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Full text of "United States Court of Appeals For the Ninth Circuit"

Form No. 7 



San Francisco 

Law Library 

Presented by 



EXTRACT FROM BY-LAWS 

Section 9. No book shall, at any time, be taken from the 
Library Room to any other place than to some court room of a 
Court of Record, State or Federal, in the City of San Francisco, 
or to the Chambers of a Judge of such Court of Record, and 
then only upon the accountable receipt of some person entitled 
to the use of the Library. Every such book so taken from the 
Library, shall be returned on the same day, and in default of 
such return the party taking the same shall be suspended from 
all use and privileges of the Library until the return of the book 
or full compensation is made therefor to the satisfaction of the 
Trustees. 

Sec. n. No books shall have the leaves folded down, or be 
marked, dog-eared, or otherwise soiled, defaced or injured. Any 
party violating this provision, shall be liable to pay a sum not 
exceeding the value of the book, or to replace the volume by a 
new one, at the discretion of the Trustees or Executive Commit- 
tee, and shall be liable to be suspended from all use of the 
Library till any order of the Trustees or Executive Committee 
in the premises shall be fully complied with to the satisfaction 
of such Trustees or Executive Committee. 



;l LCOX & CO. 



No. 3614 




(Hxrtnxt OInurt of App^ate 






T. S. VINCENT, A. RAMSTED, J. M. JOHANSEN, 
A. B. EKLOV, K. J. LINDSTROM, A". KUKUS- 
KIN, G. REIN, PHILIP NORRISON, A. H. RAY- 
MILLER, L. DEPPMAN, W. B. RICHARDS, C. W. 
INGEBRETSEN, W. CLAY, A. KRISHLAUK, J. 
BIGGINS, E. y. lOVJASLAMPI, ANTONIO 
MULET, J. ANDERSEN, JAMES W. OREE and 
GEORGE WILLIAMS, 

Appellants and Cross-Appellees, 

vs. 

THE UNITED STATES OE AMERICA, and PACIFIC 
MAIL STEAMSHIP COMPANY, a Corporation, 
Appellees and Cross-Appellants. 



ApHHtbH on KpptuL 

Upon Appeal from the Southern Division of the 

United States District Court for the 

Northern District of California, 

First Division. P I i P Fl 

JAM 2 / 1921 
F, D. MONCKTON, 



Filmer Bros Co. Print, 330 .Tnckson St.. S. F., Cnl. 



No. 3614 

(Hixmxt (Emxt of ^pptnln 



T. S. VINCENT, A. RAMSTED, J. M. JOHANSEN, 
A. B. EKLOV, K. J. LINDSTROM, V. KUKUS- 
KIN, G. REIN, PHILIP NORRISON, A. H, RAY- 
MILLER, L. DEPPMAN, W. B. RICHARDS, C. W. 
INGEBRETSEN, W. CLAY, A. KRISHLAUK, J. 
BIGGINS, E. V. KAJASLAMPI, ANTONIO 
MULET, J. ANDERSEN, JAMES W. OREE and 
GEORGE WILLIAMS, 

Appellants and Cross-Appellees, 

vs. 

THE UNITED STATES OF AMERICA, and PACIFIC 
MAIL STEAMSHIP COMPANY, a Corporation, 
Appellees and Cross-Appellants. 



Ap00tb0 an KppmL 

Upon Appeal from the Southern Division of the 

United States District Court for the 

Northern District of California, 

First Division. 



Filmer Bros. Co. Print, 330 Jncksoii St , S K., Cal. 



Digitized by tine Internet Arciiive 

in 2010 witii funding from 

Public. Resource. Org and Law.Gov 



http://www.archive.org/details/govuscourtsca9briefs1282 



INDEX TO THE PRINTED TRANSCRIPT OF 

RECORD. 



[Clerk's Note: When deemed likely to be of an important nature, 
errors or doubtful matters appearing in the original certified record are 
printed literally in italic; and, likewise, cancelled matter appearing In 
the original certified record is printed and cancelled herein accord- 
ingly. When possible, an omission from the text is indicated by 
printing in italic the two words between which the omission seems to 
occur.] 

Page 

Answer to Libel 10 

Answers to Interrogatories Propounded to De- 
fendants 15 

Assignment of Errors (Respondents ) 60 

Assignments of Error (Libelants) 57 

Certificate of Clerk U. S. District Court to 

Apostles on Appeal 68 

Decree 58 

DEPOSITIONS ON BEHALF OF LIBEL- 
ANTS: 

RAMSTAD, ANDREW G 28 

Cross-examination 83 

Redirect Examination 45 

EXHIBITS: 

Libelants' Exhibit No. 1 — Letter Dated 
May 3, 1920, Pacific Mail Steamship 

Company to H. W. Hutton 65 

Libelants' Exhibit No. 2 — Letter Dated 
March 24, 1920, from Acting American 

Consul at Manila 66 

Interrogatories Propounded to Defendants to 

be Answered Under Oath 10 



ii T, S. Vincent et al. vs. 

Index. Page 

Judgment 53 

Libel 3 

Memorandum Opinion and Order to Enter a 

Decree in Accordance With Opinion 48 

Minutes of Hearing of Issues and Order Sub- 
mitting Cause 17 

Notice of Appeal by Libelants 56 

Notice of Appeal by Respondents 58 

Stipulation and Order Re Consolidation of Ap- 
peals 62 

Stipulation as to Certain Facts 61 

Stipulation as to Parts of Record to be Printed 1 
Supplemental Memorandum Re Form of Final 

Decree 51 

Transcript of Proceedings in Court 18 



In the United States Circuit Court of Appeals for the 
Ninth Circuit. 

T. S. VINCENT et al., 

Libelants, Appellants and Appellees, 
vs. 

UNITED STATES OF AMERICA and PACIFIC 
MAIL STEAMSHIP COMPANY, 
Defendants, Appellants and Appellees. 

Stipulation as to Parts of Record to be Printed. 

It is hereby stipulated that the following parts of 
the record shall be printed for the consideration of 
the above court on the appeals : 

1. The libel and interrogatories. 

2. The answer and answers to interrogatories. 

3. The deposition of Ramstad. 

4. The transcript of proceedings in lower court. 

5. The stipulation as to a certain fact. 

6. The minutes of hearing of issues and order sub- 
mitting cause in lower court. 

7. The memorandums of opinion (two). 

8. The decree. 

9. The notices of appeal (two). 

10. The assignments of error (two). 

11. The certificate to the apostles on appeal. 

12. Print Libelant's Exhibits Nos. 1 and 2. 

13. Print the full title and caption in the first 
paper printed; omit in all others and insert (Title of 
Court and Cause). 

14. Where verifications appear omit, and insert 
(Duly Verified). 



2 T. S. Vincent et al. vs. 

15. The Stipulation and order consolidating ap- 
peals. 

Dated January 17, 1921. 

H. W. BUTTON, 
Proctor for Libellants, and Appellants, and 
Appellees T. S. Vincent et al. 

FRANK M. SILVA, 
U. S. Atty., 
E. M. LEONARD, 
Asst. U. S. Atty. 
Proctors for United States of America. 
GHAS. J. HEGOERTY, 
Proctor for Pacific Mail Steamship Gompany, 
Defendant, Appellee and — 

[Endorsed] : No. 3614. In the Southern Division 
of the District Gourt of the United States for the 
Northern District of Galifornia, First Division. In 
Admiralty. T. S. Vincent et al., Libellants, etc., vs. 
United States of America et al. Stipulation as to 
Parts of Record to be Printed. Filed Jan. 17, 1921. 
F. D. Monckton, Glerk. By Paul P. O'Brien, Dep- 
uty Glerk. 



The United States of America et al. 3 

In the Southern Division of the District Court of the 
United States, Northern District of California, 
First Division. 

IN ADMIRALTY— (No. 16,845). 

T. S. VINCENT, A. RAMSTED, J. M. JOHAN- 
SEN, A. B. EKLOV, K. J. LINDSTROM, V. 
KUKUSKIN, G. REIN, PHILIP NORRI- 
SON, A. H. RAYMILLER, L. DEPPMAN, 
W. B. RICHARDS, C. W. INGEBRETSEN, 
W. CLAY, A. KRISHLAUK, J. BIGGINS, 
E. V. KAJASLAMPI, ANTONIO MULET, 
J. ANDERSEN, JAMES W. OREE and 
GEORGE WILLIAMS, 

Libelants, 
vs. 

THE UNITED STATES OF AMERICA and PA- 
CIFIC MAIL STEAMSHIP COMPANY, 

Defendants. 

(Libel.) 
To the Honorable M. T. DOOLING, Judge of the 
Above-entitled Court. 
The libel of the libelants in the caption hereof 
named, seamen, against The United States of Amer- 
ica, a nation and owner of capital stock and against 
Pacific Mail Steamship Company, agent and ship 
owner and operator, in a cause of wages, civil and 
maritime alleges as follows : 

I. 

That United States Shipping Board, and Emer- 



4 T. S. Vincent et at. vs. 

gency Fleet Corporation, are both corporations or- 
ganized and existing under and by virtue of Acts of 
the Congress of the United States, and are both capi- 
tal stock corporations, and on all of said dates and 
times the United States of America owned all of the 
capital stock of each of said corporations, and now 
owns the same. 

11. 

That Pacific Mail Steamship Company, on all of 
said dates and times, was and now is a corporation, 
organized and existing under and by virtue of the 
laws of the State of New Jersey, and on all of said 
dates and times it had and now has a general agent 
in the city and [5*] County of San Francisco, 
State of California, and a general Office therein 
located. 

III. 

That on all of the dates and times herein men- 
tioned, the steam vessel "Jacox" was and now is an 
American vessel and engaged in the Merchant service 
of the United States of America, and was owned by 
one of the corporations named in paragraph I hereof, 
and jointly operated by the said corporation so o\\ti- 
ing the same and defendant Pacific Mail Steamship 
Company, that which of said corporation named in 
paragraph I owned and so jointly operated said ves- 
sel neither of the libelants know. 

IV. 

That heretofore and on the 13th day of December, 
1919, libelants were hired and employed by the said 



*Page-number appearing at foot of page of original certified Apostles 
on Appeal. 



The United States of America et al. 5 

corporations so operating said vessel, at the port of 
San Francisco, State of California, to serve as sea- 
men on said vessel ''Jacox," on a voyage from said 
San Francisco described in Shipping Articles signed 
by the master of said vessel and each of libelants be- 
fore the United States Shipping Commissioner at 
said Port of San Francisco, as follows: ''From the 
Port of San Francisco, California to Manila P. I. 
for final discharge, for a term of time not exceeding 
six (6) calendar months." That said Shipping 

Articles were upon a printed blank, and and the 
above underscored portios of the description of 
said voyage was w-ritten in, and the remaining por- 
tion thereof was upon the said shipping articles as 
printed by the printer who printed said blanks. 

V. 
That attached to said shipping articles and form- 
ing a part thereof was the following : 

"Officers, including steward and radio oper- 
ator, shall receive first-class transportation, and 
w^ages, remainder of crew second-class transpor- 
tation, and w^ages, to San Francisco, upon [6] 
termination of the voyage." 

VI. 
That libelants so shipped in the following capa- 
cities, and at the following rates of wages : 

Philip Morrison as boatswain, at the wages of 
$95 . 00 per month. 

Libelants A. Ramsted, J. M. Johansen, A. B. Ek- 
lov, E. J. Lindstrom, C. W. Ingebretsen and E. V. 
Kagaslampi as able seamen, at the w^ages of $90.00 
per month. 



6 T. S. Vincent et al, vs. 

Libelants A. Krishlauk, L. Deppman and Antonio 
Mulet as firemen, at the wages of $90.00 per month. 

Libelants V. Kukuskin, J. Biggins and G. Rein as 
oilers, at the wages of $90.00 per month. 

Libelants W. Clay and J. Andersen as wipers, at 
the wages of $90.00 per month, and T. S. Vincent as 
messman, at the wages of $80.00 monthly. 

Libelants A. H. Rajrmiller and W. B. Richards as 
ordinary seamen, at the Wages of $65.00 per month, 
and George Williams as cook, at the wages of $110.00 
per month, and James W. Oree as second cook, at 
the wages of $90.00 per month. 

VII. 

That each of the libelants went on board and into 
the service of said vessel in the capacities aforesaid 
on said 13th day of December, 1919, and in due course 
said vessel proceeded to sea with each so on board, 
and first went to Honolulu, Hawaiian Islands, and 
from there to Sydney and from there to Newcastle, 
Australia, all in violation of said Shipping Articles, 
and from said Newcastle to said Manila, where she 
arrived on the 28th day of February, 1920, and on 
the 29th day of said February, their term of service 
having expired, libelants each left said vessel and de- 
manded each of their w^ages up to that time; that 
said vessel was then in a position of safety, but the 
master thereof refused to pay said wages, and the 
operators also refused to pay the same, but thereafter 
and on the 3d day of March, 1920, they paid each of 
the libelants sums which with what had theretofore 
been paid equalled one-half of what each had earned 
up to the 29th day [7] of February, 1920, and 



The United States of America et al. 7 

thereupon demanded of each of the libelants that he 
proceed in said vessel in said capacities from said 
Manila to Hongkong, in China, which each refused 
to do, and no other or further sum was paid to any 
of said libelants at said Manila, or at all, until the 
26th day of April, 1920, at San Francisco, California, 
where libelants proceeded in the manner hereinafter 
shown. That the said operators of said vessel hired 
and employed other men to take libelants' places on 
said vessel on the 4th day of March, 1920, and with 
such other men said vessel left Manila for Hongkong 
on the 6th day of March, 1920. 

XI. 
That the master and said operators of said vessel 
refused to furnish transportation for any of the 
libelants from said Manila to said San Francisco, the 
cost of which was $244.00 for each of said libelants, 
and libelants were sent from said Manila to said San 
Francisco by the customs authorities at said Manila 
to said San Francisco, as destitute seamen upon the 
United States Army Transport "Thomas," but each 
was compelled to work as a seaman on such passage, 
they so arriving in said San Francisco on the 21st 
day of April, 1920, and by agreement the said oper- 
ators of said vessel were to pay libelants $2.75 per 
day each for board and lodging at Manila, where 
libelants were 23 days prior to starting for said San 
Francisco, but the operators of said vessel refused 
to pay any of said sum, and on the voyage of said 
vessel from said Newcastle to Manila, no potatoes 
were furnished to any of the libelants for 12 days be- 
cause there was none on board of said vessel and no 



8 T. S. Vincent et al. vs. 

sift bread was furnished for ten days and no substi- 
tutes were given therefor. 

X. 

That at said Manila libelants were each compelled 
to purchase their own food and pay for a place of 
abode for a further period of three days, to wit, on 
the 29th day of February, and the 1st and 2d days 
of March, 1920, which [8] at the time of said 
hiring it was agreed should be paid for in the event 
of the same not being furnished on said vessel at the 
rate of $2.75 per day for each libelant, none of which 
has been paid, and that during said voyage libelant 
George Williams worked 29 hours' overtime on said 
vessel by order of her steward, his superior officer 
thereon, for which the operators of said vessel agreed 
to pay at the rate of sixty cents per hour, but none 
has been paid, and at said Manila the master and said 
operators of said vessel refused to either discharge 
or pay any of the libelants except as aforesaid. 

XI. 

By reason of the premises, libelants each claim to 
be entitled to have and receive of defendants herein 
wages for two days at the rates aforesaid for each of 
the days from the 4th day of March to the 26th day 
of April, 1920, to wit, 52 days at double pay for fail- 
ure to pay them their wages on said 4th day of March, 
1920, and also the sum of $244.00 each for failure to 
furnish transportation as aforesaid, and the further 
sum of $71.50 each for food and lodging as aforesaid, 
and one dollar per day each for each of the days they 
were short of potatoes and bread as aforesaid, and 
libelant George Wallace claims the additional amount 
aforesaid for overtime worked, to wit, $17.40, none 



The United States of America et al. 9 

of which sums having been paid. 

XII. 

That all and singular the premises are true and 
within the admiralty and maritime jurisdiction of 
the United States and of this Honorable Court. 

