UNITED STATES v. WANAMAKER.

(Circuit Court of Appeals, Third Circuit. February 12, 1910.)

No. 65 (1,973).

1. CUSTOMS DUTIES (§ 44*)-CLASSIFICATION-ARTIFICIAL SILK HATS-SIMILI•

TUDE.

Artificial silk hats are dutiable under Tariff Act July 24, 1897, c. 11, § 1, Schedule L, par. 390, 30 Stat. 187 (U. S. Comp. St. 1901, p. 1670), by similitude to silk wearing apparel.

[Ed. Note. For other cases, see Customs Duties, Cent. Dig. § 148; Dec. Dig. § 44.*]

2. CUSTOMS DUTIES (§ 82*)—PROTEST-SUFFICIENCY.

A protest referring to "hats made from so-called artificial silk" cannot be construed as relating to hats made from real horsehair.

[Ed. Note. For other cases, see Customs Duties, Cent. Dig. § 198; Dec. Dig. § 82.*]

Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

For decision below, see 169 Fed. 664, reversing a decision by the Board of United States General Appraisers (G. A. 6,606 [T. D. 28,217]), which had affirmed the assessment of duty by the collector of customs at the port of Philadelphia.

D. Frank Lloyd, Deputy Asst. Atty. Gen. (Charles Duane Baker, of counsel), for the United States.

Comstock & Washburn (Albert H. Washburn, of counsel), for the importer.

Before GRAY, BUFFINGTON, and LANNING, Circuit Judges.

BUFFINGTON, Circuit Judge. This is an appeal by the United States from a decision of the court below holding certain importations of hats by John Wanamaker, the appellee, should be classified under Act July 24, 1897, c. 11, § 11, Schedule N, par. 409, 30 Stat. 189 (U. S. Comp. St. 1901, p. 1673). The decision of the case turns, we may say, very largely on the identity of the import, and emphasizes that invaluable maxim:

"Before you begin to apply the law, settle your facts."

Let us, then, first ascertain what the importation was, for on that fact the case rests.

Turning to the record, we find that John Wanamaker on April 6, 1905, filed protest No. 27,836 with the collector at Philadelphia, against

"payment of duty at rate of 60 per cent. ad valorem as assessed by you on 'hats' made from so-called 'artificial silk,' samples herewith."

This protest was received by the collector, numbered 163,330, and indorsed:

"Subject: Hats made from so-called artificial silk."

For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

On June 13, 1905, the appraiser made report to the collector: "That, in the matter of protest No. 27,836, the goods are articles made of artificial silk," and that "the return of the goods for duty as wearing apparel composed of silk, under paragraph 390, by virtue of application of section 7, was correct."

On June 15, 1905, the collector transmitted the protest and submitted the matter by a written report to the Board of Appraisers, with four inclosures. While this report was indorsed by the Board as Nos. 163,330 and 163,331, yet in identifying the contents the report is also indorsed:

"Transmits protest of John Wanamaker, 27,834. test No. 163,213. Artificial silk, par. 390, sec. 7.

Entry and invoice with proNo. of inclosures, 4."

These numbers, viz., 27,834 and 163,213, are not those of the original protest, namely, 27,836 and 163,330. On May 22, 1906, the appraiser reported to the General Appraisers that analysis of

"sample of hat marked A, protest 163,330/1, - .*

consists of horsehair, cotton, paper, and metal, horsehair being the component material of chief value."

On May 28, 1907, the General Appraisers affirmed the collector, holding that "the goods are properly dutiable as assessed, under paragraph 390, by similitude to silk wearing apparel," and saying:

"Considerable testimony was offered by the importer at the hearing on the protest, but as far as the importation in question is concerned the testimony is a sort of academic symposium on the dutiable classification of horsehair hats. It is not connected in any way with the merchandise which is the subject of the protest. On the contrary, there is a glaring discrepancy between, the pleading and the proof, in that the merchandise to which the protest refers is described therein by the importer as hats made of artificial silk, while the testimony, such as it is, contains no proof as to such goods, and the sample in evidence is in fact a hat made of real horsehair. There are many different items of hats on the invoice, but there is nothing in the record to show which of them are covered by the protest, and no attempt was made to identify them with the terms of the protest. Consequently, even if we were of the opinion that on the general question involved the importer's contention is the correct one, we should be unable to make a finding of fact on which we could base a ruling of law."

On appeal, the court below held:

"The merchandise in question is untrimmed hats made of horsehair, and was assessed for duty by the Board of General Appraisers under paragraph 390 by similitude to silk wearing apparel"—

and assessed it under paragraph 490.

