complainant corporation with the defendant and with said William P. Skiffington, whereby the complainant corporation acquired all the interest of the defendant and of Skiffington in the inventions relating to said subject. This agreement is made a part of the bill, and sets out that the defendant and said Skiffington, parties of the first part, are the owners of certain inventions relating to steam heating systems and devices for removing the water of condensation from the cylinders of paper drying machines. The agreement enumerates the patents, and sets out further that the said defendant "owns or controls certain other inventions relating to steam heating systems, for which no applications have yet been prepared." The agreement provides in the first clause that Paul and Skiffington agree to assign and transfer to the company "the entire right, title and interest in and to the above-recited inventions, applications and letters patent, including all the inventions in steam heating systems and devices for removing the water of condensation from the cylinders of paper drying machines heretofore made and contemplated by the said Andrew G. Paul." The agreement further provides for the payment in cash and stock, and makes other provisions, which for the purposes of this case it is unnecessary to enumerate. The fourth clause of the agreement is as follows:

"Fourth. The said Andrew G. Paul agrees that if he shall make any further improvement or improvements on the above-mentioned inventions while he is in the employment of the party of the second part or during a period of two years, after the termination of such employment, the party of the second part shall have the option to purchase or own the said improvement or improvements and patent or patents that may be granted therefor, both in the United States and in foreign countries, the said party of the second part to pay in consideration for said improvement or improvements and patent or patents merely the expenses connected with the securing of said United States and foreign patents. It is understood and agreed that the said party of the second part shall elect whether it shall purchase the said improvement or improvements referred to in this clause and the United States and foreign patents for the same before any application for a patent has been filed for said improvement or improvements in the United States or any foreign country; and if prior to the filing of any such application in the United States or any foreign country the party of the second part shall not elect to purchase and own the said improvement or improvements, then the said Andrew G. Paul shall retain title to the said improvement or improvements free and clear of any claim thereto on the part of the party of the second part, and shall have the right to apply for and obtain in his own name and for his own benefit a patent or patents for any such improvement or improvements both in the United States and foreign countries."

It appears further from the bill and from the testimony in the case that prior to May 1, 1903, the defendant made certain improvements on the inventions referred to in the agreement, and particularly improvements described in letters patent Nos.: 604,335, 647,023, and 647,024, and in an application for a patent filed by the defendant May 15, 1900, No. 16,808, and that he now holds for his own use and in his own name the said letters patent and the said application for letters patent.

The bill further alleges that the complainant fears that defendant will transfer the letters patent and the application to a third person, and will cause the complainant irreparable damage, and asks, among other things, for a temporary injunction restraining the defendant

from assigning the patents and the application, and from constructing, using, or selling any of the inventions. It will be seen by an examination of the fourth clause of the agreement, upon which the suit is brought, that the defendant agreed that if he should make any further improvement on the inventions enumerated in the agreement, while he is in the employment of the company, or during a period of two years after the termination of such employment, the company should have the option to purchase said improvement, and the patent or patents that may be granted therefor, the company paying "in consideration for said improvement or improvements and patent or patents merely the expenses connected with the securing of said United States and foreign patents." The testimony shows that the improvements and the application concerning which relief is sought were made during the time set forth in the fourth clause.

The defendant in this suit makes the contention that the claim of the complainant to the patents and the application enumerated cannot be sustained, for two reasons: First, because the inventions claimed in said patents and in said application are not improvements upon the inventions assigned to the complainant company in the contract in suit; and, second, because the complainant company, having full notice of the inventions and of the defendant's intention to file the application, did not elect to own the inventions, as it was bound to do under the terms of the fourth clause of the contract of 1894. Much testimony is offered on the questions of law and fact arising under the first contention, and very able and ample arguments have been submitted on both sides on these questions. The court prefers, however, to address itself first to the consideration of the second contention raised by the defendant, namely, did the complainant company. have full notice of the inventions set forth in said patents and in said application, and did the said company have full notice of the defendant's intention to file said application, and, having such notice of the inventions and of the defendant's intention to file the application, did the complainant company elect to purchase the improvements enumerated in said patents and in said application under the terms of said contract? Under this second contention, for the purposes of the case, we may assume the admission that the inventions were "improvements," within the meaning of the contract.