WHEREFORE libelants pray that process in due 
form of law according to the course of this Honor- 
able Court in cases of admiralty and maritime juris- 
diction may issue against defendant Pacific Mail 
Steamship Company, and that it may therein be cited 
to appear and answer under oath all and singular the 
premises aforesaid, and that the defendants herein 
may each be required to so answer the premises [9] 
aforesaid, and that this Honorable Court may be 
pleased to decree the payment of the amounts afore- 
said with costs and interest, and that each of the 
libelants may have such other and further relief as the 
court is competent to give in the premises. 
JAMES W. OREE. T. S. VINCENT. 

A. H. RAYMILLER. A. RAMSTED. 

G. REIN. C. W. INGREBRETSEN. 

V. KUKUSKIN. W. CLAY. 

J. ANDRESEN. PHILLIP MORRISON. 

B. EKLOV. K. J. LINDSTROM. 
J. M. JOHANSEN. E. V. KAJASLAMPI. 
A. KRISHLAUK. GEORGE WILLIAMS. 
J. BIGGINS. W. B. RICHARDS and 
A. MULET. L. DEPPMAN. 

By H. W. HUTTON, 
Their Proctor. 
H. W. HUTTON, 

Proctor for Libelants. 
[Duly verified.] [10] 



10 T. S. Vincent et al. vs. 

Interrogatories Propounded to Defendants to be 
Answered Under Oath. 

1. Why were libelants not paid their wages in 
Manila ? 

2. Did not the " Jacox" carry a cargo of coal from 
Newcastle, New South Wales, to Manila, consigned 
to Macondry and Company at Manila? 

3. On what day did a crew go on board of the 
" Jacox" at Manila to supersede libelants? 

4. Why was not transportation furnished libelants 
from Manila to San Francisco ? 

H. W. HUTTON, 
Proctor for Libelants. 

[Endorsed] : Filed Apr. 30, 1920. W. B. Maling, 
Clerk. By C. W. Calbreath, Deputy Clerk. [11] 



[Title of Court and Cause.] 

Answer to Libel. 
To the Honorable M. T. DOOLING, Judge of the 
United States District Court in and for the 
Southern Division of the Northern District of 
California, First Division, in Admiralty: 
The United States of America, owner of the 
steamship "Jacox," in answer to the libel of T. S. 
Vincent et al. on file in the above-entitled proceed- 
ings, represented herein by Annette Abbott Adams, 
United States Attorney for the Northern District 
of California, comes now by and through E. M. 
Leonard, Assistant United States Attorney, who 
states that he has information and belief regarding 
said libel, and upon such information and belief, 



The United States of America et al. 11 

and making answer thereto, denies and alleges as 
follows: [12] 

I. 

Answering Article I: Alleges that the United 
States of America is and was the owner of said SS. 
" Jacox" on all of the times mentioned in said libel 
said SS. "Jacox" was being operated and man- 
aged by the Pacific Mail Steamship Company as 
agent at all of said times. 

II. 

Answering Article II of said Libel: Denies that 
the Pacific Mail Steamship Company is a corpora- 
tion organized and existing mider and by virtue of 
the laws of New Jersey. 

III. 

Answering Article III: Denies that on all of the 
dates and times in the said libel mentioned that the 
said SS. "Jacox" was owned and jointly operated 
by the United States of America or any corpora- 
tion organized under and by virtue of acts of Con- 
gress of the United States of America, and defend- 
ant Pacific Mail Steamship Company, and alleges 
that said vessel at all of said times was owned by 
the United States of America and operated by Pa- 
cific Mail Steamship Company as agent. 

ly. 

Answering Article IV: Alleges that notwith- 
standing the contents of shipping articles of said 
SS. "Jacox" as set forth in said libel, it was con- 
templated by all parties concerned, including libel- 
ants herein, that the voyage of said vessel was for 
a period not to exceed six months, and included the 



12 T. S. Vincent et al. vs. 

ports of Sidney, Australia, Hongkong, China; and 
that the crew of said vessel were to be finally dis- 
charged at Manila, Philippine Islands. 

y. 

Answering Article V: Alleges that the provision 
of said shipping articles referred to in said article 
of said libel contemplated a return of said crew 
from Manila, P. Is., [13] to San Francisco after 
final discharge and after voyage to Hongkong had 
been completed. 

VII. 

Answering Article VII: Denies that said vessel 
first went to Honolulu, Hawaiian Islands, and from 
there to Sidney and from there to Newcastle, Aus- 
tralia, or in any manner in violation of said ship- 
ping articles, or that the voyage of said vessel from 
said Newcastle to said Manila was in an}^ manner 
in violation of said shipping articles; denies that 
the term of service of said libelants had expired on 
the 29th day of February, or that said term of ser- 
vice did expire or it would or did expire until 
June 13, 1920. 

VIII. 

Answering Article IX: Alleges that if said voy- 
age had been completed as contemplated by all par- 
ties concerned, the master and operators of said 
vessel would have furnished transportation for said 
libelants in acordance with said shipping articles, 
and denies that the cost for transportation for 
said libelants from Manila to San Francisco was 
$244 for each of said libelants. As to whether or not 
each of said libelants as a destitute seaman aboard 



The United States of America et al. 13 

the United States Army Transport ''Thomas" was 
compelled to work as a seaman on such passage 
from Manila, Philippine Islands, to San Fran- 
cisco, this affiant has not sufficient information, 
either to affirm or deny, and basing his denial upon 
said ground, denies said allegations and demands 
that full proof thereof be made; denies that by 
agreement said operators of said vessel agreed to 
pay libelants for board amounting to 23 days prior 
to starting for San Francisco from Manila; denies 
that on the voyage of said vessel from Newcastle to 
Manila no potatoes were furnished to any of said 
libelants for 12 days or for any time except when 
substitute therefor was provided as by law re- 
quired; [14] denies that no sift bread was fur- 
nished for 10 days or for any time except when 
substitute thereof was provided as by law required. 

X. 

Answering Article X: As to whether or not at 
Manila libelants were each compelled to purchase 
their own food and/or pay for a place of abode for 
a further period of three days, to wit, on the 29th 
day of February, and/or the first and/or second 
days of March, 1920, as to whether or not libelant 
George Williams worked 29 hours' overtime on said 
vessel by order of her steward, this affiant has not 
sufficient information or belief whether to affirm or 
deny, and basing his denial upon that ground, de- 
nies each and all of said allegations, demands full 
proof thereof. 

XI. 

Answering Article XI: Denies that by reason of 



14 T. S. Vincent et al. vs. 

the premises in said libel set forth or at all that 
libelants or any of them are entitled to have and/ 
or receive of defendants wages for two days for 
each of the days from the 4th day of March to the 
26th day of April, 1920, to wit, 52 days at double 
pay for failure to pay their wages on the 4th day 
of March, 1920, and denies that they are entitled to 
any double pay whatsoever for failure to pay their 
wages; denies that each or any of said libelants is 
entitled to $244 or any sum for failure to furnish 
transportation or otherwise; denies that each or 
any of said libelants is entitled to $71.50 or any 
other sum, for food and/or lodging, and denies that 
each or any of said libelants is entitled to one dol- 
lar per day or any days for being short of potatoes 
or bread, and denies that libelant George Williams 
is entitled to $17.40 or any other sum for overtime 
work while in the employ of this defendant. [15] 

XII. 
As separate answer and defense to said libel on 
file herein, alleges that all of said libelants did on 
the 21st day of April, 1920, before the United 
States Shipping Commissioner at San Francisco, 
California, each for himself, by his own signature, 
release the owner of said vessel from all claims 
whatsoever by signing a mutual release in words 
and figures as follows, to wit: 

MUTUAL RELEASE. 
Form 713. Dept. of Commerce, 

Bureau of Navigation. 
Shipping Service. 
We, the undersigned, seamen on board the SS. 



The United States of America et al. 15 

''Jacox" on her late voyage from San Francisco 

to , do hereby, each one for himself, by our 

signatures herewith given, in consideration of set- 
tlements made before the Shipping Commissioner 
at this port, release the master and owners of said 
vessel from all claims for wages in respect of the 
said past voyage or engagement, and I, master of 
said vessel, do also release each of the seamen sign- 
ing said release from all claims, in consideration of 
this release signed by them. 
Dated April 21, 1920. 

PACIFIC MAIL S. S. CO. 
By W. E. STANTON, 

Master. - 

Attest as to said master and the , whose 

signatures appear beloAv. 

(Signed) S. W. TIBBS, 
Deputy Shipping Commissioner. 
— and further alleges that at the time of signing 
said Mutual Release each of said libelants were 
paid full compensation for services rendered by 
him up to and including the date of said signing. 

Answers to Interrogatories Propounded to 

Defendants. 
Answer to Interrogatory 1 : Libelants were not 
paid their wages in Manila for the reason that they 
had been declared deserters by the United States 
Shipping Commissioner at Manila. 

2. 
Answer to Interrogatory 2: The "Jacox" did 
<^arry cargo of coal from Newcastle, New South 



16 T. S. Vincent et al. vs. 

Wales, to Manila, consigned [16] to Macondray 
and Company at Manila. 

3. 
Answer to Interrogatory 3: As to interrogatory 
three, affiant has not at this time sufficient infor- 
mation to enable him to answer. 

4. 
Answer to Interrogatory 4: Transportation was 
not furnished libelants from Manila to San Fran- 
cisco, for the reason that libelants had been de- 
clared deserters by the United States Shipping 
Commissioner at Manila and therefore not en- 
titled to such trasportation. 

WHEREFORE this defendant prays that said 
libelant take nothing by the above-entitled cause, 
that said libel be dismissed, and that this defend- 
ant recover his costs and charges herein incurred, 
with such other relief as may be just. 

ANNETTE ABBOTT ADAMS, 

United States Attorney. 
E. M. LEONARD, 
Asst. United States Attorney. [17] 
[Duly verified.] 

[Endorsed] : Filed Jun. 21, 1920. W. B. Maling, 
Clerk. By C. W. Calbreath, Deputy Clerk. [18] 



The United States of America et al. 17 

At a stated term of the District Court of the 
United States, for the Northern District of 
California, First Division, held at the court- 
room thereof, in the City and County of San 
Francisco, State of California, on Monday, the 
ninth day of August, in the year of our Lord 
one thousand nine hundred and twenty. Pres- 
ent: The Honorable FRANK H. RUDKIN, 
Judge. 

No. 16,845. 

T. S. VINCENT et al. 

vs. 

UNITED STATES OF AMERICA. 

(Minutes of Hearing of Issues and Order Submitting 

Cause.) 
This cause came on regularly this day for hearing 
of the issues joined herein. H. W. Hutton, Esq., 
was present as proctor for libelant. E. M. Leonard, 
Esq., Asst. U. S. Atty., was present on behalf of the 
United States. Charles J. Heggerty, Esq., w^as 
present as proctor for Pacific Mail S. S. Co. Mr. 
Hutton introduced and filed deposition of Andrew 
G. Ramstad, and certain letters, which letters were 
marked Libelant's Exhibits 1 and 2, and thereupon 
rested cause on behalf of libelant. Mr. Leonard in- 
troduced in evidence and filed list of Commissary 
stores re S. S. Macox," which was marked Re- 
spondent's Exhibit "A," and thereupon rested cause 
on behalf of respondent and claimant. The cause 



18 T. S. Vincent et al. vs. 

was then argued by the respective proctors and or- 
dered submitted. [20] 



[Title of Court and Cause.] 

(Transcript of Proceedings in Court.) 

Friday, August 6, 1920. 
Counsel Appearing: 

For the Libelants: H. W. HUTTON, Esq. 

For the Respondents: E. M. LEONARD, Esq., 

Asst. U. S. Atty., CHARLES J. HEGGERTY, 

Esq. 
Mr. HUTTON. — This is an action brought by 
twenty seamen who shipped on the "Jacox" in San 
Francisco, on December 13th, last, for a voyage 
from San Francisco to Manila for final discharge. 
The vessel, instead of going to Manila, went to 
Honolulu, and then to Sydney, and then from Syd- 
ney to Newcastle and took a load of coal; from 
Newcastle she went to Brisbane, and from Bris- 
bane to two other ports in succession, and finally 
reached Manila on the 28th of February of this 
year. The shipping articles contain a provision 
that at Manila the men were to receive their wages, 
and they were to receive a second-class [21] 
passage home. Upon arrival at Manila, the master 
of the ship, although their voyage was completed, 
insisted upon them going to Hongkong. The men 
declined to go unless he would enter into a new 
contract with them, which they had a right to do; 
it would be unlawful to take them out of Manila 



The United States of America et al. 19 

otherwise. The master refused to do that. The re- 
sult was that he declared them all to be deserters, 
paid them half their money, and left them to the 
tender mercy of the Consul there. After staying 
there until the 26th of March, they were sent back 
to San Francisco as destitute seamen, on the trans- 
port "Thomas." This action is for the statutory 
amount given to men when they are not paid in ac- 
cordance with law, $2 pay from the time they ought 
to have been paid to the time they w^ere paid, and 
also for the value of second-class passage home — 
that was to be furnished to them but it was not 
furnished, and they had to work their way home; 
and also for some small minor amount for a short- 
age of potatoes for ten days, and also a shortage 
of bread for ten days; and also overtime, in the 
sum of $17.50, for one of the men. The documents 
are on file. The answer to the libel practically sets 
up the same facts. 

We have a deposition and some exhibits which I 
will offer in evidence. 

The COURT.— What is the real issue in the case? 

Mr. HUTTON.— The only issue in the case is that 
it was contemplated when these men signed these 
papers that they were to go anywhere. The Court 
of Appeals has passed upon that question. 

They contend that the men signed a release 
when they got what money they could get after ar- 
riving in San Francisco. The Shipping Commis- 
sioner interested himself the best he knew how 
[22] and got what money he could and left it to 
them to sue for the rest. My contention is that the 



20 T. S. Vincent et al. vs. 

release cuts no figure in this case. 

I notified the Pacific Mail to produce a letter 
which I wrote; have you got it? 

Mr. HEGGERTY.— No, but you have a copy. 

Mr. HUTTON.— The Pacific Mail was the oper- 
ator of the vessel under some agreement with the 
Shipping Board. It filed no answer. It is stipu- 
lated that the answer of the United States can stand 
as the answer of the Pacific Mail. 

I offer this letter in evidence. 

(The letter was here marked ''Libelant's Exhibit 
1," and is as follows:) 

"May 3, 1920. 
"Mr. H. W. Hutton, 
Attorney-at-law, 

527 Pacific Building, 

San Francisco, Calif. 

Subject: SS. "Jacox." 
Dear Sir: 

Replying to your letter of the 27th instant on 
above subject, beg to advise that, in respect of this 
crew, that you are probably aware that we made 
a partial settlement and we now have the matter 
up with the Shipping Board, the owners of the 
vessel, regarding the points mentioned in your let- 
ter, and hope to hear from them in a day or so, 
when we will immediately advise you. 
Very truly yours, 
PACIFIC MAIL STEAMSHIP COM- 
PANY, 

By W. A. RAILTON, 
Auditor and Assistant Secretary." 



The United States of America et al. 21 

I offer in evidence also a letter dated March 24, 
1920, signed by some gentleman whose name I am 
unable to read. Acting American Consul at Manila, 
showing what was done in Manila about [23] the 
crew. It is dated some 24 days after the crew left. 

(The letter was here marked "Libelant's Exhibit 
2.") 

There is an allegation in the libel that the Pacific 
Mail Steamship Company was a corporation organ- 
ized under the laws of New Jersey. There is a 
denial that it was organized under the laws of New 
Jersey, but there is no denial that it is a corpora- 
tion. 

Mr. HEGGERTY. — It was organized under the 
laws of New York. 

Mr. HUTTON.— Then it is conceded that it is a 
corporation organized under the laws of New York? 

Mr. HEGGERTY.— Yes, it is conceded that it 
was organized as a corporation under the laws of 
New York. 

Mr. HUTTON.— We rest now, so far as the tes- 
timony is concerned. 

Mr. LEONARD.— If your Honor please, the de- 
fense has a witness with reference to the shortage 
of food proposition. We are prepared to show that 
the vessel was fully stocked in those commodities, 
bread and potatoes, when she left San Francisco. 
1 understand that Mr. Hutton is willing to stipu- 
late that that is so, that she was stocked consider- 
ably over the amount. I think, however, though, 
for the complete consideration of the case, your 
Honor ought to know what she did have, in order 



22 T. S. Vincent et al. vs. 

to determine whether or not these complaints of 
the crew are worthy of consideration. I think it 
would be better to put the witness on and let him 
testify to that. 

