Royal Sales Co. v. Gaynor

WARD, Circuit Judge. September 14, 1908, an order to show cause why a preliminary injunction should not issue in this case was granted, returnable on the 15th, and on that day the defendant filed a demurrer to the bill, and also • answering affidavits. The demurrer and motion were argued together, and as the question in dispute will cease to be of the slightest importance to either party after election day, November 3d, it is desirable to determine their rights at once. I will not discuss the many questions arising under the demurrer, because the disposition which I feel compelled to make of the motion would be the same, were the bill amended to cover all objections. The bill is filed solely upon the copyright assigned by the defendant Gaynor to the complainant’s assignor. It is for a book entitled which describes a monogram composed of the letters “T A F T,” and explains the many names, words, phrases, and ideas associated with Mr. Taft which are abbreviated in it, of which a list is given; that it also contains the initials of Mr. Roosevelt; the cross, the emblem of Christianity; the mystical number, 7; and the important words, “You” and “I.” Badges of the design of the monogram are sold pinned to the booklet. The defendant Gaynor after this sale copyrighted another booklet, called “Republican Platform Planks,” and is selling pinned with it a badge in the form of the monogram described in the first copyrighted booklet. I am satisfied from the affidavits that Gaynor, who is a registered attorney in the Patent Office, assured the complainant and its assignor that the copyright which he was selling did cover the making and selling of this monogram; that all parties understood the chief, if not the sole, value of the transaction was in the exclusive right to make, use, and sell the monogram in the present presidential campaign; and that Gaynor, in making and selling a similar badge with his' subsequent copyrighted booklet, is acting in bad faith. The complainant contends that Gaynor, as assignor, is estopped from alleging that the copyright which he sold does not cover the monogram and the making of the badges in question, citing Marvel Co. v. Pearl (C. C.) 114 Fed. 946, and Hurwood Manufacturing Co. v. Wood (C. C.) 138 Fed. 835. In those cases the patents expressly covered the subject in dispute, and the court held that the defendant, as assignor, was estopped from saying in the first case that the patent did not, and in the second from -so narrowly construing his own specifications as to destroy or impair what he had sold. But the copyright under consideration is for the book, and not for the monogram, and I think the monogram is not a subject within the [209] copyright law. If it were, any one could get, by means of a copyright, what would be substantially a patent for a design for a longer term and upon payment of less fees than Rev. St. U. S. 4929-4933 (U. S. Comp. St. 1901, pp. 3398, 3399), prescribes in the case of design patents. Therefore the estoppel upon Gaynor depends, if at all, upon general principles of equity, and cannot give the court jurisdiction in this case, in the absence of the requisite citizenship of the parties. It is as if one were to ask the court, in a suit brought upon a patent for a machine, to enjoin because of his assignor’s bad faith in the publication of a book. The complainant’s remedy, if any, must be sought in the courts of the state. The motion is denied.