Upon this motion for a temporary injunction, it is incumbent upon the complainant, before it can be entitled to the relief sought, to show that it did exercise its right of election. The testimony with reference to the first two patents enumerated in the bill is different from the testimony on this point in relation to the last-named patent and to the application No. 16,808. With regard to the last-named patent and the application, the testimony fails to satisfy the court that the complainant, after having full notice, did elect to purchase the improvements to which this patent and this application relate. In reference to the application the testimony on this subject is very ample. The testimony of the defendant and of several directors is distinct that the complainant did have full notice that the patent was to be applied for, but the testimony does not satisfy us that they elected to purchase the improvement named in the application. In this peti

tion for a temporary injunction the court does not consider it necessary or advisable to discuss the testimony in detail. It is sufficient to say that the complainant has not, on this point, met the requirements of the law with reference to showing a clear case for the relief sought. The defendant and his witnesses have clearly shown that the president and certain of the directors of the corporation knew of the fact that an application for a patent was to be made. The point is taken by the complainant that this notice, in order to be conclusive, must have been brought home to the directors of the company in a meeting, and must have been acted upon in a formal way, and must be shown of record. We do not think so. Notice to the acting officers, or to some of them, was sufficient. Corporations act by agents. The whole scope of corporation law is defined on principles of agency. We think that, under the decisions of this court, a notice of this sort, if brought home to some acting officer or agent of the corporation, is sufficient. The testimony upon this point with regard to patent No. 647,024 is of a similar character to that in regard to the application No. 16,808. The court finds that the corporation did not elect to purchase the improvement contained in this patent.

With regard to patents No. 604,335 and No. 647,023 a different state of facts exists. The corporation did elect to own these patents, and did pay for the filing of the applications and for the preliminary work of getting the patents, but failed to pay the final fees. These fees were paid by the defendant, he taking the patents in his own name. While a more difficult question arises in regard to these patents, we think that in regard to them the complainant has not shown a right to the remedy sought upon this motion. The testimony indicates that the complainant corporation acted advisedly in regard to discontinuing their payments, and concluded not to carry out their election, and not to receive and take the patents in their own name. They do not, then, prove a right to the patents under the agreement. When all the testimony is taken, and the cause comes before the court for a final hearing, it may be that the examination and crossexamination of witnesses may present the case in a new light. The practice in the federal courts, and especially in this circuit, is to refuse an injunction pendente lite unless the case shows beyond reasonable question the necessity for such intervention of the court. The practice of this circuit has been, except in clear cases of necessity, to leave a cause untrammeled by injunctions or decretal orders until the final hearing.

The court is of the opinion in the case at bar that it is its duty to deny the temporary injunction restraining the defendant from assigning the patents and the application, and from constructing, using, or selling the described inventions. The motion for temporary injunction is denied.

SAMPSON & MURDOCK CO. v. SEAVER-RADFORD CO.

(Circuit Court, D. Massachusetts. April 22, 1904.)
No. 1,937.

1. PRELIMINARY INJUNCTION-DISCRETION OF COURT-CONSIDERATIONS AFFECTING.

On an application for an injunction pendente lite, the court should consider the effect on both parties of the granting or refusal of the order; and, where it appears that in either case great or irreparable injury will result to one or the other, the court will take the course which seems most conducive to justice to both parties.

2. COPYRIGHT-SUIT FOR INFRINGEMENT-PRELIMINARY INJUNCTION.

On an application for a preliminary injunction to restrain the publication and sale of a city directory alleged to infringe complainant's copyrighted directory, the master to whom the application was referred reported findings that defendant's directory contained infringing matter; that its sale would not interfere to any great extent with the sale of the copyrighted work, which was published some time previously, but that it would result in large loss to complainant in its general business as publisher of an annual directory, the amount of which could not be well determined; also that defendant's directory was printed and bound and ready for sale; that it was different in size and appearance from complainants, and not likely to be mistaken therefor; that defendant had expended a large sum in its preparation, and had a large amount due for advertising matter therein, which was not collectible until the books had been published and sold; and that its sale would be, to a great extent, lost, if de layed for any considerable time. Held, that a preliminary injunction would be refused on condition that defendant should give a bond to secure the payment of damages that might be recovered, and should keep an account of its sales.

In Equity. Suit for infringement of copyright. On motion for preliminary injunction.