Mr. HUTTON. — I am willing to concede that she 
had an abundance of food on board when she left 
San Francisco, but the testimony shows that the 
potatoes gave out at Sydney, and that there was 
an opportunity to buy some potatoes at the [24] 
Island of Batavia, and the master refused to take 
any because the potatoes were too small. 

Mr. LEONARD.— Will you stipulate that this is 
a list of the food put aboard her when she left San 
Francisco ? 

Mr. HUTTON.— Oh, yes, I am willing to stipu- 
late to that. 

Mr. LEONARD.— We will introduce this list, 
showing what she had on board. It is made by the 
Pacific Mail Steamship Company from the original 
papers. 

The COURT.— Very well. 

(The document was here marked ''Respondent's 
Exhibit 'A.'") 

Mr. LEONARD.— I think it would be well, be- 
fore counsel argues his side of the case, for us to 
state the points of the defense. 

The COURT. — You have no further testimony? 

Mr. LEONARD. — No, we have no further testi- 
mony. 

(Thereupon the cause was argued and submitted 
for consideration.) 



The United States of America et al. 23 

[Endorsed] : Filed Dec. 20, 1920. W. B. Maling, 
Clerk. By C. M. Taylor, Deputy Clerk. [25] 



[Title of Court and Cause.] 

Deposition of Andrew G. Ramstad, for Libelants.^ 
BE IT REMEMBERED : That on Friday, July 
30, 1920, pursuant to notice and stipulation of coun- 
sel hereunto annexed, at my office. Room 308 United 
States Postoffice and Courthouse Building, in the 
City and County of San Francisco, State of Cali- 
fornia, personally appeared before me Francis 
Krull, a United States Commissioner for the North- 
em District of California, authorized to take 
acknowledgments of bail and affidavits, etc., Andrew 
G. Ramstad, a witness called on behalf of the libel- 
ants. 

H. W. Hutton, Esq., appeared as proctor for the 
libelants, and Charles T. Heggerty, Esq., appeared 
as proctor for the respondents, and the said wit- 
ness having been by me first duly cautioned and 
sworn to testify the truth, the whole truth, and 
nothing but the truth in the cause aforesaid, did 
thereupon depose and say as is hereinafter set 
forth. 

(It is hereby stipulated and agreed by and be- 
tween the proctors for the respective parties that 
the deposition of the above-named witness may be 
taken de bene esse on behalf of the libelants at 
the office of Francis Krull, Room ^08, [26] United 
States Post Office and Courthouse Building, in the 



24 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 
City and County of San Francisco, State of Cali- 
fornia, on Friday, July 30, 1920, before Francis 
Krull, a United States Commissioner for the North- 
ern District of California and in shorthand by 
Charles R. Gagan. 

(It is further stipulated that the deposition, when 
written up, may be read in evidence by either party 
on the trial of the cause; that all questions as to 
the notice of the time and place of taking the same 
are waived, and that all objections as to the form 
of the questions are waived unless objected to at the 
time of taking said deposition, and that all objec- 
tions as to materiality and competency of the testi- 
mony are reserved to all parties. 

(It is further stipulated that the reading over of 
the testimony to the witness and the signing thereof 
are hereby expressly waived.) [27] 

ANDREW G. RAMSTAD, called for the libel- 
ants, sworn. 

Mr. HUTTON. — Q. Your name appears in the 
proceedings here as "A. Ramstad"; you are the 
same man, are you? A. Yes, sir. 

Q. What is your occupation? A. Seaman. 

Q. How long have you been a seaman? 

A. Seven years. 

Q. What ship were you on last? 

A. The ''Mayfair." 

Q. When did you leave her? 

A. I left her two days ago, the 27th. 

Q. Are you expecting to go to sea again? 

A. Yes, sir. 



The United States of America et al. 25 

(Deposition of Andrew G. Ramstad.) 

Q. Were you on the "Jacox'"? A. Yes, sir. 

Q. As a sailor? A. Yes, sir. 

Q. After the "Jacox" left San Francisco where 
did she go? A. Honolulu. 

Q. From there where did she go? 

A. Sydney, Australia. 

Q. And from there? A. Newcastle, Australia. 

Q. And from there? A. To Brisbane. 

Q. From Brisbane, where did she go? 

A. Thursday Islands. 

Q. Where did she go from there? 

A. To Balak Papen, Batavia. 

Q. And then? A. To Manila. 

Q. Did she take any cargo on board at New- 
castle? A. Yes, she took a full load of coal. 

Q. I show you a paper. Is that the forecastle 
card of the "Jacox" on that voyage? 

A. Yes, sir. 

Mr. HUTTON.— I offer that in evidence. 

(The document was here marked "Libelant's Ex- 
hibit, Ramstad, #1.") 

Q. When you got to Manila, did the ship anchor 
or go alongside the dock at all? 

A. She anchored in the harbor. [28] 

Q. What did the captain say to you men, if any- 
thing ? 

A. The captain came forward and told me and 
another fellow that we would have to stay on the 
ship until she got to Hongkong, we could not get 
paid off there. I went aft and told the crew what 
the s"kipper had told me. We all went up to the 



26 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 
skipper and told him we wanted to get paid off, 
as the agreement was fulfilled. He said it was the 
order from the company, and so he could not do 
anything with it. Some of the sailors went ashore 
Saturday night, and a few went ashore on Sunday, 
as there was nothing to eat on board, and the bal- 
ance of the crew went ashore on Monday and Tues- 
day. 

Q. Do you remember what dates those were? 

A. We arrived there the 28th of February. 

Q. And it was the Saturday, Sunday, Monday 
and Tuesday closest to the 28th of February that 
these things happened; that is, some of them went 
ashore on the 28th, and some of them on the 29th, 
etc.? A. Yes, sir. 

Q. When you got ashore, did you see the captain 
again f 

A. We went to the Shipping Commissioner, and 
we put the matter before him, and he didn't seem 
to understand it; he didn't seem to have the power 
to do anything. 

Q. What did he say? 

A. He called the captain and the agent of the 
company the next day. The crew was also there. 
We had a conference. We were willing to take the 
ship to Hongkong if they put a new agreement up, 
if they changed the articles. The captain said he 
could not do that; that we had to go on the same 
articles. We told him that if we were going on 
the same articles, we would have no right to claim 
our transportation back, as Manila was the final 



The United States of America et al. 2-7 

(Deposition of Andrew G. Ramstad.) 
port of discharge. There was a whole lot of dis- 
pute there, and we went to a few lawyers [29] 
there, but they all seemed to be employed by the 
Pacific Mail, and we — 

Mr. HEGGERTY.— I object to that. 

Mr. HUTTON.— Never mind about that. 

Q. What else did the Shipping Commissioner tell 
you, if anything? 

A. He didn't tell us anything. He didn't know 
what to do. He went to the Collector of Customs, 
and I and the delegate from the firemen were called 
to the Collector of Customs, and the Collector of 
Customs told me and this fireman that — 

Mr. HEGGERTY.— We object to anything that 
was told him by the Collector of Customs, on the 
ground that it is hearsay. 

Mr. HUTTON. — You have the right to object 
to that in court, Mr. Heggerty. Let him go on. 

A. The Collector of Customs told us that if we 
did not take the ship to Hongkong we would be put 
in jail as deserters. We answered that if he 
thought he could put us in jail he could go ahead 
and do it, because we had fulfilled our contract by 
taking the ship to Manila. With that, he told us 
to leave the office. We never spoke to him again. 

Q. Did you speak to the Shipping Commissioner 
again ? 

A. He was the Collector of Customs; the Ship- 
ping Commissioner was a Filipino under the Col- 
lector of Customs. 

Q. There was some other Shipping Commissioner 



28 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 
there, though, wasn't there? A. Yes. 

Q. What did he say about it ? 

A. He didn't have no power. 

Q. What did he tell you? 

A. He only asked us the reason why we could not 
take the ship to Hongkong, and we said that we 
could not very well do it, because the contract was 
fulfilled. They would not give us any money be- 
fore the 3d of March; [30] then we got half of 
our wages. We signed off — no, we didn't sign off, 
we just had the pay bills for the money we received. 
Finally, we got the Shipping Commissioner to get 
us a hotel to stay in and provide us with subsist- 
ence. He paid for that. We have receipts to show 
for that. 

Q. How did you get away from Manila? 

A. We were there for 24 days, I believe, when 
we got orders to appear before the Shipping Com- 
missioner ; he told us we had to go back as deserters 
in the transport "Thomas." We objected to that, 
but we didn't see any other way to get out of Ma- 
nila, but to do as he told us. 

Q. I show you a paper. Did you ever see that 
paper before? A. Yes, sir. 

Q. Did the different libelants sign that paper? 

A. Yes, all the libelants signed that paper. 

Q. What was done with the original of it? Did 
you give that to the Collector of Customs? 

A. Yes, I believe it was given to him. 

Q. Those signatures on there, are they the sig- 
natures of the libelants? A. Yes, sir. 



The United States of America et al. 29 

(Deposition of Andrew G. Ramstad.) 

Mr. HUTTON.— I offer that and ask to have it 
marked exhibit 2. 

(The document was marked "Libelant's Exhibit, 
Ramstad, #2.") 

Q. I show you another paper. Where did you 
get that? 

A. We got that from the Shipping Commissioner 
to go up to the hospital and pass an examination to 
leave the port. 

Q. Did you all go? A. Yes, sir. 

Mr. HUTTON. — I offer this paper in evidence. 

(The document was marked "Libelants' Exhibit, 
Ramstad #3.") [31] 

Q. You came home on the "Thomas"? 

A. Yes, sir. 

Q. I show you these cards. Look at this paper. 
Where did you get that? 

A. I got that aboard the transport "Thomas." 
That is an identification card. 

Q. Did each one of the crew get a similar card? 

A. Yes, sir. 

Mr. HUTTON.— I have a bunch of these, Mr. 
Heggerty. 

Mr. HEGGERTY.— Are they identification cards 
on the transport "Thomas"? 

Mr. HUTTON.— Yes. I offer these as one ex- 
hibit. 

(The cards were here marked "Libelants' Exhibit, 
Ramstad, #4" — 4 cards.) 

Q. How did you come home? 



30 T. S. Vincent et al. vs. 

(Deposition of Andrew O. Ramstad.) 

A. We were sent home as deserters, destitute sea- 
men. 

Q. Did you work on the way home? 

A. Yes, we had to do one hour's work every sec- 
ond day. 

Q. Did all of you work? 

A. Yes. We also had to dish out food to the 
soldiers. 

Q. When you got to San Francisco did you go to 
the Shipping Commissioner? A. Yes, sir. 

Q. Just state what happened there. 

A. We had a letter from a lawyer in Manila to 
the Shipping Commissioner in San Francisco about 
lEe case ; we went to see the Shipping Commissioner 
in San Francisco ; he said he was going to look into 
the matter. The only thing he did was to give us 
straight time from the time we left there until we 
got to San Francisco. 

Q. Did you sign a receipt for that! 

A. We signed a receipt for the pay we received. 

Q. Did the Shipping Commissioner tell you any- 
thing before you signed it? 

A. We asked him if this was the final discharge, 
[32] and he said, "No, you have a right to sue for 
anything you think you are liable to get, for anything 
you think you have against the company." There 
were five of us there when he said that. 

Q. On the whole voyage, what kind of food did 
you get on the ship? 

A. On the 2d day out from San Francisco I was 
complaining to the skipper about the bread; we 



The United States of America et al. 31 

(Deposition of Andrew G. Ramstad.) 
didn't get no bread for a day or two. He told me 
that if I didn't like the ship I could go ashore at 
Honolulu. So far as the steward was concerned, 
he said he had nothing to say, the skipper was run- 
ning that part of the ship. We had a few com- 
plaints to the skipper going down to Sydney. After 
leaving Sydney we were short of bread and pota- 
toes for about ten days altogether on the trip from 
Sydney to Manila. 

Q. How was it about the potatoes? 

A. He pulled into Balak Papen, Batavia, for 
provisions, and he also took some oil there. He got 
some potatoes and bread, and he sent them ashore 
again, because he said they were too small to eat. 
He got about a basketful from some American ship 
lying there. We were without potatoes for about 
ten days between Sydney and Manila. And the 
same with bread, we didn't have bread for ten days, 
either. 

Q. Do you know what the name of the steward 
was? A. No, I don't remember. 

Q. Do you know what these are? 

A. McDonald — that is the name. 

Q. What are these papers? 

A. The Steward's Department papers; overtime 
of the stewards. 

Q. Are those what the men get on those ships 
when they work overtime? 

A. I don't know anything about those. 

Q. With respect to going to Hongkong, your be- 
lief was that [33] if you got to Hongkong they 



32 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 
could not send you from Hongkong, but that they 
had to send you from Manila — I mean send you 
Home; is that correct? 

A. Well, I don't know. We were supposed to go 
to Manila. We got there. We thought if we left 
Manila we would not have any claim for transpor- 
tation after leaving Manila, 

Mr. HUTTON.— I offer these for what they are 
worth; they are signed, apparently, by the steward; 
they are overtime sheets for George Williams, chief 
cook. 

(The documents were marked "Libelants' Ex- 
hibit, Ramstad, #5." Two sheets.) 

Q. What is this? 

A. That is the receipt from the hotel we were 
staying at. That is my own. Each individual had 
his own receipt. 

Q. What was to be paid for your hotel in Manila 
— your board? 

A. They paid 4 pesos a day for us; that is $2 
American money. Our agreements with the ship 
owners — between the Sailors' Union and the ship 
owners — is that we shall have $2.75 for subsistence 
money; so we claim 75 cents extra for the time we 
were in Manila, because they did not pay more than 
4 pesos. 

Q. What position did you hold on board with ref- 
erence to the crew? 

A. I was representing the sailors ; I was the dele- 
gate of the sailors. 



The United States of America et al. 33 

(Deposition of Andrew O. Ramstad.) 

Q. The sailors usually pick out one man for that 
purpose, do they? 

A. The members of the deck department pick out 
their delegate on board the ship to handle the over- 
time, and if there is any complaint he shall go and 
see the man in charge about it. 

Cross-examination. 

Mr. HEGGEETY.— Q. Where did you get this 
forecastle card, [34] Exhibit 1, Mr. Ramstad? 

A. That is put up in the forecastle when we are 
leaving port, when we sign on. 

Q. And where did you get it? 

A. We took it from the forecastle, as we thought 
it might come in handy for us, because our contract 
was fulfilled, and we were entitled to that forecastle 
card. 

Q. This is posted in the forecastle by the ship, is 
it? A. Yes, sir. 

Q. And is the card required by law to be posted 
and remain posted there? 

A. It is not to remain there after the trip is fin- 
ished. 

Q. But it belongs to the ship. It is required 
by law to be posted in the forecastle? 

A. Yes ; it was in the forecastle until we left it. 

Q. And when you left the ship you tore this card 
off and took it with you, did you ? A. Yes, sir. 

Q. Who tore it off? 

A. I don't know exactly who tore it off. 

Q. Some of the sailors? 



34 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 

A. Some of the crew did, yes. 

Q. Where did you get it? 

A. It was delivered to me to bring it up to the 
lawyers. 

Q. Who gave it to you, what member of the 
crew? 

A. We had it lying around in the forecastle and 
I picked it up in the mess-room. 

Q. Don't you know what member of the crew took 
it down ? 

A. No, I could not say that for certain. 

Q. And you have had it ever since, have you ? 

A. Yes. We gave it to the lawyer here in San 
Francisco on our arrival here. 

Q. You said that the crew was willing to go from 
Manila to Hongkong if they would give them new 
articles. 

A. That is what we explained to the skipper in 
Manila. 

Q. What kind of articles did you ask for? 

A. They have to sign a contract; they have to 
put up new articles, because that article was already 
fulfilled. [35] 

Q. I mean what kind of articles. Was it just 
only to Hongkong for final discharge? 

A. No, they would not give us any agreement at 
all what it was going to be; the skipper said he 
wanted to take us to Hongkong and then take us 
back to Manila again. 

