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Vol. II.]

MAITLAND v. The Citizens' NATIONAL BANK OF BALTIMORE.

(No. 6.

though the question was, by the plaintiff's third prayer, submitted to the finding of the jury, yet that is an error of which the defendant cannot complain.

With the views entertained, and which we have expressed in regard to the two main questions involved, we are of opinion that there was no error committed by the court below in granting the three prayers offered by the plaintiff. Those prayers were founded upon the theory that the plaintiff was holder of the note for sufficient consideration, and as such entitled to protection against the defence of the want of authority in the payees to pledge the note as collateral security for a preëxisting indebtedness as well as for debts contracted on the faith of it; and that, in order to affect the plaintiff's title to the note, it was necessary to bring home to it, at the time the note was taken, knowledge that the note was being used by the payees for a purpose different from that for which it was obtained from the defendant. This, we think, upon the facts enumerated in the prayers, was a fair and proper presentation of the case to the jury.

It has been objected to those prayers that they should not have been granted, because some of the propositions of fact contained in them were not supported by the evidence. But we think the objection should not prevail. The defects pointed at by the objection amount to nothing more than discrepancies between the evidence of the witnesses and the facts stated in the prayers, in regard to immaterial matters, and therefore could form no sufficient ground for reversal.

As to the three first prayers of the defendant, they presented propositions nearly, if not entirely, the converse of those presented by the prayers of the plaintiff, which were granted. And as we have said that the plaintiff's prayers were in principle correct, it follows that the three prayers of the defendant were properly refused by the court below.

3. The only remaining question to be considered is that in regard to the onus of proof, as to what debts and the amount thereof for which the plaintiff is entitled to recover. This question is presented by the fourth prayer of the defendant.

It must be recollected that this action is brought, not for the recovery of the face of the note unconditionally and in all events, without reference to the debts intended to be secured by it, but for the recovery only of the amount due on the debts for which the note was taken as collateral security. This is all that the plaintiff, in its prayers for instruction to the jury, claimed to recover. And, indeed, that is all that it is entitled to recover, it being conceded that the note was taken as collateral security merely. In such case, while the plaintiff is entitled to be treated as a holder for value, it is only so to the extent necessary to protect the debts intended to be secured. Stoddard v. Kimball, 4 Cush. 604; 6 Ib. 469; Roche v. Ladd, 1 Allen, 436; Williams v. Chaney, 3 Gray, 215; Mayo v. Moore, 28 Ill. 428 ; Gillen v. Hubber, 4 Green, 155; Grant v. Kidwell, 30 Mo. 455; Tarbell v. Sturtevant, 26 Vt. 513 ; Williams v. Smith, 2 Hill, 301.

Such being the case, it was clearly incumbent upon the plaintiff to show what debts were embraced by the security, and the amount due thereon. This was the measure of the plaintiff's right of recovery, and, as in all other cases, it was the right of the defendant to insist that the plaintiff should establish the existence and extent of its claim. There

Vol. II.]

PARKINSON v. LASALLE.

[No. 6.

was no presumption the one way or the other as to the state of the account between the plaintiff and the payees in the note. What amount of drafts was discounted before, or what amount after, the receipt of the note by the plaintiff, was fixed by no presumption. And as the plaintiff did not sue for or claim the face of the note unconditionally, but as collateral security merely, the jury could have had no criterion by which to ascertain the amount of their verdict, independent of proof as to what was due on the debts intended to be secured by the note. The onus of this proof was clearly on the plaintiff. In re Boys, L. R. 10 Eq. 467. The presumption in support of the plaintiff's title to the note is a matter quite distinct from the question of the extent of its right of recovery thereon, in a case like the present. The fourth prayer of the defendant, as we read it, was a concession of the plaintiff's right to recover on the note, as well in respect to preëxisting as to contemporaneous or subsequent debts, for which the note may have been taken as collateral security ; but it called upon the court to instruct the jury, that if they found that the note had been furnished the payees to be pledged to the plaintiff as security for certain debts, but not preëxisting debts, and the plaintiff sought to recover in respect to any preëxisting debt, the onus of proof was upon it to show that such debt was contemplated and intended to be secured by the indorsement of the note. This the plaintiff was bound to do, to entitle it to recover any amount claimed to be due on a preëxisting debt. The plaintiff was bound to show what debts were intended to be secured by the note, and the amounts remaining due in respect thereof. We think, therefore, that the fourth prayer of the defendant should have been granted, as by its refusal some disadvantage may have been suffered.

