23 F.(2d) 159
sample, it did not require the statutory notice. See Werckmeister v. Springer Lith. Co., 63 F. 808 (C. C. N. Y.); Stecher Lith. Co. v. Dunston Lith. Co., 233 F. 601 (D. C. N. Y.).
[21, 22] Under the former law it was provided that no person should maintain a suit for injunction, unless he affixed to the several copies of every edition the statutory notice. Rev. St. § 4962. Even an ineffectual attempt to affix the notice barred suit against an infringer with knowledge of the plaintiff’s claim of copyright. Thompson v. Hubbard, 131 U. S. 123, 149, 9 S. Ct. 710, 33 L. Ed. 76. The act now in force has introduced an amelioration. Section 9 (17 USCA § 9) requires notice to be affixed to each copy. Section 18 gives the form of notice, and section 20 (17 USCA § 20) provides what happens in case of an inadvertent omission of the notice, as follows:
“Where the copyright proprietor has sought to comply with the provisions of this title with respect to notice, the omission by accident or mistake of the prescribed notice from a particular copy or copies shall not invalidate the copyright or prevent recovery for infringement against any person who, after actual notice of the copyright, begins an undertaking to infringe it, but shall prevent the recovery of damages against an innocent infringer who has been misled by the omission of the notice; and in a suit for infringement no permanent injunction shall be had unless the copyright proprietor shall reimburse to the innocent infringer his reasonable outlay innocently incurred if the court, in its discretion, shall so direct.”
Under this section, if the plaintiff “has sought to comply,” he may enjoin an infringer who had actual knowledge, even though copies of the picture have inadvertently been published without the notice. Plaintiff’s averment that each copy has carried the notice justifies a finding that he has sought to comply. Do defendant’s affidavits and exhibits raise sufficient doubt, so that the granting of a preliminary injunction was an abuse of discretion? We think not. Defendant’s affidavits and exhibits are consistent with the view that any copies omitting notice were published inadvertently or without plaintiff’s authority. There is no allegation in answer or affidavit that plaintiff intentionally omitted the notice. None of the exhibits are connected with the plaintiff. Actual notice of the copyright prior to the infringement is brought home to the defendant. Therefore we think the plaintiff made out a prima facie case for the injunction. We cannot say the injunction was improvidently granted. This does not preclude defendant from establishing upon final hearing, if it can, that plaintiff has published copies of the picture without notice of its copyright. Whether the effect of such proof will, under the present act, put upon plaintiff the burden of proving the omission to have been inadvertent, or what the effect of failure to prove the omission inadvertent, we need not now say. See Weil, Copyright Law, 349, 350. No decision under the present law has come to our attention.
The decree is affirmed, with costs.
HAM BOILER CORPORATION v. HUGO et al.
Circuit Court of Appeals, Second Circuit.
December 19, 1927.
No. 63.
328—1,272,883, claim 1, for arrangement of ham boiler parts, held not infringed.Adelmann patent, No. 1,272,883, claim 1, for certain arrangement and combination of parts of ham boiler, held not infringed.
328—1,497,885, claims 1 and 3, for arrangement of ham boiler parts, held not infringed.Adelmann patent, No. 1,497,885, claims 1 and 3, for certain arrangement of parts of ham boiler, held not infringed.
167(1¼)—Where disclosure of specification presents only trivial variation over prior art, patentee should be literally confined to detail he presents.Where disclosure of specification presents nothing but a trivial variation in detail over prior art, patentee should be literally confined to detail which he presents.
168(2¼)—Patentee’s action in withdrawing claim and substituting other words prevents him from contending for interpretation based on language of original claim in infringement suit.Action of patentee of arrangement of ham boiler parts in withdrawing claim, embracing in general “an outwardly projected flange,” and substituting for that element the words “portions of the flange being deflected downward, forming engagement lips,” prevents him from contending in infringement suit for interpretation based on language of original claim.
Appeal from the District Court of the United States for the Southern District of New York.
Action by the Ham Boiler Corporation against Herman Hugo and another. From a decree holding that Adelmann patent, No. 1,272,883, claim 1, and Adelmann patent, No. 1,497,885, claims 1 and 3, were valid and