Q. You said that the sailors were willing to sign 
new articles to go to Hongkong and come back to 



The United States of America et al. 35 

(Deposition of Andrew G. Ramstad.) 
Manila again, provided that you had the transpor- 
tation back to San Francisco and provided in the 
original articles. Was that your arrangement? 

A. If we can arrange to take the ship to Hong- 
kong and then get transportation back to Manila 
and then to San Francisco, it would not make any 
difference to us. 

Q. And you told him you would be willing to do 
that? 

A. Yes, the whole crew told him they would be 
willing to do that. 

Q. And he told you he had no power to do that? 

A. He was not willing to do it; he said he could 
not do that. 

Q. And that was the reason why you didn't go on 
to Hongkong, was it, because you believed that you 
thereby forfeited your right to transportation back 
to San Francisco as agreed in the original articles? 

A. Yes. 

Q. You were paid at Manila how much money ? 

A. We got half of the wages we had earned up 
to that day. 

Q. That was the 28th of February, wasn't it? 

A. Yes. 

Q. Anything else? 

A. No; we only got that. The Shipping Com- 
missioner stood good for our subsistence money. 

Q. In other words, you got the subsistence and 
you didn't pay for it; the Shipping Commissioner 
paid for it; he stood good for it, did he? 



36 T. S. Vincent et nl. vs. 

(Deposition of Andrew G. Ramstad.) 

A. Yes, because he said we were there as desert- 
ers. 

Q. What I mean is this: You didn't pay any- 
thing for subsistence in Manila, did you? 

A. No. [36] 

Q. Then you went on the transport ''Thomas" 
under the conditions you have stated? 

A. Yes; we expected to get a fairer trial here in 
San Francisco in the case than we could get down 
there. We went to a couple of lawyers down there, 
but they were all employed by the Pacific Mail. 

Q. I didn't ask you that. I ask that that be 
stricken out. Didn't the Shipping Commissioner 
tell you that it was your duty to stay by the ship 
and go to Hongkong? 

A. No, he didn't tell us that. He told us that 
so far as he could see we had the right to get paid 
oft' there. 

Q. Did the master tell you that if you went to 
Hongkong he would bring you back to Manila for 
final discharge, or send you back there? 

A. Well, I guess he did say that, yes. He said 
that, but we claimed that after leaving Manila we 
had no right to anything in the contract previously 
put up between the master and the crew. 

Q. And did the Commissioner advise you on that, 
or did the master, saying you would not forfeit 
your rights in any way going to Hongkong? 

A. No, they didn't say anything about that. 

Q. Do you know anything about the Shipping 
Commissioner having certified at Manila that you 



The United States of America et al. 37 

(Deposition of Andrew G. Ramstad.) 
were deserters from the ship when you left? 

A. No; he gave us a statement in Manila. 

Q. In writing? A. Yes. Haven't you got that? 

Mr. HUTTON.— I haven't got it here. 

Mr. HEGGEETY.— Q. And the Shipping Com- 
missioner gave you a statement in writing? 

A. Yes. 

Q. Do you remember in substance what that was? 

Mr. HUTTON.— I will get it for you. 

Mr. HEGGERTY.— All right. We will ask for 
that. 

Q. You gave that to Mr. Hutton, did you? 

A. Yes. [37] 

Q. And that is the statement you refer to? 

A. Yes, I believe it is. 

Q. When you came to San Francisco, you say 
you had this letter from a lawyer in Manila to the 
Shipping Commissioner? A. Yes. 

Q. Do you remember the name of that lawyer in 
Manila? 

A. Farrell, I believe, is the name. You have that 
letter. 

Mr, HUTTON.— I have the letter. 

Q. Is that the letter? 

A. Yes, that is the letter. 

Mr. HEGGERTY.— It is Williams & Ferrier, by 
J. W. Ferrier. 

Q. And you presented this to the Shipping Com- 
missioner at San Francisco — this letter? 

A. That was the copy of it; the original letter 
was sent to the Shipping Commissioner himself. 



38 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 

Q. To the United States Shipping Commissioner. 
And the United States Shipping Commissioner has 
it, so far as you know? A. Yes. 

Mr. HEGGERTY.— We introduce this in evidence 
as a part of the cross-examination. 

(The document was here marked "Respondents^ 
Exhibit 'A.'") 

Q. When you arrived in San Francisco, the sail- 
ors were all paid off before the United States Ship- 
ping Commissioner here, as I understand you, 
straight pay from Manila to San Francisco? 

A. Yes ; we got whatever we had coming, straight 
pay from the time we left until we arrived here in 
San Francisco. 

Q. And then you signed the mutual release in the 
Shipping Commissioner's book, did you? 

A. No, we only signed for the money we received. 
We did not sign no release whatsoever, either in 
Manila or in San Francisco. 

Q. Didn't you sign in the United States Commis- 
sioner's book? 

A. No, I don't believe we did. We only signed 
the pay-roll for the Pacific Mail. [38] 

Q. Didn't you also sign in the Shipping Commis- 
sioner's office what they call the mutual release? 

A. No, we did not. 

Q. Just try and see if you cannot remember that. 

A. I can go up to the Shipping Commissioner and 
find out, but I am positive we did not sign anything 
except the pay-roll of the Pacific Mail, because I, 
myself, asked the Shipping Commissioner if we 



The United States of America et al. 39 

(Deposition of Andrew Gr. Ramstad.) 
signed this pay-roll if that stopped us from suing 
the company for the fare money, and he said, "No." 
There was present one fireman and myself and the 
boatswain and the chief cook. 

Q. When you signed the articles here in San 
Francisco for this trip, did you know where the 
ship was bound for? 

A. Not except the rumor about it, that she was 
going to Sydney. Our understanding was this, that 
she was running for the Oceanic Steamship Com- 
pany to Sydney. The Oceanic Steamship Company 
had the ship before. Some of the members of the 
crew had made one trip before. It was our under- 
standing that when she got to Sydney the Pacific 
Mail was going to take her over. That is the un- 
derstanding we had. 

Q. And bring her from there to what port? 

A. To Manila, her final port of discharge. That 
is what the articles read to. 

Q. And did you know, when you left here, that 
the ship was not to return to San Francisco, that 
she was going to remain over there ? 

A. Yes, we knew that. 

Q. And did you know that Hongkong was the 
place where she was to remain? 

A. No, we never heard about Hongkong before 
we got to Manila. 

Q. Was the cargo of coal taken to Manila, or do 
you know whether it was taken for discharge at 
Hongkong? [39] 

A. It was taken for discharge at Manila. 



40 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 

Q. And was it discharged there? 

A. They discharged every bit of it right in Ma- 
nila. 

Q. Did you know, at the time, that this was a 
United States Shipping Board ship — I mean when 
you signed the articles here? 

A. Yes, we knew it was a Shipping Board ship 
when we signed the articles. We also knew that 
the Oceanic Steamship Company had had her for — 
I don't know how long, but for a certain amount 
of time, and that the Pacific Mail was going to take 
her over when she got to Sydney. That is the un- 
derstanding the crew had, every one of them. 

Q. And on the way over on the "Thomas" you 
worked an hour a day? 

A. Not every day; we were shifted into two sec- 
tions, and when one gang was working the other one 
did not have to work. We had to check up the 
stores for the second class, and the third class, and 
the first class, we had to check up all the stores; 
and besides that, we had to dish out food for the 
soldiers. 

Q. The transport was carrying soldiers back to 
San Francisco, was she? A. Yes, sir. 

Q. Were you paid anything for any of those ser- 
vices at all? 

A. No. We were called up to the Quartermas- 
ter's Department, and he told us that if we were 
willing to do the duty of a soldier, except the mili- 
tary duty, we would be treated as good as the sol- 
diers, but if we did not do work it would make it 



The United States of America et al. 41 

(Deposition of Andrew G. Ramstad.) 
bad for us. That is the statement he gave in front 
of the whole crew. So we had a little conference 
by ourselves, and we came to the conclusion that it 
was better for use to go to work as he wanted us 
to do. We were conceded then the same as the sol- 
diers ; we were traveling in the same class as the sol- 
diers. [40] The passage is $22.50 for each man 
from Manila. 

Q. The passage on the transport? 

A. Yes; that is what I heard; that is what the 
ship's crew said. 

Q. But none of them paid anything? A. No. 

Q. You neither got any pay, nor did you pay any- 
thing? 

A. No, we didn't pay anything; the Shipping 
Commissioner sent us aboard. 

Q. The second day out from San Francisco you 
say there was no bread, or was it that there was 
some objection to the quality of the bread? 

A. There was no bread. 

Q. No bread at all? A. No, no bread at all. 

Q. Was there any substitute for bread? 

A. No. I complained to the steward, and he went 
and told the skipper, and the skipper called me up 
in his room and he asked what reason I had to 
complain about the bread. I told him that when- 
ever we have reason we will complain, it doesn't 
matter what it is. He told me that if I didn't like 
the ship I could go ashore at Honolulu. 

Q. Wasn't there any bread on the ship at all? 



42 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 

A. Yes, there was bread, but the skipper said the 
stove was not in commission. I told him he should 
look after that before he left San Francisco. 

Q. Did you get no bread? 

A. Oh, yes, we got bread the day after. 

Q. The day ofter the complaint? 

A. Yes ; then we had bread all the way along, but 
many meals we didn't have no bread, but I guess 
that was more the fault of the cooks. After leav- 
ing Sydney we didn't have bread for more than 
half the passage, from Sydney up to Manila. 

Q. Do you know the cause for that? 

A. They claimed they did not have any yeast. 
That is the only reason they had. But that was 
not the fault of the crew. And also potatoes; I 
{41] reminded the skipper about the potatoes be- 
fore leaving Newcastle, but he didn't answer me. 
As a matter of fact, it was not up to me to look 
after potatoes or anything else. I just told him 
in case he didn't know about it. 

Q. And you say there were no potatoes from 
Newcastle ? 

A. We had certain meals some days, but alto- 
gether for about ten days we didn't have nothing, 
either bread or potatoes. 

Q. During any of the meals? A. No. 

Q. That is to say, during ten days, at none of the 
meals did you have any bread or potatoes? 

A. About ten days altogether from leaving Syd- 
ney to Manila we didn't have any bread. 

Q. At some meals you had and at some you had 



The United States of America et al. 43 

(Deposition of Andrew G. Ramstad.) 

not % A. At some we had and at some we had not. 

Q. And that extended over a period of about ten 
days? 

A. No, that extended over the whole trip; if you 
put all the meals together, it will make ten days, 
or something like that. 

Q. And at some meals you had them, but at some 
you had not. Is that correct? A. Yes. 

Q. And putting all the meals together at which 
you did not have bread or potatoes, or bread and 
potatoes, it would make a period of ten days, count- 
ing three meals a day? A. Yes, sir. 

Q. So that, figuring the number of meals you 
were without bread or potatoes, it would be equiva- 
lent to ten days altogether — in other words, three 
meals a day for ten days? A. Yes, sir. 

Q. Thirty meals at which you did not have pota- 
toes or bread. Is that right? A. Yes, sir. 

Q. But it w^ould not be all in one day that you 
would not have bread or potatoes, would it? 

A. The last four days before coming into Manila 
we did not have any potatoes at all, or no bread 
whatsoever. We got bread, but it was just like a 
stone, [42] nobody could eat it. 

Q. You couldn't raise it? 

A. No. The Sunday after we got to Manila — we 
got there on a Saturday — on Sunday at breakfast 
there was hardly anything to eat ; we all had the inten- 
tion of leaving the ship, as our agreement was up, 
but we could not go ashore unless we got paid off; 
only the men who had money went ashore; those 



44 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 
who did not have any money had to stay on board. 
We had to complain about the food on Saturday 
morning, there were neither bread or potatoes. 

Q. That was in Manila'? A. Yes. 

Q. Do you remember the name of the hotel you 
went to? 

A. The Washington Hotel, the Phoenix Hotel, 
and the Elite Hotel. 

Q. How were the meals there — were they satis- 
factory *? 

A. Yes, the meals were satisfactory there. 

Q. So that the subsistence you got in Manila was 
satisfactory to you? 

A. We were all sent to the Elite first, but it was 
satisfactory to none of us; then we asked the Ship- 
ping Commissioner to change us, and some went to 
the Phoenix and others went to the Washington. 

Q. And after that it was satisfactory? 

A. Yes, sir. 

Q. You said that you had an arrangement with 
some of the ship owners there, or with somebody, 
to pay you $2.75 a day for subsistence. 

A. That is the agreement here in San Francisco, 
between the crew and the ship owners, that $2.75 
a day shall be considered as subsistence money, in- 
cluding food and hotel — bed money. 

Q. Is that in the original articles? 

A. No, they never put that in the articles. 

Q. That is the Sailors' Union Agreement with 
the ship owners? A. Yes. [43] 

Q. And you say that the subsistence there at 



The United States of America et al. 45 

(Deposition of Andrew G. Ramstad.) 

those hotels was only costing $2 instead of $2.75 ? 

A. Yes, sir. 

Q. How do you know that? 

A. We got our own receipts down from the hotel 
when we left. 

Q. For $2 a day? A. Yes. 

Redirect Examination. 

Mr. HUTTON. — Q. Did you say they discharged 
the cargo of coal that they took aboard at Newcastle 
at Manila? A. Yes, sir. 

Q. Do you know on what date it was discharged? 

A. No, I could not tell that exactly, as I left the 
ship the second day after she arrived there, but 
they started to discharge the coal on Monday morn- 
ing; we came in on Saturday at five o'clock. 

Q. And they started to discharge Monday morn- 
ing at eight o'clock? A. Yes, sir. 

Q. Do you know what day the ship left Manila? 

A. I believe it was on the 5th or 6th of March. 

Q. Did they have any trouble getting a new crew ? 

A. No — yes, I believe they had some trouble get- 
ting it, but I didn't know much about that. 

Q. Did the ship leak? 

A. No. Our understanding was this: When we 
got to Manila with the ship there would be a Chi- 
nese crew to take our place, as the ship was going 
to go over to China, or run between China and In- 
dia, picking up freight for the bigger boats of the 
same company. That was our understanding. 

Q. Who told you that? 

A. Some of the officers. The third officer told me 



46 T. S. Vincent et al. vs. 

(Deposition of Andrew G. Ramstad.) 

that here in San Francisco — L eland. We all had 

that understanding about the ship. 

Q. What Shipping Commissioner was it who told 
you that as far as he could see you had a right to 
be paid off in Manila? 

A. The Shipping Commissioner at Manila told us 
that. [44] 

Q. When did he tell you that? 

A. When we were up there speaking to him about 
things. As a matter of fact, he didn't know what 
to do, but he said that by the articles we had the 
right to leave the ship. We also asked him if it 
would be right if we sent a telegram to the Ship- 
ping Commissioner here in San Francisco, and he 
agreed to that. He sent it to him. It cost about 
42 pesos. We collected that from all the crew. We 
sent the telegram to MacArthur, but we received no 
answer. 

United States of America, 

State and Northern District of California, 

City and County of San Francisco. 

I certify that, in pursuance of stipulation of 
counsel, on Friday, July 30, 1920, before me, 
Francis Krull, a United States Commissioner for 
the Northern District of California, at San Fran- 
cisco, at my office. Room 308 United States Post- 
office and Courthouse Building, in the City and 
County of San Francisco, State of California, per- 
sonally appeared Andrew G. Ramstad, a witness 
called on behalf of the libelants in the cause entitled 
in the caption hereof ; and H. W. Hutton, Esq., ap- 
peared as proctor for the libelants, and Charles T. 



The United States of America et al. 4:1 

Heggerty, Esq., appeared as proctor for the re- 
spondents, and the said witness having been by me 
first duly cautioned and sworn to testify the truth, 
the whole truth, and nothing but the truth in said 
cause, deposed and said as appears by his deposi- 
tion hereto annexed. 

I further certify that the deposition was then and 
there taken down in shorthand notes by Charles R. 
Gagan, and thereafter reduced to typewriting; and 
I further certify that by stipulation [45] of the 
proctors for the respective parties, the reading over 
of the deposition to the witness and the signing 
thereof were expressly waived. 