Being of opinion that there was error in the ruling of the court below in the first exception, and in its rejection of the defendant's fourth prayer, we must reverse the judgment, and award a new trial.

Judgment reversed and new trial awarded.

CIRCUIT COURT OF THE UNITED STATES. — DISTRICT OF

CALIFORNIA.

[APRIL, 1875.]

COPYRIGHT. — CONSTRUCTION OF SECTIONS 4952 AND 4956, REVISED

STATUTES. - REQUISITES OF BILL TO RESTRAIN INFRINGEMENT.

PÁRKINSON v. LASALLE.1

The rule laid down in Wheaton v. Peters, that the performance of every act required by the statute is essential to the acquirement of a copyright, is not changed by the pro

1 The following opinion of the accom- upon a motion for a preliminary injunction in plished judge of the district court for the the case of Smith v. Reynolds, and is as folSouthern District of New York, upon the cog- lows:nate statute affecting trade marks, elucidates B LATCHFORD, J. This bill is founded on a points concerning which not a little miscon- statutory right to a trade-mark claimed under ception exists. The opinion was delivered the provisions of sections 77 to 84 of the Act

Vol. II.)

PARKINSON v. LASALLE.

(No. 6.

visions of the Revised Statutes. Under sections 4952 and 4956 an author cannot obtain an exclusive right to his work unless, before publication, he delivers to the Librarian of Congress, or deposits in the mail addressed to him, a printed copy of the title of the work ; and, also, within ten days from the publication, delivers to the Librarian of Congress, or deposits in the mail addressed to him, two copies thereof. A bill which does not alege the performance of the acts required by the statute is in

sufficient.

SAWYER, C. J. This is a bill in equity to restrain the infringement of a copyright to a map of the Comstock lode. The defendant demurs speof July 8, 1870 (16 U. S. Stat. at Large, 210 the point; and that, in analogy to letters to 212). Section 77 provides that any firm patent for an invention, the certificate is evidomiciled in the United States, “and who are dence of a compliance with the requisite preentitled to the exclusive use of any lawful liminary steps. But I do not think this position trade-mark, or who intend to adopt and use is a sound one. A patent being authorized any trade-mark for exclusive use within the to be granted on evidence on which the commisUnited States, may obtain protection for such sioner of patents is to decide, the fact that he lawful trade-mark' by complying with the fol- grants the patent is held to be primâ facie evilowing requirements.” One of those require- dence that the proper proofs were laid before ments is a the filing" in the patent office “ of him and were satisfactory, he being made by a declaration under the oath of .... some the statute the proper judge of the sufficiency member of the firm, to the effect that the party and competency of the proofs. Phil. f. Trenclaiming protection for the trade-mark has a ton R. R. Co. v. Stimpson, 14 Peters, 448, 458; right to the use of the same, and that no other Seymour v. Osborne, u Wallace, 516, 540. person, firm, or corporation, has the right to But in respect to a trade-mark, the statute such use, either in the identical form or hav- does not authorize the commissioner of patents ing such near resemblance thereto as might to issue any letters patent therefor, or to issue be calculated to deceive, and that the descrip- any certificate containing a grant thereof. tion and fac-similes presented for record are The only certificate he is authorized to issue true copies of the trade-mark sought to be in reference to the original registration of a protected.” On complying with these re- trade-mark is that provided for by section 80, quirements, the trade-mark is to remain in which enacts as follows: “The time of the force for thirty years from the date of the receipt of any trade-mark at the patent office registration.

