. C. A., Second Circuit, March 2, 1921] 272 Fed. 821), we must proceed to consider the issues.

[1] The first defense, that the plaintiff is not the lawful owner of a valid patent, presents a situation which frequently arises. Suggestions as to improvements during experimentation may be made by workmen or associates of the inventor, but do not thereby deprive the inventor of the sole right to claim invention, if they are not of them

selves patentable, or if they have to do with mere details in the work which were pointed out to the inventor and accepted and worked out by him, so that his own independent effort is actually responsible for the complete device. It is frequently difficult in a simple structure to determine whether there was participation by other people in what is claimed as invention, or whether the inventor has received ideas from his workmen and associates, under such circumstances that his own mind has been working with these associates, and has arrived at the result without independent invention on their part. Frequently this question must be determined by the acts of the parties. A share of credit for an invention does not mean that there has been joint invention in the legal sense, nor is an inventor to be deprived of his property in the invention because subsequently those who have voluntarily assisted him decide that they should have demanded recognition as coinventors in applying for a patent.

As has been said, the addition of the petticoat, or the employment of a particular style of petticoat, would not of itself be invention in a device patent. The prior art shows many forms of device for this precise purpose. None of the parties hereto seemed to consider the device itself patentable, and as a design the elements are old.

[2] But, taken as a whole, the design in question, including the petticoat and the idea of an integral washer, was evidently patentable. Undoubtedly the defendant, Horton, had some share in working out this design. What is just as apparent is that he was content to divide the profits accruing from the device, and to leave to the plaintiff the • rights of claiming invention or taking out a patent. He has never

sought to protect himself by seeking a patent, nor brought an action for a specific performance of the alleged agreement. Under such circumstances, it is impossible to hold that the plaintiff made a false oath, or should be deprived of his patent by the subsequent idea of the defendant that his share in the invention should be recognized to the extent of depriving the plaintiff of the patent.

[3] But patent rights or a license may be transferred orally, and parties may enter into an agreement by which they may act as partners without the making of a written contract. This seems to be the situation in the present case. The plaintiff and the defendant never reached an agreement as to how they would become general partners, but they did act in perfect accord in so far as the defendant began to put upon the market the plaintiff's device. He thereby inferentially and legally bound himself to account to the plaintiff therefor. Pending negotiations, and in the absence of any objection under the statute of frauds, his temporary agreement was valid.

Since that time the defendant has been manufacturing the patented device under this oral license, until it was in fact terminated by the plaintiff, prior to the bringing of the action. The defendant then became an infringer, but by a sort of mutual stipulation, recognized by both the plaintiff and defendant as beneficial, although not satisfactory, and not in accord with their personal feelings, the defendant, subject to an accounting or settlement of the dispute, has continued putting on

(274 F.) the market the patented device, as if under an extension of this license or oral agreement, even though it had been actually terminated.

The plaintiff is estopped from claiming damages, but has rights under his patent and a share of net profits, which must be divided equally. Therefore an accounting will be ordered, but the decree may provide for a continuation of the license, on the basis of one-half net profits, unless the plaintiff insists upon possible further litigation in another jurisdiction as to the alleged violation of his agreement to convey the right to manufacture under the patent.

FOX FILM CORPORATION V. KNOWLES et al.

(District Court, E. D. New York. June 28, 1921.) 1. Copyrights Ew 82—Objections to bill for infringement of renewal not sus.

tained.

A bill for infringement of a copyright renewed under Copyright Act, 8 23 (Comp. St. $ 9544), alleging that the renewal was granted to an executor and was “duly obtained,” held sufficient to show a right of action as against a motion to dismiss, as importing the existence of a will and the nonexistence of living widow or children of the author,

having exclusive, prior right of renewal. 2. Copyrights Ow33—Right of renewal is new property right.

The right to renew a copyright, given by Copyright Act, $ 23 (Comp. St. $ 9544), is a new property right vesting exclusively in the persons enumerated in the statute in the order named and which cannot be affected by any assignment or other action by the author with respect

to the original copyright. 3. Copyrights Ow33_Notice of copyright by person obtaining renewal as

executor held sufficient.

Notice of copyright by the person who obtained a renewal as executor of the author held sufficient where the renewed copyright vests in the

estate. 4. Copyrights Tw33-Executor cannot renew whore author dies before renew

al period.

The author of a copyrighted work who dies more than a year before expiration of the copyright has no right of renewal under Copyright Act § 23 (Comp. St. § 9544) which he can bequeath as part of his estate, but, where he leaves neither widow nor children, such right vests directly, under the statute, in his next of kin, and cannot be exer

cised by his executor. In Equity. Suit by the Fox Film Corporation against Frederick M. Knowles and others. On motion to dismiss bill. Granted.

Saul E. Rogers, of New York City (Percy Heiliger, of New York City, of counsel), for complainant.

Bick, Godnick & Freedman, of Brooklyn, N. Y. (Fred Francis Weiss and Louis R. Bick, both of Brooklyn, N. Y., of counsel), for defendants.

CHATFIELD, District Judge. The defendants move for judgment under equity rule 29 (198 Fed. xxvi, 115 C. C. A. xxvi) dismissing a bill of complaint charging infringement of copyright. This application is exactly similar to one made in the case of Fox Film Corporation v.

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

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