Accompanying said deposition and referred to and 
specified therein are Libelants' Exhibits, Ramstad, 
Nos. 1 to 5, inclusive, and Respondents' Exhibit 

And I do further certify that I have retained the 
said deposition in my possession for the purpose 
of delivering the same with my own hands to the 
clerk of the United States District Court for the 
Northern District of California, the court for which 
the same was taken. 

And I do further certify that I am not of counsel, 
nor attorney for either of the parties in said depo- 
sition and caption named, nor in any way interested 
in the event of the cause named in the said caption. 

IN WITNESS WHEREOF, I have hereunto set 
my hand in my office aforesaid this 7th day of Aug., 
1920. 

FRANCIS KRULL, (Seal) 
United States Commissioner, Northern District of 
California, at San Francisco. [46] 



48 T. S. Vincent et al. vs. 

[Title of Court and Cause.] 

(Memorandum Opinion and Order to Enter a Decree 
in Accordance With Opinion.) 

H. W. HUTTON, Esq., Proctor for Libelants. 

FRANK M. SILVA, Esq., United States Attorney, 
and E. M. LEONARD, Esq., Assistant United 
States Attorney, Proctors for Respondents. 

RUDKIN, District Judge. 

On the 13th day of December, 1919, the libelants 
signed shipping articles before the United States 
Shipping Conunissioner, at the Port of San Fran- 
cisco, to serve as seamen on a voyage on the steam 
vessel "Jacox," described in the articles as follows: 
"From the Port of San Francisco, Califor- 
nia, to Manila, P. I., for final discharge for a 
term of time not exceeding six (6) calendar 
months. ' ' 
The articles contained this further stipulation: 
"Officers, including steward and radio oper- 
ator, shall receive first-class transportation, and 
wages, remainder of crew second-class trans- 
portation, and wages to San Francisco, upon 
termination of the voyage." 
On, or seen after the date of the articles, the ves- 
sel proceeded from San Francisco to Honolulu, 
thence to Sydney and New Castle, Australia, and 
thence to Manila, arriving at the latter port on Feb- 
ruary 28th, 1920. On the [49] following day the 
libelants left the vessel and demanded their wages, 
claiming that their term of service had expired. 



The United States of America et al. 49 

This demand was not complied with, but on March 
3d following the libelants were each paid one-half 
of the wages earned up to and including the 29th 
day of February. The master insisted that the 
libelants were obligated by the shipping articles to 
continue the voyage to Hongkong, China, but this 
they refused to do unless new articles were signed 
for such voyage. The master refused to sign new 
articles, claiming that he had no authority so to do. 
Later the libelants returned to San Francisco upon 
a Government transport, and, upon their return, 
were paid wages in full up to the date of their ar- 
rival at San Francisco and signed the customary 
release. In the present proceeding the libelants 
seek to recover the following additional sums: 

1. Double pay from the 4th day of March to the 
26th day of April, or 52 days in all, as a penalty for 
failure to pay the wages due at the expiration of 
the term of service; 

2. The cost of second-class passage from Manila 
to San Francisco; 

3. Ten dollars to each libelant for failure to 
furnish potatoes and a like sum for failure to fur- 
nish bread for a period of ten days in all ; 

4. Seventy-five cents per day for each day de- 
tained in Manila, being the difference between Two 
Dollars a day paid for their maintenance and Two 
Dollars and Seventy-five Cents a day agreed upon 
between the seamen and the ship owners; and 

5. Seventeen Dollars and Fifty Cents for over- 
time to the libelant Williams. [50] 

After a careful examination of the record and 



50 T. S. Vincent et al. vs. 

briefs, I have reached the following conclusions: 

1st. That the voyage terminated at Manila and 
that the respondents have failed to show sufficient 
cause for failure to pay the seamen the wages due 
them. They have therefore incurred the penalty 
imposed by law. 

2d. That the libelants were entitled to transporta- 
tion, second class, from Manila to San Francisco and 
not to the cost of such transportation. They were, 
in fact, transported free of charge on a Government 
transport, receiving the same treatment as was ac- 
corded to American soldiers, working only one hour 
every other day to secure certain privileges or bet- 
ter treatment. Under these circumstances they are 
not entitled to recover the cost of transportation. 

3d. I think the testimony fairly establishes the 
fact that the libelants were not furnished potatoes 
for a period of about ten days, but there is a fail- 
ure of proof as to the failure to furnish bread. 
The testimony on the latter point is uncertain and 
the complaint seems to go to the quality of the 
bread furnished rather than the failure to furnish 
bread at all. 

4th. The maintenance furnished was satisfac- 
tory and was paid for by the respondents, so that 
I fail to see any basis for the recovery of seventy- 
five cents per day, the difference between the 
amount paid and the amount of maintenance agreed 
upon. 

5th. There seems to be no defense to the claim 
for overtime on the part of the libelant Williams. 



The United States of America et al. 51 

Let a decree be entered accordingly. 
August 18th, 1920. 

[Endorsed] : Filed Aug. 18, 1920. W. B. Maling, 
Clerk. By C. W. Calbreath, Deputy Clerk. [51] 



[Title of Court and Cause.] 

Supplemental Memorandum (Re Form of Final 

Decree). 
H. W. BUTTON, for Libelants. 

FRANK M. SILVA, United States Attorney, and 
E. M. LEONARD, Assistant United States 
Attorney, for Respondents. 

RUDKIN, District Judge. 

An interesting question is here presented involv- 
ing the construction of . Section 3 of the Act of 
March 4, 1915 (Section 8320, Comp. St. 1916), when 
applied to the peculiar facts of this case. On the 
final hearing the Court held that the voyage in 
question terminated at Manila that the respondents 
failed to show sufficient cause for their refusal to 
pay libelants the wages due them at that time, and 
thus incurred the penalty imposed by law. The 
extent of the penalty or the amount of the recovery, 
however, were not discussed or considered at that 
time. The libelants have submitted a decree award- 
ing them double pay from the 4th day of March, 
1920, to and including the 25th day of April, 1920, 
or 53 days in all. The respondents, on the other 
hand, have submitted a decree awarding single 



52 T. S. Vincent et al. vs. 

wages only, from the 4th day of March, 1920, to 
and including the 25th day of April, 1920, which 
they compute as 52 days in all. The difference be- 
tween the parties is therefore the difference between 
single and double pay and a difference of [52] 
one day in the computation of time. The facts 
which give rise to this difference are briefly these: 
Under the terms of the shipping articles the libel- 
ants were entitled to wages to San Francisco upon 
the termination of the voyage, and such wages have 
been in fact paid. If they are now awarded double 
pay for the same period the result will be that they 
have been thrice paid. If such is the intent and 
meaning of the statute the Court of course is not 
concerned with the result, but was such the legis- 
lative intent? While the statute is in a measure 
penal in its nature, there is also present the element 
of compensation to the seaman and the additional 
allowance is expressly made recoverable as wages. 
It seems to me, therefore, that equity and justice 
would require no more than the payment of double 
wages in all covering the period of default. The 
statute is a penal one and the courts have been dis- 
posed to construe it rather strictly. The suggestion 
of counsel for libelants that the pay allowed for 
the period of the return voyage to San Francisco 
was in fact pay for the original voyage does not ap- 
peal to me. The vessel on its departure did not 
expect to return to San Francisco and provision 
was therefore made for the payment of wages for 
the return voyage to the home port. The libelants 
were in fact, therefore, paid single wages until 



The United States of America et al. 53 

their return to California and are not entitled to 
double wages now. 

While the libel only claims the penalty for 52 
days, it occurs to me that the computation made by 
the libelants is correct. The libelants should have 
been paid on the 3d day of March and on the 4th 
day of March became entitled to the penalty for 
the default. They also became entitled to the pen- 
alty accruing on each succeeding day up to and in- 
cluding the 25th day of April, which makes 53 days 
in all. The form of decree submitted by the re- 
spondents will therefore be signed when modified 
[53] so as to allow but one day's additional pay 
for the period of 53 days. 

Let the proposed decree be reformed and sub- 
mitted accordingly. 

August 31st, 1920. 

[Endorsed] : Filed Aug. 31, 1920. W. B. Maling, 
Olerk. By C. W. Calbreath, Deputy Clerk. [54] 



[Title of Court and Cause.] 

Decree. 

This cause having been heard on tlie pleadings 
and proofs and the arguments and briefs of the re- 
spective parties, and the Court being fully advised, 
it is now ORDERED, ADJUDGED AND DE- 
CREED and this does ORDER, ADJUDGE AND 
DECREE, that for and on account of the matters 
set forth in the pleadings and shown by the proofs 
herein, that libelants have and recover, from the 



54 T. S. Vincent et dl. vs. 

defendants, United States of America, and pacific 
Mail Steamship Company, the following sums re- 
spectively : 

For the statutory penalty provided for the non- 
payment of seaman's wages, by Section 4529, Re- 
vised Statutes of the United States, from and in- 
cluding the 4th day of March, 1920, to and includ- 
ing the 25th day of April, 1920, fifty-three (53) 
days in aU, as follows: 

Libelant Phillip Morrison, the siun of one hun- 
dred sixty-seven dollars and eighty-three and one- 
third cents ($167.83%). 

Libelant A. Ramstad, the sum of one hundred 
fifty-nine dollars ($159.00). 

Libelant J. M. Johansen, the sum of one hundred 
fifty-nine dollars ($159,00). 

Libelant A. B. Eklov, the sum of one hundred 
fifty-nine dollars ($159.00). [55] 

Libelant E. J. Lindstrom, the sum of one hun- 
dred fifty-nine dollars ($159.00). 

Libelant C. W. Ingrobretses, the sum of one 
hundred fifty-nine dollars ($159.00). 

Libelant R. V. Hagaslampi, the sum of one hun- 
dred fifty-nine dollars ($159.00). 

Libelant A. Krishlauk, the sum of one hundred 
fifty-nine dollars ($159.00). 

Libelant L. Deppman, the sum of one hundred 
fifty-nine dollars ($159.00). 

Libelant Antonio Mulct, the sum of one hundred 
fifty-nine ($159.00). 

Libelant V. Kususkin, the sum of one hundred 
fifty-nine dollars ($159.00). 



The United States of America et al. 55 

Libelant J. Biggins, the sum of one hundred 
fifty-nine dollars ($159.00). 

Libelant G. Rein, the sum of one hundred fifty- 
nine dollars ($159.00). 

Libelant W. Clay, the sum of one hundred fifty- 
nine dollars ($159.00). 

Libelant J. Andresen, the sum of one hundred 
fifty-nine dollars ($159.00). 

Libelant T. S. Vincent, the sum of one hundred 
thirty-nine dollars and thirty-three and one-third 
cents ($139.33%). 

Libelant A. H. Raymiller, the sum of one hun- 
dred fourteen dollars and eighty-three and one- 
third cents ($114.83%). 

Libelant W. B. Richards, the sum of one hundred 
fourteen dollars and eighty-three and one-third 
cents ($114.83%). 

Libelant George Williams, the sum of one hun- 
dred eighty-four dollars and thirty-three cents 
($184.33%). 

Libelant James W. Oree, the sum of one hundred 
fifty-nine dollars ($159.00). [56] 

Each of said libelants the further sum of ten 
($10.00) dollars for shortage of potatoes, for ten 
days. 

Libelant George Williams the sum of seventeen 
40/100 ($17.40) dollars for overtime worked. 

Together with their costs to be taxed. 

Dated September 9th, 1920. 

FRANK H. RUDKIN, 
United States District Judge. 



56 T. S. Vincent et al. vs. 

Receipt of copy of the within Decree is hereby 
admitted this 2d day of September, 1920. 

H. W. HUTTON, 
Proctor for Libelant. 

[Endorsed] : Filed Sep. 9, 1920. W. B. Maling, 
Clerk. By C. W. Calbreath, Deputy Clerk. 

Entered in Vol. 10, Judg. and Decrees, at page 
105. [57] 



[Title of Court and Cause.] 

(Notice of Appeal by Libelants.) 

The defendants in the above cause and their proc- 
tors will please take notice, that libelants appeal to 
the United States Circuit Court of Appeals for the 
Ninth Circuit from the decree given and made in 
said cause by said district court, on the 9th day of 
September, 1920. 

You will further take notice, that libelants desire 
only to review on said appeal the following ques- 
tions. 

The action of the said District Court in fixing the 
amount of the penalty for the nonpayment of their 
wages when they should have been paid in Manila, 
March 4th, 1920, to one day's pay per day for 53 
days, instead of two days' pay per day for 53 days. 

The action of the said District Court in deciding 
that libelants were not entitled to judgment for the 
sum of $222.00 each the cost of a second-class pas- 
sage from Manila to San Francisco. 



The United States of America et al. 57 

Dated December 10th, 1920. 

Yours, etc., 

H. W. BUTTON, 
Proctor for Libelants. 
Copy received this 10th day of December, 1920. 
CHARLES J. HEGGERTY, 
KNIGHT & HEGGERTY, 
Proctor for Pacific Mail S. S. Co. [58] 
Copy received this 10th day of December, 1920. 

FRANK K. SILVA, 

U. S. Atty., 
E. M. LEONARD, 
Proctor for United States of America. 

[Endorsed] : Filed Dec. 10, 1920. W. B. Maling, 
Clerk. By C. W. Calbreath, Deputy Clerk. [59] 



[Title of Court and Cause.] 

Assignments of Error (Libelants). 

1. The Court erred in not awarding to each of 
the libelants the cost of a second-class passage from 
Manila to San Francisco. 

2. The Court erred in deciding that the wages 
paid each of the libelants upon his arrival in San 
Francisco were a credit upon the amount of the 
penalty owing by defendants to each of the libelants 
under section 4529 of the Revised Statutes of the 
United States. 

3. The Court erred in not deciding that the 
wages paid to each of the libelants in San Francisco 
at the time of their arrival there from the voyage 



58 T. S. Vincent et al. vs. 

they made on the '' Jacox," from the time of the ex- 
piration of their contract of service on that vessel, 
was pay for time actually consumed and was not 
a credit on the statutory penalty for the failure to 
pay the wages payable in Manila. 

H. W. HUTTON, 
Proctor for Libelants. 

Copy received this 13th day of , 192 — . 

CHAS. J. HEGGERTY, 
KNIGHT & HEGGERTY, 
Proctor for Pacific Mail Steamship Co. 
Copy received this 13th day of December, 1920. 
FRANK M. SILVA, 

U. S. Atty. 
E. M. LEONARD, 

Asst. U. S. Atty., 
Proctors for United States of America. 

[Endorsed] : Filed Dec. 13, 1920. W. B. Mating, 
Clerk. By C. W. Calbreath, Deputy Clerk. [60] 



[Title of Court and Cause.] 

Notice of Appeal by Respondents. 

To Each of the Above-named Libelants and to 
Their Proctor, H. W. Hutton. 
You and each of you will please take notice that 
the United States of America, and Pacific Mail 
Steamship Company, defendants above named, and 
each of them, appeals from the final decree of court 
in this cause made and given in favor of the above- 
named libelants and against the above-named de- 



The United States of America et al. 59 

fendants on the 9th day of September, 1920. 

You will also please take notice that the above- 
named defendants desire only to review on appeal 
the following portions of said decree, to wit: 

That portion of said decree which awards to each 
of said libelants seaman's wages from and includ- 
ing the 4th day of March, 1920, to and including the 
25th day of April, 1920, that portion which awards 
to each of said libelants the sum of ten ($10.00) 
dollars for shortage of potatoes for ten (10) [61] 
days, and that portion which awards to libelant 
George Williams the sum of seventeen dollars and 
forty cents ($17.40) for overtime worked. 
Dated: December 15, 1920. 

FRANK M. SILVA, 
United States xlttorney. 
E. M. LEONAED, 
Asst. United States Attorney, 
Proctors for United States of America. 
KNIGHT & HEGGERTY, 
Proctors for Pacific Mail Steamship Company. 
Due service and receipt of the above Notice of 
Appeal is hereby admitted this fifteenth day of 
December, 1920. 

H. W. HUTTON, 
Proctor for Libelant. 

[Endorsed]: Filed Dec. 15, 1920. W. B. Maling, 
€lerk. By C. M. Taylor, Deputy Clerk. [62] 



60 T. S. Vincent et dl. vs. 

[Title of Court and Cause.] 