for registration shall be noted and recorded, The bill avers the filing of such declara- and copies of the trade-mark and of the date tion. The defendants, in their answer, put in of the receipt thereof, and of the statement issue this allegation among others, and re- filed therewith, under the seal of the patent quire proof of the same. No proof is given office, certified by the commissioner, shall be that such declaration was filed. " A certificate evidence in any suit in which such trade-mark is produced, signed by the commissioner of shall be brought in controversy.” A certified patents and under the seal of the patent office, copy of the trade-mark, of the date of its resetting forth that “J. Lee Smith & Co.," of ceipt, and of the statement filed therewith, New York (which is a firm composed of the that is, a copy of everything filed and replaintiffs), did, on the 30th of December, corded, and of the memorandum of the date 1870, deposit in the patent office for registra- of the receipt thereof, - is made evidence. tion "a certain trade-mark for paints, of which But such copy is evidence only that what is a copy is hereto annexed ; that they filed shown by it to have been filed was filed. It therewith the annexed statement, and having is not evidence that anything required by the paid into the treasury of the United States statute to be filed, and not shown by the certhe sum of twenty-five dollars, and otherwise tificate or by the statement annexed to it to complied with the act of Congress in such have been filed, was filed. The certificate of case made and provided, the said trade-mark the commissioner, that the parties “otherwise has been duly registered and recorded in the complied ” with the act, cannot be substituted said patent office, and will remain in force for for the judgment which a court must pass as thirty years from the 21st day of February, to whether there was a declaration filed, and 1871"

one under oath, and one complying, as to its The statement annexed to the certificate contents, with the statute. The court is to does not contain any such declaration as that judge from the "statement” whether the rereferred to. The declaration is required to quirements of recording "the class of merbe “filed." The only thing certified to have chandise and the particular description of been “ filed " is the “ annexed statement.” goods comprised in such class, by which the

It is urged that the certificate that the par- trade-mark has been or is intended to be apties have " otherwise complied with the act of propriated,” has been complied with, and Congress in such case made and provided," whether the requirement of recording a deand that the trade-mark “will remain in force scription of the mode in which the trade-mark for thirty years" from the day named, covers “has been or is intended to be applied and Vol. II.)

PARKINSON v. LASALLE.

(No. 6.

cially on the ground that the bill does not allege the delivery at the office of the Librarian of Congress, or a deposit in the mail addressed to said Librarian, of a copy of the title of the map before its publication, or a delivery to said Librarian, or a deposit in the mail addressed to him, of two copies of said map within ten days from its publication. The copyright is claimed to have been obtained on October 2, 1874. Section 4952 of the Revised Statutes then in force provides that “any citizen of the United States . . . . who shall be the author . . . . of any ...: map...shall, upon complying with the provisions of this chapter, have the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the same.” Section 4956 provides that “ No person shall be entitled to a copyright unless he shall before publication deliver at the office of the Librarian of Congress, or deposit in the mail addressed to the Librarian of Congress, at Washington, District of Columbia, a printed copy of the title of the book or other article . . . . for which he desires a copyright, nor unless he shall also, within ten days from the publication thereof, deliver at the office of the Librarian of Congress, or deposit in the mail addressed to the Librarian of Congress, at Washington, District of Columbia, two copies of such copyright, book, or other article.” ...Section 4959 provides that “ The proprietors of every copyright book or other article shall deliver at the office of the Librarian of Congress, or deposit in the mail addressed to the Librarian of Congress, at Washington, District of Columbia, within ten days after its publication, two complete copies thereof, of the best edition issued.” . . . . Section 4960, that “ For every failure on the part of the proprietor of any copyright to deliver or deposit in the mail either of the published copies, or description or photograph, required by section four thousand nine hundred and fifty-six and four thousand nine hundred and fifty-nine, the proprietor of the copyright shall be liable to a penalty of twenty-five dollars, to be recovered by the Librarian of Congress, in the name of the United States, in an action in the nature of an action of debt, in any district court of the United States within the jurisdiction of which the delinquent may reside or be found.” And section 1962, that “ No person shall maintain an action for the infringement of his copyright, unless he shall give notice thereof by inserting in the several copies of every edition published, on the title page or the page immediately following, if it be a book, . . . . or if a map, .... used” was complied with. So it is equally is to be regarded as intended for the date of for the court to judge whether the requirement registration, and the date previously named in as to the filing of the proper declaration was the certificate is the date of the receipt for complied with. The general certificate of the registration. In this view the certificate incommissioner cannot be taken as evidence on tends to show when the trade-mark will exthe subject.