We are of opinion that under the protest filed the court below did not have before it the question of the assessment of hats made from real horsehair, for no such protest was made. On the contrary, the question before that court was the one raised before the collector by the protest, namely, whether certain articles made from artificial silk are dutiable under that section, or, by the similitude clause, under paragraph 390, which covers:

"Laces, and articles made wholly or in part of lace, edgings, insertings, galloons, chiffon or other flouncings, nets or nettings and veilings, neck rufflings, ruchings, braids, fringes, trimmings, embroideries and articles embroidered by

hand or machinery, tamboured or appliquéed, clothing ready made, and articles of wearing apparel of every description, including knit goods, made up or manufactured in whole or in part by the tailor, seamstress, or manufacturer; all of the above-named articles made of silk, or of which silk is the component material of chief value, not specially provided for in this act, and silk goods ornamented with beads or spangles, of whatever material composed, sixty per centum ad valorem; provided, that any wearing apparel or other articles provided for in this paragraph (except gloves) when composed in part of india rubber, shall be subject to a duty of sixty per centum ad valorem."

On that question, under the authorities-Mason v. Robertson, 139 U. S. 624, 11 Sup. Ct. 668, 35 L. Ed. 923; Arthur v. Butterfield, 125 U. S. 70, 8 Sup. Ct. 714, 31 L. Ed. 643; Arthur v. Fox, 108 U. S. 125, 2 Sup. Ct. 371, 27 L. Ed. 675-we agree with the General Appraisers in holding that the protested importation made from so-called artificial silk was assessable under paragraph 390 by similitude to silk wearing apparel.

The decree of the Circuit Court is therefore reversed, and the decision of the General Appraisers affirmed.

DAM V. KIRK LA SHELLE CO.

(Circuit Court of Appeals, Second Circuit. January 11, 1910. On Petition for Modification of Order for Mandate, February 16, 1910.)

No. 70.

1. LITERARY PROPERTY (§ 6*)-SALE OF STORY BY AUTHOR WITHOUT RESERVATION-COPYRIGHT BY PURCHASER-DRAMATIC RIGHTS.

A sale by the author of a story to a magazine publishing company and delivery of the manuscript, and the acceptance of a sum of money "in full payment for story" without any further agreement, was in legal effect an absolute sale without reservation, carrying with it as an incident of ownership the exclusive right to dramatize the story when copyrighted under Rev. St. § 4952, as amended in 1891 (U. S. Comp. St. 1901, p. 3406), which provides that "authors or their assigns shall have the exclusive right to dramatize and translate any of their works for which copyright shall have been obtained under the laws of the United States."

[Ed. Note. For other cases, see Literary Property, Dec. Dig. § 6.*] 2. COPYRIGHTS (§ 39*)-EXTENT OF RIGHTS ACQUIRED-COPYRIGHT OF MAGA

ZINE.

The filing of the title of a magazine for copyright by the publisher and the insertion of the proper notice is sufficient to secure a copyright of a story published therein and protect the right to dramatize the same where the publisher is the owner of both the story and the dramatic rights. [Ed. Note. For other cases, see Copyrights, Dec. Dig. § 39.*]

3. COPYRIGHTS (§ 63*)—INFRINGEMENT-DRAMATIZATION OF Copyrighted Story. A playwright who appropriates the theme or plot of another's story, protected by copyright, as the basis of a play, cannot escape a charge of infringement by adding to or slightly varying the incidents, or by adding to the number and changing the names of the characters.

[Ed. Note.-For other cases, see Copyrights, Cent. Dig. § 59; Dec. Dig. § 63.*]

4. COPYRIGHTS (§ 87*)-INFRINGEMENT DAMAGES RECOVERABLE.

The owner of the copyright of a story which has been infringed by another by appropriating the story as the basis of a play is entitled to re*For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

cover as damages all of the profits made by the infringer from the production of such play; there being no other practicable measure of damages.

[Ed. Note.-For other cases, see Copyrights, Cent. Dig. § 81; Dec. Dig. § 87.*]

Ward, Circuit Judge, dissenting.

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

Suit in equity by Dorothy Dorr Dam against the Kirk La Shelle Company. Decree for complainant (166 Fed. 589), and defendant appeals. Affirmed.