Assignment of Errors (Respondents'). 

The United States of America and the Pacific Mail 
Steamship Company, defendants above named, 
assign errors in the rulings and proceedings of the 
District Court herein as follows : 

I. 
That the Court erred in entering its decree award- 
ing to each of said libelants penalty provided for non- 
pajrment of seaman's wages by Section 4529 of the 
Revised Statutes of the United States, from and in- 
cluding the 4th day of March, 1920, to and including 
the 24th day of April, 1920. 

II. 
That the Court erred in awarding to each of libel- 
ants the further sum of ten ($10,00) dollars for short- 
age of potatoes for ten (10) days. 

III. 
That the Court erred in awarding to libelant 
George Williams the sum of seventeen dollars and 
forty cents ($17.40) for overtime worked. 

IV. 
That the Court erred in awarding the costs to said 
libelants. 

FRANK M. SILVA, 
United States Attorney. [63] 

E. M. LEONARD, 
Asst. United States Attorney, 
Proctor for United States of America. 
KNIGHT & HEGGERTY, 
Proctors for Pacific Mail Steamship Company. 



The United States of America et al. 61 

Due service and receipt of the above Assignment of 
Errors is hereby admitted this fifteen day of Decem- 
ber 1920. 

H. W. HUTTON, 
Proctor for Libelant. 

[Endorsed] : Filed Dec. 15, 1920. W. B. Maling, 
Clerk. By C. M. Taylor, Deputy Clerk. [64] 



[Title of Court and Cause.] 

(Stipulation as to Certain Facts.) 

It is hereby stipulated that it was agreed in open 
court at the time of the trial of the above cause, be- 
tween the respective parties thereto by and through 
their respective proctors, that the cost of a second- 
class passage from Manila to San Francisco at the 
time of libelants leaving the said vessel "Jacox" in 
Manila, to wit, during the month of March, 1920, was 
the sum of two hundred and twenty-two and 50/100 
($222.50) dollars. 
Dated: December 22d, 1920. 

H. W. BUTTON, 

Proctor for Libelants. 
KNIGHT & HEGGERTY, 
Proctors for Pacific Mail Steamship Company. 

FEANK M. SILVA, 

U. S. Atty., 
E. M. LEONARD, 

Asst. U. S. Atty., 
Proctors for United States of America. 



62 T. S. Vincent et al. vs. 

[Endorsed] : Filed Dec. 23, 1920. W. B. Maling, 
Clerk. By C. M. Taylor, Deputy Clerk. [65] 



[Title of Court and Cause.] 

(Stipulation and Order Re Consolidation of Ap- 
peals.) 
The libelants and each of the defendants in the 
above cause having taken appeals therein to the 
United States Circuit Court of Appeals for the Ninth 
Circuit, from the decree given and made in said 
cause by the said District Court on the 9th day of 
September, 1920, and libelants having filed a praecipe 
for the apostles on said appeal herein, which is cor- 
rect, — 

IT IS STIPULATED that all said appeals shall 
be heard on the apostles called for in said praecipe, 
and that but one apostles shall be sent from said Dis- 
trict Court to said United States Circuit Court of 
Appeals for the Ninth Circuit, and that but one tran- 
script of record shall be printed in said Court of Ap- 
peals, and all of said appeals shall be heard on said 
one transcript. 

Dated: December 15th, 1920. 

H. W. HUTTON, 

Proctor for Libelants. 
KNIGHT & HEGGERTY, 
Proctors for Pacific Mail Steamship Company. 
FRANK M. SILVA, 

United States Attorney, 
E. M. LEONARD, 

Assistant U. S. Attorney, 
Proctors for United States of America. 



The United States of America et al. 63 

It is so ordered. 

Dated December 17th, 1920. 

W. H. HUNT, 
Circuit Judge. \_QQ^ 

[Endorsed] : Filed Dec. 17, 1920. W. B. Maling, 
Clerk. By C. W. Calbreath, Deputy Clerk. [67] 



Certificate of Clerk U. S. District Court to Apostles 

on Appeal. 

I, Walter B. Maling, Clerk of the District Court of 
the United States, for the Northern District of Cali- 
fornia, do hereby certify that the foregoing 68 pages, 
numbered from 1 to 68, inclusive, contain a full, true, 
and correct transcript of certain records and pro- 
ceedings in the case of T. S. Vincent, et. al.. Libelants, 
vs. United States of America and Pacific Mail Steam- 
ship Company, Respondents, No. 16,845, as the same 
now remain on file and of record in this office; said 
transcript having been prepared pursuant to and in 
acocrdance with the praecipe for apostles on appeal, 
and the instructions of proctors for appellants 
herein. 

I further certify that the cost for preparing and 
certifying the foregoing apostles on appeal is the sum 
of Twenty-two Dollars and Thirty Cents ($22.30), 
and that one-half thereof has been paid by proctor 
for libelants and the remainder will be charged 
against the United States in my quarterly account 
for the current quarter. 



64 T. S. Vincent et al. vs. 

IN WITNESS WHEREOF, I have hereunto set 
my hand and affixed the seal of said District Court 
this 27th day of December, A. D. 1920. 

[Seal] WALTER B. MALING, 

Clerk. 
By C. M. Taylor, 
Deputy Clerk. [69] 



[Endorsed] : No. 3614. United States Circuit 
Court of Appeals for the Ninth Circuit. T. S. Vin- 
cent, A. Ramsted, J. M. Johansen, A. B. Eklov, K. 
J. Lindstrom, V. Kukuskin, G. Rein, Philip Morri- 
son, A. H. Raymiller, L. Deppman, W. B. Richards, 
C. W. Ingebretsen, W. Clay, A. Krishlauk, J. Big- 
gins, E. V. Kajaslampi, Antonio Mulct, J. Andersen, 
James W. Oree and George Williams, Appellants 
and Cross-Appellees, vs. The United States of Amer- 
ica and Pacific Mail Steamship Company, a Cor- 
poration, Appellees and Cross- Appellants. Apostles 
on Appeal. Upon Appeal from the Southern Di- 
vision of the United States District Court for the 
Northern District of California, First Division. 

Filed December 27, 1920. 

F. D. MONCKTON, 
Clerk of the United States Circuit Court of Appeals 
for the Ninth Circuit. 

By Paul P. O'Brien, 

Deputy Clerk. 



The United States of America et al. 65 

Libelants' Exhibit No. 1. 
PACIFIC MAIL STEAMSHIP COMPANY. 

508 California Street. 
San Francisco, Cal., May 3rd, 1920. 

Mr. H. W. Hutton, 
Attorney at Law, 

527 Pacific Bldg., 

San Francisco, Calif. 
Subject: Crew — SS. "Jacox." 
Dear Sir: 

Eeplying to your letter of the 27th instant on above 
subject: 

Beg to advise that in respect to this crew, that you 
are probably aware that we made a partial settlement 
and we now have the matter up with the Shipping 
Board, the owners of the vessel, regarding the points 
mentioned in your letter and hope to hear from them 
in a day or so when we will immediately advise you. 

Yours very truly, 
PACIFIC MAIL STEAMSHIP COMPANY, 

H. E. A. RAILTON 
Auditor & Assistant Secretary. 
R/G. 

[Endorsed] : United States District Court. No. 
16,845. Vincent vs. U. S. Lib. Exhibit No. 1. 
Filed Aug. 9, 1920. Walter B. Maling, Clerk. By 
Lyle S. Morris, Deputy Clerk. 

No. 3614. United States Circuit Court of Appeals 
for the Ninth Circuit. Filed Dec. 27, 1920. F. D. 
Monckton, Clerk. 



66 T. S. Vincent et al. vs. 

Libelants' Exhibit No. 2. 

The Government of the Philippine Islands, 

Department of Finance. 

BUREAU OF CUSTOMS. 

Manila. 

March 24, 1920. 

TO WHOM IT MAY CONCERN : 
I hereby certify : 

That the following members of the crew of the 
Shipping Board S. S. " Jacox" which arrived at this 
port February 28, 1920, were considered as deserters 
therefrom for the reason that they refused to proceed 
with her to Hongkong where she had to be delivered : 

C. W. Ingebretsen. James Biggins. 

T. S. Vincent. Philip Morrison. 

A. Krisplanik. J. Jahansen. 

C. V. Kajaslampi. Waldo B. Richards. 

A. B. Ekton. Johan Andreson. 

G. Rein. A. Ramtad. — 

K. Y. Lindstram. Jony Mulct. 

A. Paymiller. James W. Oree. 

V. Kukuskin. George Williams. 

Louis Deppman. John Cottrell. 

Billy Clay. 
That the Pacific Mail Steamship Company at Ma- 
nila who are acting as agents for the said vessel sig- 
nified their willingness to bring the above named 
members of the crew back to Manila and here to make 
the final discharge after such delivery was effected 
if they desired. 



The United States of America et al. 67 

That notwithstanding the agents' statement, the 
said members of the crew of the S. S. " Jacox" in- 
sisted on being discharged at this port without taking 
the said vessel to Hongkong, the port of delivery, on 
the ground that she completed her voyage and de- 
livery was made ; whereupon the Master thereof rated 
the said seamen as such deserters and this office so 
confirms. 

That the Master of the said vessel paid on March 3, 
1920, or three days previous to her departure for 
Hongkong, to the above members of the crew, with 
the exception of John Cottrell, one-half of the wages 
which were then earned by them up to and including 
March 2, 1920. 

[Seal] 

[Signature Illegible] 
Insular Collector of Customs, 
Acting as American Consul at Manila. 

[Endorsed] : United States District Court, No. 
16,845. Vincent vs. U. S. Lib. Exhibit No. 2. 
Filed Aug. 9, 1920. Walter B. Maling, Clerk. By 
Lyle S. Morris, Deputy Clerk. 

No. 3614. United States Circuit Court of Appeals 
for the Ninth Circuit. Filed Dec. 27, 1920. F. D. 
Monckton, Clerk. 



No. 3614 



United States Circuit Court of Appeals 



For the Ninth Circuit 



T. S. Vincent et al., 

Appellants and Cross- Appellees, 

vs. 

The United States of America et al., 

Appellees and Cf^oss- Appellants. 



BRIEF FOR APPELLANTS AND CROSS=APPELLEES. 



H. W. Hutton^ 
Attorney for Appellants 
and Cross-Appellees. 



FILE 

FEB2t 1921 



r. o. MeNcicroN, 

atamc 



No. 3614 

IN THE 

United States Circuit Court of Appeals 

For the Ninth Circuit 



T. S. Vincent et al., 

Appellants and Cross- Appellees, 
vs. 

The United States op America et al., 

Appellees and Cross-Appellants. 



BRIEF FOR APPELLANTS AND CROSS=APPELLEES. 



I. 

STATEMENT OF FACTS. 

The libel in this case was filed by 20 seamen who 
shipped on the S. S. Jacox, owned by the United 
States of America, and operated for it by Pacific 
Mail Steamship Company, the shipment taking 
place in San Francisco, on the 13th day of Decem- 
ber, 1919, for a voyage described in the shipping 
articles entered into before the U. S. Shipping 
Commissioner as follows: 

"From the Port of San Francisco", California, 
to Manila, P. L, for final discharge, for a term 
of time not exceeding six (6) calendar months.'^ 



The shipment was upon a usual printed form, the 
above parts in italics being written in. 

Attached to the shipping articles was a typewrit- 
ten slip which read as follows: 

''Officers, including steward and radio oper- 
ator, shall receive first-class transportation, and 
wages, remainder of crew second-class transpor- 
tation, and wages, to San Francisco, upon ter- 
mination of the voyage." 

Instead of going direct to Manila, the vessel went 
first to Honolulu; from there to Australia, thence 
via ports to Manila, where she arrived on the 28th 
day of February, 1920. The voyage then being up, 
the men demanded their pay and left the service of 
said vessel. A cargo of coal was taken from Aus- 
tralia and discharged in Manila, the vessel shipped 
another crew on March 4th, and sailed from that 
port on March 6th. The allegations of Paragraph 
VII of the libel (Trans, pgs. 6-7) in that behalf are 
not denied. 

The master of the vessel insisted on the men going 
to Hongkong. Libelants, however, refused to go, 
claiming their voyage terminated at Manila, which 
it undoubtedly did. The men, however, said they 
would go to Hongkong if new articles were prepared 
as they were afraid that they would lose transporta- 
tion home if they went to Hongkong on the same 
articles (Trans, pgs. 26, 32, 34-35 and 36). The 
master of the vessel claimed the men were deserters 
for not taking the vessel to Hongkong. The Ship- 
ping Commissioner in Manila said, as far as he 



could see, the men had a right to be paid off in 
Manila (Trans, pgs. 36 and 46). The whole matter 
resulted in one-half of the wages earned being paid 
March 3rd, the men kept in Manila 24 days and 
then sent back to San Francisco as destitute seamen, 
having to work on the way back. In San Fran- 
cisco they were paid wages to the time of arrival, 
that was taken under protest, and this action was 
brought to recover the cost of second-class transpor- 
tation, stipulated to be the sum of $222.50 for each 
passage, and double pay per day for each day subse- 
quent to March 3rd, 53 days in all, that wages were 
withheld from payment in Manila. 

The lower court first found that the men were 
entitled to double pay per day for the days delin- 
quent, but denied the claim for transportation, then 
reduced the double pay to one day's pay, and a 
decree was entered for that amount. Both sides 
appeal. 

II. 

ARGUMENT. 

This voyage ended in Manila. The shipping 
articles provided for a voyage direct to Manila, the 
duration of the voyage not to exceed 6 calendar 
months. No other possible construction can be 
placed on the shipping articles and this court has 
so decided in 

Northwestern S. S. Co. v. Turtle, 89 C. C. A. 
236. 



See also 

The Falls of Keltic, 114 Fed. 793; 

The Hermine, 3 Sawyer 80; 

The Disco, 2 Id. 476; 

Hamilton v. The United States, 268 Fed. 15. 

Subdivision First, Section 4511, of the Eevised 
Statutes requires that the shipping articles shall 
contain the nature and, as far as practicable, the 
duration of the intended voyage or engagement. 
The time is merely put in as an estimate — not as 
the time of service. Shipping articles are construed 
strongly against the owner. 

The Catalonia, 236 Fed. 557. 

It is clear, beyond room for argument, that this 
voyage ended in Manila and the lower court so 
found. 

Independent of the agreement the men would have 
had the right to leave by reason of the deviation of 
the vessel in going to Aiistralia and the ports inter- 
mediate between there and Manila, without consider- 
ing Honolulu. 

The question then arises 

III. 

WHAT WERE THE CONTRACTUAL RIGHTS OF THE MEN? 

Their contractual rights were as follows: 

"Officers, including steward and radio oper- 
ator, shall receive first-class transportation, and 
wages, remainder of crew second-class transpor- 
tation, and ivages, to San Francisco, upon termi- 
nation of voyage." 



The voyage having terminated at Manila, each 
man was entitled to receive wages earned at least, 
and a second-class ticket, or arrangements for 
second-class transportation to San Francisco. It will 
probably be urged that the wages could not be com- 
puted as it could not be then determined when the 
men would arrive in San Francisco. In reply to 
what we anticipate, we say, that in these days of 
steamer travel, it is not at all difficult to determine 
what the date of arrival will be in any port. Steam- 
ers run with almost the regularity of railroad trains. 

What was done? The master designated the men 
as deserters without a shadow of a reason and his 
actions must have been for the purposes of coercing 
the men into going to Hongkong, as he paid them 
one-half of their wages, entirely negativing the idea 
that he considered them deserters. If deserters, 
they would not have been entitled to anything. Upon 
arrival in San Francisco they were paid the balance, 
thus showing that if they were ever thought de- 
serters, the thought was abandoned. 