pire, and the certificate that it has been regThe certificate that the trade-mark has been istered and recorded, and will remain in force duly registered and recorded in the patent for thirty years from the day named, is only office, and will remain in force for thirty years equivalent to saying that such day is to be from the day specified, adds no force to the taken as the date of the registration. The effect of the certificate. The statute says that date given in the certificate as the date of dethe thirty years shall run from the date of the posit for registration is not regarded by the registration ; that the time of the receipt for certificate as the date of registration and reregistration shall be recorded, and that the cording certificate shall cover a copy of the date of the On these grounds alone the motion for an receipt. The date given in the certificate as injunction now made must be denied, without the date from which the thirty years is to run considering any of the other points raised.

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by inscribing upon some portion of the face or front thereof, or on the face of the substance on which the same shall be mounted, the following words : “ Entered according to act of Congress, in the year . . . . by A B, in the office of the Librarian of Congress, at Washington.”

It is settled by the supreme court in Wheaton v. Peters, 8 Pet. 591, that every act required by the Act of Congress of May 3, 1790 (1 Stat. 124), and of April 29, 1802 (2 Stat. 171), relative to copyrights is essential to the title derived under those acts. Unless he performs every act required by these statutes, the author acquires no exclusive right. See also Jollie v. Jaques, 1 Blatch. 618, and also Baker v. Taylor, 2 Ib. 82. The authority of these decisions is not questioned by complainant, but it is insisted that the present statute is different and requires a different construction. On the contrary, it appears to me to be more difficult under the present statute to escape the construction adopted by the supreme court in Wheaton v. Peters, than under the former acts.

Under section 3 of the Act of 1790, there was some ground for claiming that it was only necessary to deposit a printed copy of the title to a book or map, in order to secure a copyright; and that the provisions in the latter part of this section, and in section 4, for publication of a copy of the record, and the delivery of the copy of the work, were merely directory, or at most conditions subsequent. But there is no ground for such claim under the present act. Under section 4952 of the Revised Statutes, an author of a book or map is to have the sole liberty of printing . . . . and vending the same,” only “upon complying with the provisions of this chapter," that is to say, all the provisions, for no exception is made. No one provision is referred to rather than another. As the statute has not limited the acts to be performed to any one provision less than the whole, the courts have no authority to say that any one rather than another, less than the whole is sufficient. Section 4956 in express terms declares that “no person shall be entitled to a copyright unless he shall before publication deliver at the office of the Librarian of Congress, or deposit in the mail addressed to the Librarian of Congress, at Washington, District of Columbia, a printed copy of the title of the book or other article &c.; nor unless he shall also, within ten days from the publication thereof, deliver at the office of the Librarian of Congress, or deposit in the mail addressed to the Librarian of Congress, at Washington, District of Columbia, two copies of such book, or other article," &c. There is no possible room for construction here. The statute says no right shall attach until these acts have been performed ; and the court cannot say, in the face of this express negative provision, that a right shall attach unless they are performed. Until the performance as prescribed, there is no right acquired under the statute that can be violated.

It is claimed by the complainant, that section 4962 prescribes the essentials necessary to authorize the maintenance of the action; and that the court cannot add others. It is upon this section that it is sought to distinguish this case from those arising under former acts, which did not contain the provision. The provision relied on is, that “no person shall maintain an action for the infringement of his copyright unless he shall give notice thereof by inserting in his several copies of every edition published . . . . if it be . . . . a map . . . . by inscribing

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