This was a suit in equity brought in February, 1906, by Henry J. W. Dam to restrain an alleged infringement of a copyright. The original complainant died in April, 1906, and the suit was subsequently revived in the name of the administratrix of his estate, the present complainant. The Circuit Court held that the defendant had infringed the copyright in question and rendered a decree for an injunction and an accounting. The defendant has appealed. The following are material facts:

During the year 1898 said Dam, who was an author and dramatist, wrote a story entitled "The Transmogrification of Dan." In 1901 Dam sent the manuscript of this story to the Ess Ess, Publishing Company, a New York corporation and the proprietor and publisher of a monthly magazine called the Smart Set. The editors of the magazine accepted the story, and fixed the price to be therefor at $85. The business office of the publishing company then sent a check to Dam for that amount with a receipt for his signature, which was duly signed and returned. The receipt reads as follows: "July 12th, 1901. Received of Ess Ess Publishing Company $85, in full payment for story entitled "The Transmogrification of Dan.' H. J. W. Dam." Dam had no personal interview with any of the officers or employés of the publishing company, and the entire transaction with respect to the acquisition of the story is described in the foregoing statement.

The story was published in the number of the Smart Set for September, 1901. This number as a whole was duly copyrighted in the name of the Ess Ess Publishing Company and bore a notice in the front part thereof, “Copyright 1901 by Ess Ess Publishing Company." The magazine contained no other notice of copyright, and no steps were taken either by the publishing company or by Dam to copyright the story separately. On October 27, 1905, the Ess Ess Publishing Company, without any monetary consideration, assigned to said Dam its copyright of said number of the Smart Set magazine so far as it applied to, covered, or protected said story, all its interest in said story under said copyright, and its claims and demands then existing for the infringement of said copyright.

The defendant is a New York corporation engaged in the general theatrical business. At various times between September 4, 1905, and the commencement of this suit the defendant caused a play entitled "The Heir to the Hoorah" to be publicly performed in various theatres in the United States. This play was written and copyrighted by Paul Armstrong, a dramatist, and was presented by the defendant through an arrangement with him. On November 15, 1905, said Dam, by his attorney, notified the defendant that said play was an unlawful dramatization of said story and forbade its future production. The defendant, however, continued to produce said play and this suit was brought.

In his original bill of complaint, Dam alleged, in substance, that he assigned to the publishing company the right to publish and print said story as a part of said magazine, and not otherwise, and that the right to dramatize said story was held by the publishing company as trustee for his benefit.

In an affidavit made for the purpose of obtaining a preliminary injunction Dam swore as follows: "I have not at any time parted with any right or in

*For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

terest in said literary work entitled "The Transmogrification of Dan' except the right for publication thereof in said number of "The Smart Set' for September, 1901."

The amended bill of complaint alleged simply that Dam sold and assigned said story to the Ess Ess Publishing Company.

Stover, Hall & Freeman (John W. Griggs, Martin L. Stover, and George W. Betts, Jr., of counsel), for appellant.

Andrew Gilhooly, for appellee.

Before COXE, WARD, and NOYES, Circuit Judges.

NOYES, Circuit Judge (after stating the facts as above). The first question of law arising upon the foregoing facts is whether the Ess Ess Publishing Company by virtue of its transaction with Dam became the absolute proprietor of the story in question or acquired merely the right to publish it in the Smart Set magazine. If the statement made by Dam in his original bill and his affidavit could be accepted as correctly defining the rights of the parties, the publishing company acquired only a qualified right to the story. But the entire transaction with respect to the acquisition of the story by the publishing company has been stated. Even if Dam's statements as to his interpretation of the transaction were contrary to his later claims or against his interest, they could not change what actually took place. nor the legal conclusion to be drawn therefrom. This conclusion must be drawn by the court. No principle of estoppel is present.

Now, as a matter of law, it seems possible to draw only one conclusion from the facts surrounding the acquisition of the story by the Ess Ess Publishing Company, and that is that it became the purchaser, and, consequently, the proprietor, of the work with all the rights accompanying ownership. The author offered the story. The publisher accepted and paid for it, and the author transferred it without any reservations whatever.

While it is probable that an author in assigning the right to publish and vend his work may retain and reserve the rights of translation or dramatization (Ford v. Blaney Amusement Co. [C. C.] 148 Fed. 642), a sale or assignment without reservation would seem necessarily to carry all the rights incidental to ownership. And a transaction in which an author delivers his manuscript and accepts a sum of money "in full payment for story" cannot be regarded as a sale with reservations. The courts cannot read words of limitation into a transfer which the parties do not choose to use.

The copyright statute in force at the time of this transaction (Rev. St. § 4952, as amended in 1891 [U. S. Comp. St. 1901, p. 3406]) provided that the "proprietor of any book * * * shall upon complying with the provisions of this chapter have the sole liberty of * * publishing and vending the same." It further

provided that:

"Authors or their assigns shall have the exclusive right to dramatize o/ translate any of their works for which copyright shall have been obtained under the laws of the United States."