told me, it was the advertising of local concerns in the district, and it made it attractive if he could have a map of the route. which would, of course, benefit us to that extent.

Q. Did he see that you had a map?-A. Yes; he referred to it. He says, "This is just what I wanted." It was under my glass on the end of my table.

Q. Then what did you tell him? I don't want to rehash it all, but I want to get it in detail.-A. My recollection is I told him this map was prepared by Mr. Hence, and to give him the address I looked it up in the telephone book and told him to arrange with Mr. Hence, and everything would be all right, and he left the office and said he would.

Q. Did you tell him it had been copyrighted?—A. Well, I think I referred to the bottom of it-This is marked " copyrighted." Q. Then he went away?-A. And I haven't seen him since.

* *

Q. Did you have anything to do with the publication-you or your company have anything to do with the publication-of this map? A. Absolutely nothing.

Q. Had you anything to do with the publication of the advertisements around the map?-A. Neither the publication nor the solicitation.

Q. Had you anything to do with the issuing of these maps?A. Not in the least; nothing whatever.

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Q. Counsel on the other side has asked you whether you had paid for this memorandum at the top of the map: Watch your step, Morris County Traction Company, Safety First "—pay anything for that?-A. No, sir; we never paid Mr. Latassa-we never paid him anything.

Q. Did you agree to pay him anything?—A. No, sir.

Q. Did you have any contract or agreement with him in reference to the words that appear above the map?-A. None at all. Q. Now, as to issuing these maps, all you did was he sent you 500, did he not?-A. He sent us 500 copies.

Q. And you sent those to your three stations?-A. We kept some in the office, and sent the rest to the two dispatching offices at Dover and Summit.

This comprises the entire proof in the case in that regard, and the court in its opinion rightly said:

The defendant did not sell any of the maps, and, so far as appears from the testimony, none of the 500 secured by it ever reached the public, or prospective purchasers of maps.

Assuming, as we do, that Latassa wronged Hence by publishing his copyrighted map on his advertising sheet, we are unable to see how the traction company became a participant in that wrong. Its entire good faith and innocence from any wrongful intent, and its desire to respect Hence's rights, are evidenced by the fact that, when Hence's map attracted the attention of Latassa, the secretary of the company called the latter's attention to

Hence's copyright, gave him the latter's address, and advised him to see him and arrange to get permission to use it. When, therefore, Latassa later gratuitously sent a lot of his maps to the company's office, the receipt and subsequent retention of them by the company shows neither an intent of wrongdoing, or indeed such an act, and if an innocent receiving and a guiltless retention of these gratuitously distributed sheets were to be adjudged a publication by this traction company of the advertising sheet, in which the map had been wrongfully placed by Latassa, the copyright law would be an instrument of wrong to innocent people rather than a punisher of evilminded violators of its provisions.

Finding the traction company has done no wrong, and that a simple inquiry by the plaintiff before he filed this bill would have disclosed the groundlessness of this complaint, the decree below is vacated, and the cause remanded, with instructions to dismiss the bill; the plaintiff to pay costs in this court and the court below.

NATIONAL PICTURES THEATERS (INC.) v. FOUNDATION FILM CORPORATION

(Circuit Court of Appeals, Second Circuit. April 14, 1920)

1. APPEAL AND ERROR.

266 Fed. Rep. 208

Where granting or denial of a preliminary injunction is based on a finding on controverted facts, it is an extreme case which will justify interference with the discretion of the primary court; but where there is no fact in doubt, and the question is one of law only, the law not only guides, but coerces, discretion.

2. TRADE-MARKS AND TRADE NAMES.

When a play has attained such popularity that its name has plainly acquired a secondary signification, suggestive of that particular play, equity will, under the rules of unfair competition, prevent the use of the same name or any colorable imitation thereof as descriptive of another and competing production.

3 COPYRIGHTS.

The owner of a copyright on a book or play owns the right to represent on a screen photographs telling the copyrighted story, and may assign such right.

4. TRADE-MARKS AND TRADE NAMES.

To entitle a complainant to an injunction against unfair competition, he must have an actual property right

to protect, there must be a real present or prospective competition, and the endeavor to get the same trade from the same people at the same time must on defendant's part be with wrongful intent to gain the advantage of that celebrity of which complainant is owner; but such intent may be inferred from the inevitable consequences of the act complained of.

5. TRADE-MARKS AND TRADE NAMES.

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Complainant, as owner of motion-picture rights in a play entitled Blind Youth," which as a spoken play had attained wide popularity, toward the production of which complainant had expended money, held entitled to a preliminary injunction to restrain the production by defendant of a motion-picture play under the name of “The Blindness of Youth," which was adapted from another play having a different name.

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

Suit by the National Picture Theaters, Incorporated, against the Foundation Film Corporation. From an order denying a preliminary injunction, complainant appeals. Reversed.