This is a suit in equity by Sampson & Murdock Company, a corporation organized under the general laws of the state of Rhode Island, a citizen of that state, against Seaver-Radford Company, a corporation organized under the general laws of the commonwealth of Massachusetts, and a citizen of that commonwealth, having its usual place of business at Boston. The complainant is publisher of "The Boston Directory," which contains a city record, a directory of the citizens' business directory, a street directory, and a map for the year commencing July 1, 1903, upon which it has obtained a copyright, as is alleged in the bill. The defendant corporation has prepared and printed, and, without the consent of the complainant, is about to publish and sell, or offer for sale, a book entitled "The 1904 City Directory of Boston." The bill alleges that this book of defendant, the 1904 City Directory of Boston, is an infringement upon the complainant's publication, the Boston Directory; that the defendant's book is a copy, in whole or in part, of the compiled and copyrighted work of the complainant; that the copying and threatening to publish and sell defendant's book is in violation of complainant's rights in its copyrighted work. The cause is now heard upon the complainant's application for an interlocutory injunction. Upon this application the cause was referred by the court to Frederic Dodge, Esq., as master, who has presented a very complete report. Upon this report the action of the court is based. The allegations of the bill in equity referred to in said report are as follows: "(1) That on or before the 29th day of June, 1903, and prior to the date of the publication thereof in this or any foreign country, the firm of Sampson, Murdock & Co., of Boston, the predecessors in business of your orator, de

2. See Copyrights, vol. 11, Cent. Dig. § 78.

posited in the mails within the United States, addressed to the librariaň of Congress, at Washington, District of Columbia, a printed copy of the title of a certain book, entitled "The Boston Directory,' containing the city record, a directory of the citizens' business directory and street directory, with map No. XCIX, for the year commencing July 1, 1903, in order to copyright the same, and claimed said copyright as authors and proprietors, and that they deposited in like manner the sum of fifty cents for copyright fees, and that thereupon, on the 11th day of July, 1903, and also before the date of publication in this or any foreign country, deposited in the mails within the United States, addressed to the librarian of Congress, at Washington, District of Columbia, two printed copies of such copyright directory, and that the said title so deposited was duly recorded by the librarian of Congress upon the said 29th day of June, 1903, whereby they became entitled to the copyright upon said book under the laws of the United States.

"(2) That on the 1st day of October, 1903, the said firm of Sampson, Murdock & Co., for a valuable consideration, and by an instrument in writing, a copy of which is hereto annexed, conveyed the said copyright to the complainant herein, and that the complainant by the said conveyance became and has ever since been and now is the sole owner of said copyright, and of the exclusive rights thereby conferred under the laws of the United States.

"(3) That the two copies of the said book deposited as above set forth were printed from type set within the limits of the United States, or from plates made therefrom.

"(4) That the said Sampson, Murdock & Co. and the complainant, as their assignee and successor in the business, have given notice of the said copyright by inserting in the several copies of every edition published on the title page thereof the copyright notice required by law, in the following words, to wit: 'Copyright 1903, by Sampson, Murdock & Co.'

"(5) That the defendant corporation, after the recording of the title of the said book, and the depositing of two copies thereof as provided by the laws of the United States, and within the term of copyright limited, and without the consent of the proprietors of the said copyright, in writing or otherwise, has printed, and is about to publish and sell, or expose for sale, many copies of a certain book entitled "The 1904 City Directory of Boston,' each of which said copies is in whole or in part a copy of the directory compiled and copyrighted by the said Sampson, Murdock & Co.

(6) That such copying and threatening to publish and sell the same is in violation of the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the book duly copyrighted to the said Sampson, Murdock & Co., the copyright of which has been assigned by them, and is now held by your orator as aforesaid."

The master's report is as follows:

"The report of proceedings before me filed in court on March 7, 1904, is referred to as part of this report. The ruling and order made by me March 3, 1904, as in said report of proceedings appears, having been sustained by the court on March 7, 1904, the hearing before me under the order of court entered March 3, 1904, was continued on March 9, 1904, and on subsequent days thereafter by adjournment. The defendant produced before me the original copy for its proposed directory, according to my said order. It also produced a bound copy of its said proposed directory. Both were submitted to the examination of the complainant. Having now fully heard the parties and their evidence and the arguments of their counsel, according to the order of court of March 3, 1904, I hereby report thereon as below.

"My findings of fact are as follows:

"(1) The allegations of articles 1-4, inclusive, of the complainant's bill, regarding the issuance to it of the copyright upon the book there referred to, the validity of that copyright, and the complainant's title thereto, are established. The evidence in support of them was not contradicted before me by the defendant. A copy of the complainant's copyrighted directory was in evidence before me, and is to be referred to in connection herewith.

"(2) The defendant corporation, organized for that purpose in August, 1903, under the laws of Massachusetts, has prepared and printed, and, without the consent of the complainant, is about to publish and sell, or offer for sale, a