Their legal rights were as follows: 

Section 4529, Revised Statutes, as amended March 

4th, 1915 (S. L. 38 pg. 1164) : 

''The master or owner of any vessel making 
* * * foreigTi voyages shall pav to every sea- 
man his wages * * * within twenty-four 
hours after the cargo has been discharged, or 
within four days after the seaman has been 
discharged, whichever first happens; and in all 
cases the seaman shall be entitled to be paid at 
the time of his discharge on account of wages 



a sum equal to one-third part of the balance 
due him. Every master or owner who refuses 
to make payment in the manner hereinbefore 
mentioned without sufficient cause shall pay to 
the scau^an a sum equal to two days' ]iay for 
each and every day during which payment is 
delayed beyond the respective periods, which 
sum shall be recoverable as wages in any claim 
made before the court. * * *" 

The men were entitled to one-third of what they 
had earned, at least, on February 28th. The ship- 
ping articles say to "Manila P. I. for final dis- 
charge". The arrival itself constituted a discharge 
and if any act w^as required to be performed by the 
master he could not withhold that act and take ad- 
vantage of his own wrong. The law will regard that 
as done which should have been done. 

1920 was a leap year, and on March 3rd, four days 
afterwards, the men were entitled to the whole of the 
money and a second-class ticket. The whole of the 
cargo was discharged, that also gave them the right 
to their money. 

The only defense would be that there was suffi- 
cient cause for withholding the payment. In this 
case there was no cause at all. The Shipping Com- 
missioner at Manila so said (Traus. pgs. 36 and 46) : 

The decisions on the subject are as follows: 

This court, in Sr-hmitt v. Pacific Mail S. S. Co. : 

''We are of the opinion that no sufficient 
cause was shown for the refusal of the appel- 
lant to pay the libelant his wages upon his dis- 
charge from the service. * * * 



The further contention is made that it has 
been uniformly held that the penalty will not 
be imposed in any case where there is a fair 
ground of despite. Conceding the justice of the 
rule, we are of the opinion that the evidence in 
the present case does not show^ any such fair 
ground of despite." 

In that case a custom to charge men for lost silver- 
ware was pleaded. In this case we have nothing. 

The George W. Wells, 118 Fed. 761 : 

''The phrase 'without sufficient cause' should 
rather be construed as equivalent to 'without 
reasonable cause'." 

The Express, 129 Fed. 129 : 

"The statute is a penal statute, intended to 
punish masters of vessels who, without any just 
excuse, arbitrarily refuse to pay seamen their 
wages when due." 

The City of Montgomery, 216 Federal 673 : 

"The meaning of the articles is by no means 
free from doubt," 

farther down the page we find. 

"If, therefore, the seaman had carried out his 
agreement so far as duration of service was 
concerned, the next question is whether the pro- 
vision postponing the payment of wages is law- 
ful." (then follows the law which has been 
amended from one to two days pay) "It is 
claimed that the provisions of this statute may 
be waived and in support of this view claimant 
cites (cases cited) I think these cases are dis- 
tinguishable from that at bar, but, in any event, 
I am of the opinion that the master and seaman, 
cannot, by contract, abrogate the provisions of 
Section 4529, without enlarging on the history 



8 



of legislation of this character, it may said that 
Congress has long regarded seamen as words 
whose rights must be safeguarded. The re- 
quirement to pay them promptly is not to be 
overrided. If, in the practical conduct of a 
responsible steamship company, such a pro- 
vision is found inconvenient or otherwise un- 
satisfactory, the remedy is by appeal to the 
legislative body, but the courts must construe 
such a statute, not merly by its letter, but in 
sympathy with its object." 

(Page 676.) "It remains to determine 
whether claimant must pay the penalty pre- 
scribed by the statute where the master or owner 
neglects to pay 'without sufficient cause', I can 
readily imagine occasions w^here the master re- 
fuses or neglects to pay for 'sufficient cause'. 
Such an instance is illustrated in The Amazon, 
(D. C.) 144 Fed. 154. 

"In George W. Wells, (D. C.) 118 Fed. 761, it 
was not necessarily to be expected that a master 
would know^ that an outstanding assignment of 
wages, was void as a matter of law. But, in 
the case at bar, the failure to pay is because of 
the articles themselves, and the fault is clearly 
attributable to the ow^ner. But, whether in such 
instance the fault is of the owner or master, the 
result is the same. 

To hold that an owner or master may escape 
the penalty prescribed in the very statute whicli^ 
he seeks to avoid is to strip the statute of the 
precise purpose for which, in that j)articular, it 
w^as enacted. However debatable a question 
arising under a statute may be, it is no excuse 
til at one has made an honest error in the inter- 
pretation of that statute/^ 

In the case of The Sadie C. Sumner, 148 Fed. 611- 
613, it was held there was a fair ground for contro- 
versy. 



In the ease of The Sentinel, 153 Fed. 564-566, the 
court found there was a reasonable ground for dis- 
pute. 

In the case of The Amazon, 144 Fed. 153, 154, the 
men left and it was claimed they were deserters. 

In the case of the Topsy, 44 Fed. 631, it was held 
there was a reasonable ground for dispute. 

In the case of The Wexford, 3 Fed. 577, the vessel 
w^as sold and it was held there was fair ground for 
dispute. 

The Shipping Commissioner did not decide that 
the men were deserters, he decided they were en- 
titled to their money. 

The Insular Collector of Customs did not decide 
the men were deserters. On March 24th, he wrote 
a letter stating that the master did as follows: 

"Whereupon the Master thereof rated the 
said seamen as such deserters and this office so 
confirms'' (Trans, pg. 67). 

That is simply a confirmation that the master had 
rated the men as deserters, not that the Collector 
of Customs so rated them. 

It is true he threatened them with imprisonment 
if they did not go to Hongkong. That must be 
considered as an attempted coercion — not that he 
thought they were required to go. 

We respectfully submit that there was no excuse 
for not paying the first one-third, then the whole of 
the balance of the wages on Mai'ch 3rd and that the 
penalty should be imposed. 



10 



IV. 

WHAT IS THE AMOUNT OF THE PENALTY? 

The law is clear. It says two days' pay. The 
lower court first fixed it at two days' pay, then re- 
duced it to one, on the theory that the wages paid 
to the time of return was a credit. We think the 
court was manifestly in error in so deciding as the 
wages to the time of arrival were stipulated in the 
contract, as follows: 

"and wages, to San Francisco, upon termina- 
tion of voyage". 

The wages were for time consumed. No one 
would work under any different rule. If the vessel 
had gone straight to Manila and the men had been 
able to get a vessel the day after her arrival to re- 
turn, it is manifest it would have taken as long 
to return as it did to go out. Unless paid to the 
time of return the earnings would be reduced one- 
half. Who would wish to work under such a con- 
tract, particularly at that time w^hen work was 
plentiful. The owner was not forced to sign a con- 
tract to pay until return. Common understanding, 
however, dictates that he could not have got a crew 
if it did not. The men were delayed 24 days in 
Manila. How^ever, no one would leave San Fran- 
cisco and take chances on such or any delay. They 
might have been detained there two months with a 
corresponding decrease in average monthl}^ earn- 
ings. The lower court did not appreciate the dif- 
ference between wages for time consumed and 



11 



double pay for non-payment of wages. They are 
entirely distinct and separate matters. 

We respectfully submit that the decree should be 
reversed on that ground and an order for two days' 
pay be made, as per the fii'st opinion. 

V. 

TRANSPORTATION. 

The contract is clear. It reads: 

'^ remainder of crew second-class transporta- 
tion". 

That means but one thing, that the crew shall 
be sent home as passengers. Instead of that they 
were sent home as destitute seamen on a transport 
and had to work their way over (Trans, pgs. 40, 41). 

The $22.50 is the amount the government charges 
on transports, when a man works. The men worked 
dishing out food for the soldiers, etc. (Trans, pg. 
40). The law required them to work as destitute 
seamen (Sec. 4577, Rev. Stat.). 

These men had earned the second-class ticket by 
proceeding to Manila. They should not be required 
to earn passage over again by working on the way 
back and thus earn their passage twice over. The 
owner was under contractual obligations to send 
them home as passengers and it profited to the ex- 
tent of the difference between $222.50, what it 
would have cost if the owner had kept his contract, 
and $22.50, what it actually paid. 



12 



No one is allowed to profit by his own wrong and 
the men are entitled to the difference in value be- 
tween what they were entitled to under their con- 
tract and what thy actaully received. They were 
damaged to that extent. 

We know of no rule of law that allows any person 
to satisfy a debt of $222.50 by the payment or giving 
a thing worth $22.50 and that taken under protest 
(Trans, p. 28). 

The rule of damages in a case such as this, is laid 
down in 

Rayner v. Jones, 90 Cal. 78. 

In that case a party had contracted to deliver cer- 
tain land warrants and failed to do so. The court 
found that the true measure of damages was the 
market value of the warrants, less what was unpaid 
on the purchase price. We fail to see any difference 
between that case and where the obligor contracts to 
either deliver a second-(^lass ticket or its equivalent. 

If an attorney had been similarly situated, or a 
person in any other line of business was sent to 
Manila with a written contract to the effect that 
he should receive second-class transportation back, 
and was then sent home as a destitute seaman, no 
one would question his right to the difference in the 
value of what his contract called for and what he 
actually received. We cannot see why there should 
be any different rule for a seaman. 

We respectfully submit that the court erred in 
deciding that the transportation furnished satisfied 
the contract. 



13 



VI. 

RELEASE. 

The release is for wages alone and the contentions 
of defendants in its behalf are completely met by 
the following decision of this court : 

Billings V. Bausback, 200 Fed. 523. 

Independent of that, the men were distinctly told 
when signing that the release was not binding as 
to other claims (Trans, pg. 30). 

*'Q. Did the Shipping Commissioner tell 
you anything before you signed it ? 

A. We asked him if this was a final dis- 
charge, and he said, 'No, you have a right to 
sue for anything you think you are liable to 
get, for anything you think you have against 
the comjiany'. There were five of us there when 
he said that." 

Defendant Pacific Mail Steamship Company had 
the same view. May 3rd it wrote the proctor for 
libelants as follows (Trans, pg. 20) : 

''Subject S. S. Jacox. 
Replying to your letter of the 27th instant on 
above subject beg to advise that, in respect of 
this crew, that you are probably aware that we 
made a partial settlement and we now have the 
matter up with the Shipping Board, the owners 
of the vessel regarding the points mentioned in 
your letter, and hope to hear from them in a 
day or so, when we will immediately advise 
you." 

That seems conclusive; but Section 4531 of the 
Revised Statutes, as amended in 1915, reads in 
part : 



14 



''Notwithstanding any release signed by any 
seaman under section 4552 of the Revised Stat- 
utes any court having jurisdiction may upon 
good cause shown set aside such release and 
take such action as justice may require." 

The purpose of that section was to enable a sea- 
man to get money to live on while he litigated dis- 
puted items and not compel him to take less than 
was owing to keep himself from starving, and have 
that called final. 

VII. 

FOOD. 

We respectfully submit that all of the testimonj^ 
shows the food was insufficient and that the findings 
of the court in that regard are final. We say the 
same as to the overtime of Williams. Tlie food 
alone would have warranted the crew in refusing to 
proceed further than Manila. 

We respectfully submit that the decree of the 
lower court should be reversed and a decree ordered 
as follows: 

For two days pay for fifty- three (53) days. 

For the sum of $200.00 each difference in cost of 
transportation. 

And the decree allowed to stand for the food and 
overtime. 

Dated, San Francisco, 
February 19, 1921. 

H. W. HUTTON, 

Attorney for Appellants 
and Cross-Appellees. 



ADDENDA 



There was a deviation and the men would have 
been justified in leaving the vessel at Sydney. This 
court decided in Northwestern S. S. Co. v. Turtle, 
89 C. C. A. 236, where the articles were about iden- 
tical, page 237, 

"To comply with those articles, the vessel, 
after leaving the port of departure, was bound 
to proceed directly by the ordinary route to 
Shanghai, and to touch at no intermediate port, 
^nless the exigencies of the voyage required that 
she enter the same for coal, supplies, repairs, or 
other like reasons. Under those_ articles the 
vessel was not permitted to touch at any other 
or intermediate port for discharge of cargo be- 
fore going to Shanghai." 

In the recent case of Hamilton et al. v. the United 
States, 268 Fed. 15, decided by the Circuit Court of 
Appeals for the Fourth Circuit, July 6, 1920, the 
court says, on page 18: 

''on the other hand, seamen are entitled to their 
wages and discharge when the ship reaches the 
port of destination before the expiration of the 
stipulated time of the voyage," (Several cases 
cited). 

His PTonor, Judj^e Eudkin, decided that the voy- 
age terminated at Manila (Trans,, page e50). 

There is nothing in the law that authorizes a con- 
sul to decide anything. A shipping commissioner 
may, when the controversy is submitted to him in 
writing, but not otherwise (Graves v. the W. F. 



u 



Babcock, 29 C. C. A. 524). Bad advice would not 
create a cause if none otherwise existed, and Sec. 
4535 R. S. is conclusive against the right of a con- 
sul to forfeit a seaman's rights. 

It was the absolute duty of the consul to see that 
the men received their pay in Manila (R. S. 4548, 
4580, 4581). 

It would have been unlawful for the men to have 
left Manila without a new agreement (R. S. 4515, 

4517). 

This vessel discharged her cargo of coal at Manila, 
so the cases cited on pages 21 and 22 of the brief 
of the United States have no application, if it were 
otherwise possible they could apply (Trans., 40-45). 
We can see no difference between this case as to the 
release and the case of Billings v. Bausbach decided 
by this court. The release reads the same, the re- 
lease is for wages alone. As to short provisions, as 
in the case of Billings, the statute reads they shall 
be recoverable as wages. In the case of the statu- 
tory penalty it reads : 

''shall be recoverable as wages in any claim 
made before the court." 

It would seem that Congress intended that the 
claim for the penalty could be asserted in anij claim, 
and that nothing but payment would satisfy the 
demand if it had foundation. 

The fact of the payment of one-half the wages in 
Manila, and wages for the full period of service at 



Ill 



San Francisco, is a complete refutation of the claim 
that the men were ever considered deserters. 

As to the deduction of the penalty on account of 
wages paid for time consumed, we respectfully sub- 
mit, that it is a matter of common knowledge, that 
when a man goes from the city of his residence 
to work for another, he is invariably paid wages 
to the time of his return unless it is stipulated to 
the contrary, in this case the stipulation was that 
wages should be paid to the time of return. 

Respectfully, 

H. W. HUTTON, 

Proctor for Libelants, Appellants 
and Cross- Appellees. 



No. 3614 

IN THE 



United States Circuit Court of Appeals 



For the Ninth Circuit 



T. S. VINCENT, A. RAMSTED, J. M. JO- 
HANSEN, A. B. EKLOV, K. J. LIND- 
STROM, V. KUKUSKIN, G. REIN, 
PHILIP NORRISON, A. H. RAYMIL- 
LER, L. DEPPMAN, W. B. RICHARDS, 
C. W. INCEBRETSEN, W. CLAY, A. 
KRISHLAUK, J. BIGGINS, E. V. KA- 
JASLAMPI, ANTONIO MULET, J. AN- 
DERSEN, JAMES W. OREE, AND 
GEORGE WILLIAMS, 

Appellants and Cross-Appellees, 

vs. 

THE UNITED STATES OF AMERICA, 
AND PACIFIC MAIL STEAMSHIP 
COMPANY, a corporation. 

Appellees and Cross- Appellants. 

BRIEf Of APPELLEE AND CROSS-APPELLANT 

UNITED STATES OF AMERICA 

Upon Appeal from the Southern Division of the 
United States District Court for the North- 
ern District of California, i]ijst 
Division in Adniiraltv. • ^ 



FRANK M. SILVA, 

United States Attorney. 

FREDERICK MILVERTON, 

Speeial Assistant U. S. Attorney in Admiralty. 

Proctors for Appellee and Cross-Apellant, 

United States of Arn erica. 



Neal, Stratford & Kerr. S. K 11521 



No. 3614 

IN THE 

United States Circuit Court of Appeals 

For the Ninth Circuit 



T. S. VINCENT, A. RAMSTED, J. M. JO- 
HANSEN, A. B. EKLOV, K. J. LIND- 
STROM, V. KUKUSKIN, G. REIN, 
PHILIP NORRISON, A. H. RAYMIL- 
LER, L. DEPPMAN, W. B. RICHARDS, 
C. W. INGEBRETSEN, W. CLAY, A. 
KRISHLAUK, J. BIGGINS, E. Y. KA- 
JASLAMPI, ANTONIO MULET, J. AN- 
DERSEN, JAMES W. OREE, AND 
GEORGE WILLIAMS, 

Appellants and Cross- Appellees, 

vs. 