Appeal from an order in equity denying motion for an injunction pendente lite, entered in the District Court. for the Southern District of New York. Prior to June, 1919, one Tellegen and another, being the authors of a play or drama entitled "Blind Youth," were the owners of the copyright of said play and of all the dramatic and motion-picture rights in and to the same. In December, 1919, plaintiff herein by divers mesne assignments became the owner of a motion-picture play based upon said dramatic composition known as "Blind Youth." The work of photographing the situations of the photoplay "Blind Youth was at once begun, but before it was ready for production defendant announced by advertisement its intention to produce, or permit others to produce, a picture play to be known as "The Blindness of Youth."

Defendant's production is said to be "adapted from the great French success The Torrent," " and it is herein assumed that the subject matter or incidents of "Blind Youth" and "The Blindness of Youth" are wholly dissimilar, further than that both deal with the misadventures and dangers of youthful inexperience of life. Jurisdiction herein rests on diversity of citizenship. The bill is one for unfair competition only, and prays for an injunction against the use by defendant of the name "The

Blindness of Youth" as applied to " any motion-picture play."

The spoken play "Blind Youth" is proven without contradiction to have attained wide popularity over considerable portions of the United States, largely on account of the reputation of one of the authors and the principal actor-Tellegen. It also appeared that on July 10, 1915, one Byers registered and claimed copyright upon a "certain dramatic composition entitled 'The Blindress of Youth."" This is a wholly different composition from the play upon which defendant's motion-picture production is based, and it is not asserted that Byers's copyrighted play influenced defendant's choice of title, nor is any reason assigned for using the alleged infringing name in place of "The Torrent," except that such change of title is common in trade circles. Plaintiff promptly moved for preliminary injunction, and appeals from the order denying the same.

Konta, Kirchswey, France & Michael, of New York City (Royal W. France, of New York City, of counsel), for appellant.

House, Grossman & Vorhaus, of New York City (Nathan April, of New York City, of counsel), for appellee.

Before Ward, Rogers, and Hough, circuit judges.

HOUGH, Circuit Judge (after stating the facts as above). [1] The propriety of reviewing, and indeed. our right to review, the order appealed from is questioned because, in refusing relief, the court below exercised judicial discretion, where decision is dependent on controverted facts, it is an extreme case that justifies departure from the rule "that the discretion of the primary court [is not] to be interfered with." (Texas, etc., Co. v. Collier, 195 Fed. at page 66, 115 C. C. A. 83.) But here no fact is in doubt; there is before us only a question. of law, and law not only guides, but coerces, discretion. We have held that "whenever it is manifest to the court that, upon the case made, an injunction will be granted at final hearing, one should be awarded * * * preliminarily, in the absence of facts presenting special equitable considerations to induce the court, in the exercise of judicial discretion, to withhold it" (Allington, etc., Co. v. Booth, 78 Fed. at page 878, 24 C. C. A. 379); and Armat, etc., Co. v. Edison, etc.,

* * *

Co. (125 Fed. 939, 60 C. C. A. 380) well illustrates how the "contradictory character" of affidavits produces a situation wherein the appellate court will vacate preliminary injunction granted, or refuse one on appeal from a denial.

[2] The question at bar is whether when a play has attained such popularity that its name has plainly acquired a secondary signification (i. e., one suggestive of that particular play) equity will, under the rules of unfair competition, prevent the use of the same name, or any colorable imitation thereof, as descriptive of another and competing production. It is to be noted that plaintiff's asserted right does not rest on copyright, though derived from a copyright owner; therefore it may be admitted that a name as such is not protected by the copyright act (Glaser v. St. Elmo Co. (C. C.) 175 Fed. 276, and cases cited), nor by trade-mark registration (Atlas, etc., Co. v. Street, 204 Fed. 398, 122 C. C. A. 568, 47 L. R. A. [N. S.] 1002).

[3] Yet it remains true that the owners of copyright on a book or play own the right to represent on a screen photographs telling the copyrighted story (Kalem Co. v. Harper, 222 U. S. 55, 32 Sup. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285); therefore the assignment to this plaintiff gave a lawful right, which by the investment of capital and labor has been made a business. Where unfair competition is charged "the rights of the parties are to be determined [by principles] similar to those which are well known to govern trade-marks, although the combination of elements is more complex than in devices which commonly go by that name" (per Holmes, J., New England, etc., Co. v. Marlborough, etc., Co., 168 Mass. 154, 46 N. E. 386, 60 Am. St. Rep. 377).

[4] To expand this thought: The plaintiff must have a right in being, an actual property, to protect (Manners v. Triangle, etc., Co., 247 Fed. 301, 159 C. C. A. 395); there must be a real present or prospective competition, that is, an endeavor to get the same trade from the same people at the same time; and that endeavor must on the defendant's part be unfair, that is with a wrongful

1

"Ideal

1 Thus there could be no competition between an "Ideal fountain pen (Waterman v. Shipman, 130 N. Y. 301, 29 N. E. 111) and an hair brush" (Hughes v. Smith Co., 209 Fed. 37, 126 C. C. A. 179); but it can and did arise between a " Keepclean toilet brush" and a "StaKleen tooth brush" (Florence Co. v. Dowd, 178 Fed. 73, 101, C. C. A. 565).