THE UNITED STATES OF AMERICA, 
AND PACIFIC MAIL STEAMSHIP 
COMPANY, a corporation. 

Appellees and C ross- Appellants. 



BRIEr OF APPELLEE AND CROSS-APPELLANT 

UNITED STATES OF AMERICA 

Upon Appeal from the Southern Division of the 
United States District Court for the North- 
ern District of California, First 
Division in Admiralty. 



STATEMENT OF THE CASE. 

On the 30th day of April, 1920, the Appellants and 
Cross- Appellees, who will be hereinafter referred to 
as the libelants, filed a libel in personam in the 
Southern Division of the United States District 
Court for the Northern District of California, First 
Division, in Admiralty, against the Appellees and 
Cross- Appellants, who will hereafter be referred to 
as the defendants, claiming to be entitled to recover 
from the defendants the statutory penalty of wages 
for two days for each of the days from the 4th of 
March, 1920, to the 26th of April, 1920, at double 
pay, because of an alleged failure to pay wages due 
them on the 4th day of March, 1920, as members of 
the crew of the Steamer ''Jacox." The libelants 
also claimed the sum of $244.00 each by reason of 
the alleged failure of the defendants to furnish them 
transportation from Manila, the port of final dis- 
charge of the vessel, to the port of San Francisco; 
the sum of $71.50 each for food and lodging while 
at Manila awaiting transportation to San Francisco, 
and $1.00 per day each for each of the days they 
claim they were short of potatoes and bread, for a 
period of twelve and ten days respectively, during 
the voyage of the "Jacox". The libelant George 
Williams claimed an additional amount of $17.40 
for overtime while serving on the vessel. (Tr. p. 8.) 

The libel alleged that the "Jacox", during the 
period covered by the libelants' claims, was an 
American vessel engaged in the merchant service of 



the United States, and was owned either by the 
United States Shipping Board or the United States 
Emergency Fleet Corporation, and operated jointly 
by one of said bodies and the Pacific Mail Steamship 
Company, and that on the 13th of December, 1919, 
the libelants were hired and employed by those oper- 
ating the vessel, at the port of San Francisco, Cali- 
fornia, to serve as seamen on the "Jacox" on a 
voyage from that port, described in shipping articles 
signed by the master of the vessel and each of the 
libelants before the United States Shipping Com- 
missioner at San Francisco, as follows: 

' ' From the port of San Francisco, California, 
to Manila, P. I., for final discharge, for a term 
of time not exceeding six (6) calendar months." 

The libel further alleged that attached to and 
forming a part of the shipping articles was the 
following : 

"Officers, including steward and radio opera- 
tor, shall receive first-class transportation, and 
wages, remainder of crew second-class trans- 
portation, and wages, to San Francisco, upon 
termination of the voyage." 

The libel also recited that each of the libelants 
went on board and into the service of the vessel as 
mem])ers of her crew on the 13th of December, 1919, 
and that thereupon the vessel proceeded first to Ho- 
nolulu, thence to Sydney, and thence to Newcastle, 
Australia, all in violation of the shipping articles, 
and then from Newcastle to Manila, at which port 



she arrived on February 28, 1920. That on the 29th 
of February, 1920, their term of service having ex- 
pired, the libelants each left the vessel and each 
demanded wages up to that time ; that the vessel was 
then in a position of safety, but the master refused 
to pay such wages, and thereafter and on the 3rd 
of March, 1920, the operators of the vessel paid to 
each of the libelants sums which, with what had 
theretofore been paid them, equalled one-half of 
what each had earned up to February 29, 1920, and 
thereupon demanded of each of the libelants that 
they proceed on the vessel, in their various capaci- 
ties, from Manila to Hongkong, China; that the li- 
belants each refused to so proceed on the vessel, and 
no other or further sum was paid to them at Manila, 
or at all, until April 26, 1920, at San Francisco, Cali- 
fornia. That the operators of the vessel hired and 
employed other men to take libelants' places thereon 
on the 4th day of March, 1920, and with such other 
men the vessel left Manila for Hongkong on March 
6, 1920. The libel further set out that the master and 
operators of the " Jacox" refused to furnish trans- 
portation for any of the libelants from Manila to San 
Francisco, the cost of which was $244.00 for each of 
the libelants, but that libelants were sent from Manila 
to San Francisco by the customs authorities at Man- 
ila, as destitute seamen, upon the United States 
Army Transport "Thomas", and were each com- 
pelled to work as a seaman on such passage. The 
libelants remained in Manila twenty-three days 
awaiting transportation to San Francisco, and 



claimed that by agreement the operators of the 
vessel were to pay them $2.75 per day each for board 
and lodging during this period, but that the opera- 
tors of the vessel had refused to pay any of this 
amount. The libelants further alleged that while 
serving in their respective capacities on the " Jacox" 
on her voyage from Newcastle to Manila, no potatoes 
were furnished to any of the libelants for twelve 
days because there were none on board, and no sift 
bread was furnished for ten days, and no substitutes 
given therefor. It was further alleged in the libel 
that the libelant George Williams worked twenty- 
nine hours overtime on the "Jacox" by order of her 
steward, his superior officer thereon, for which the 
operators of the vessel agreed to pay at the rate of 
60c an hour, but for which overtime no payment had 
been made. (Tr. pp. 4-8.) 

The answer of the United States alleged that the 
United States is and was the owner of the "Jacox" 
on all of the times mentioned in the libel, and that 
the vessel was being operated and managed by the 
defendant the Pacific Mail Steamship Company at 
all of such times as the agent of the United States. 
The answer also alleged that notwithstanding the 
contents of the shipping articles as set forth in the 
libel, it was contemplated by all of the parties con- 
cerned, including the libelants, that the voyage of 
the vessel was to be for a period not to exceed six 
months, and was to include the ports of Sydney and 
Hongkong, that the crew of the vessel were to be 
finally discharged at Manila, and that the shipping 



articles contemplated the return of the crew from 
Manila to San Francisco after her final discharge, 
and after a voyage to Hongkong had been completed. 
The answer denied that the vessel proceeded in any 
manner in violation of the shipping articles, and 
that the term of service of libelants expired on Feb- 
ruary 29, 1920, or expired before June 13, 1920. The 
answer alleged that if the voyage had been completed 
as contemplated, libelants would have been furnished 
transportation to San Francisco, and denied that the 
cost for transportation for libelants from Manila to 
San Francisco was $244.00 for each of them ; that they 
were compelled to work as seamen on such passage ; 
and that the operators of the vessel agreed to pay 
libelants for board while they were awaiting passage 
to San Francisco at Manila ; and denied the allega- 
tions of the libel as to the failure to furnish potatoes 
and bread. The answer also denied, because of lack 
of sufficient information and belief in regard to the 
matter, the allegation that George Williams worked 
overtime on the '' Jacox", and demanded full proof 
thereof, and denied also the allegations of the libel 
upon which were based the claim of the libelants for 
two days wages each for each of the days from the 
4th of March, 1920, to the 26th of April, 1920. (Tr. 
pp. 11-14.) 

As a separate answer and defense to the libel, the 
United States alleged that on April 21, 1920, before 
the United States Shipping Commissioner at San 
Francisco, California, all of the libelants, each for 
himself, by his own signature, released the owner 



of the '' Jacox" from all claims whatsoever by sign- 
ing a mutual release to the following effect: 



*' Mutual Release 



Form 713 



Department of Commerce 
Bureau of Navigation 
Shipping Service. 

'*We, the undersigned, seamen on board the 
S. S. ' Jacox' on her late voyage from San Fran- 
cisco to , do hereby, each one 

for himself, by our signatures herewith given, 
in consideration of settlements made before the 
Shipping Commissioner at this port, release the 
master and owners of said vessel from all claims 
for wages in respect of the said past voyage or 
engagement, and I, master of said vessel, do also 
release each of the seamen signing said release 
from all claims in consideration of this release 
signed by them. 

Dated: April 21, 1920. 

PACIFIC MAIL STEAMSHIP CO. 

By W. E. Stanton. 

"Attest as to said master and the , 

whose signatures appear below. 

Signed S. W. TIBBS, 
Deputy Shipping Commissioner." 

The separate answer and defense also set out that 
at the time of signing the mutual release each of the 
libelants were paid full compensation for services 
rendered by them up to and including the date of 
such signing. (Tr. pp. 14-15.) ^ 



8 

By way of answer to interrogatories propounded 
by the libelants to the defendants, the United States 
set out that the libelants were not paid their wages 
in Manila for the reason that they had been declared 
deserters by the United States Shipping Commis- 
sioner at that port; that the " Jacox" carried a cargo 
of coal from Newcastle, New South Wales, to Man- 
ila, consigned to Macondray & Company at Manila; 
and that transportation was not furnished libelants 
from Manila to San Francisco, for the reason that 
they had been declared deserters by the United 
States Shipping Commissioner at Manila and there- 
fore were not entitled thereto. (Tr. pp. 15-16.) 

A hearing upon the issues thus made was had on 
August 6, 1920, at which time the cause was argued 
and submitted. (Tr. pp. 17-22.) 

On August 18, 1920, the District Judge rendered 
a memorandum oioinion in which the following con- 
clusions were set forth: 

First : That the voyage terminated at Manila and 
that the respondents had failed to show sufficient 
cause for failure to pay the seamen the wages due 
them and had therefore incurred the penalty im- 
posed by law. 

Second: That the libelants were entitled to trans- 
portation, second-class, from Manila to San Fran- 
cisco, and not to the cost of such transportation, and 
that as they were, in fact, transported free of charge 
on a Government transport and received the same 
treatment as was accorded to American soldiers, 



working only one hour every other day to secure 
certain privileges or better treatment, they were not 
entitled to recover the cost of transportation. 

Third: That the testimony fairly established the 
fact that the libelants were not furnished potatoes 
for a period of ten days but that there was a failure 
of proof as to the failure to furnish bread, the testi- 
mony on the latter point being uncertain, and the 
complaint seemingly going to the quality of the 
bread furnished rather than the failure to furnish 
bread at all. * 

Fourth: That the maintenance furnished libelants 
while awaiting transportation at Manila was satis- 
factory and paid for by the defendants, so that there 
was no basis for the recovery of 75c per day, the 
difference between the amount paid and the amount 
of maintenance agreed on; and 

Fifth: That there seemed to be no defense to the 
claim for overtime on the part of the libelant Wil- 
liams. (Tr. pp. 48-51.) 

By a supplemental memorandum filed on August 
31, 1920, the District Judge, in passing upon a claim 
made by counsel for the libelants that the libelants 
should be awarded double wages from the 4th of 
March, 1920, to the 25th of April, 1920, notwith- 
standing the fact that they had already been paid 
single wages for the same period, it was held that 
under the terms of the shipping articles, the libelants 
were entitled to wages to San Francisco upon the 
termination of the voyage, and that such wages had 



10 

been in fact paid; that if they were now awarded 
double pay for the same period, the result would be 
that they would be paid thrice, and that equity and 
justice required no more than the payment of double 
wages in all covering the period of default. (Tr. 
pp. 51-53.) 

On September 9, 1920, a final decree was rendered 
in the cause based upon the opinions theretofore 
filed, and from such final decree both the libelants 
and the defendants appealed to this Court. (Tr. pp. 
53-55.) 

In the notice of appeal filed by the libelants, the 
questions upon which they desire a review were lim- 
ited to the action of the District Court in fixing the 
amount of the penalty for the non-paj^ment of their 
wages when they should have been paid in Manila, 
on March 4, 1920, to one day's pay per day for fifty- 
three days instead of two days' pay per day for 
fifty-three days, and the action of the District Court 
in deciding that libelants were not entitled to judg- 
ment for the sum of $222.00 each, the cost of a 
second-class passage from Manila to San Francisco. 

SPECIFICATIONS OF ERRORS RELIED 
UPON BY THE DEFENDANTS. 

1. That the Court erred in entering its decree 
awarding to each of said libelants the penalty pro- 
vided for non-payment of seaman's wages by Section 
4529 of the Revised Statutes of the United States, 
from and including the 4th day of March, 1920, to 
and including the 24th day of April, 1920. 



11 

2. That the Court erred in awarding to each of 
libelants the further sum of ten dollars ($10.00) for 
shortage of i^otatoes for ten (10) days. 

3. That the Court erred in awarding to libelant 
George Williams the sum of seventeen dollars and 
forty cents ($17.40) for overtime work. 

4. That the Court erred in awarding the costs to 
said libelants. 

BRIEF OF THE ARGUMENT. 

The argument may be conveniently divided into 
five parts, embracing the following propositions: 

First: The evidence does not establish that there 
was any failure to furnish libelants with sustenance 
in accordance with the statutes, or that the libelant 
Williams was entitled to any compensation for over- 
time. 

Second: Under the Shipping Articles, libelants 
were entitled to second-class transportation from 
Manila to San Francisco, and were not entitled to 
be paid its cost or value. 

Third: The release executed by the libelants at 
San Francisco on April 21, 1920, constituted a 
waiver of all claims and demands by reason of the 
withholding of wages. 

Fourth: The libelants were deserters and there- 
fore were not entitled to recover the statutory pen- 
alty because of the alleged withholding of wages, and 
were not entitled to transportation from Manila to 
San Francisco. 



12 

Fifth: Assuming that libelants were not deserters, 
no penalty for withholding wages should have been 
awarded by the Court under the circumstances of the 
case. 

I 

The evidence does not establish that there was any 
failure to furnish libelants with sustenance in ac- 
cordance with the statutes, or that the libelant Wil- 
liams was entitled to any compensation for overtime. 

The Court below found that there was a failure of 
proof as to the neglect to furnish bread to the libel- 
ants as alleged in the libel, and in view of the lim- 
ited review requested by counsel for the 'libelants in 
his notice of appeal, that finding is not now open for 
consideration. The Court below, however, did find 
that the libelants were not furnished potatoes for a 
period of about ten days and therefore awarded to 
them the statutory penalty. The evidence in sup- 
port of this finding is extremely meager, and is based 
entirely upon the deposition of Andrew G. Ramsted, 
one of the libelants, who testified that putting all 
the meals together upon the whole trip of the '' Ja- 
cox", there was the equivalent of about ten days, 
counting three meals a day, when the libelants were 
without potatoes. (Tr. p. 43.) The vessel he said 
pulled into Balak Papen, Batavia, for provisions, 
and her Master got some potatoes there, but sent 
them ashore again because they were too small to 
eat, and got about a basketful from some American 
ship lying there. (Tr. p. 31.) It was stipulated 
during the hearing that there was an abundance of 



13 

food on board the " Jacox" when the vessel left San 
Francisco. (Tr. pp. 21-22.) It nowhere appears 
in the record that there was no proper substitute 
furnished for the potatoes, or that they could have 
been obtained when needed while the vessel was on 
her voyage. In The Silver Shell, 255 Fed. 340, it 
was held that under Sections 4612 and 4568, of the 
Revised Statutes, the owner of the vessel is not 
liable for poor cooking where good food has been 
provided, or for the substitution of wholesome equiv- 
alents for provisions which could not be obtained 
in foreign ports. 

So far as the claim of the libelant George Wil- 
liams for overtime is concerned, paragraph X of the 
answer of the United States denied the allegations 
of the libel covering that claim, and demanded full 
proof thereof. No legal proof was offered by libel- 
ants in support of the claim, but there were offered 
in evidence by libelants upon the taking of the depo- 
sition of the libelant Ramsted, "for what they were 
worth," two sheets, stated by counsel for libelants to 
be overtime sheets apparently signed by the steward 
of the vessel. (Tr. p. 32.) These sheets were never 
properly authenticated and were not incorporated 
in the Apostles on Appeal, and there is nothing in 
the record to show what they contained. The Dis- 
trict Judge awarded the libelant Williams compen- 
sation for overtime upon the theory that there was 
no defense to his claim, and not because of any evi- 
dence supporting it. That theory overlooked the 
fact that paragraph X of the answer specifically 



14 

denied the allegations upon which this claim was 
based, and demanded full proof thereof. 

II. 

Under the Shipping Articles, libelants were en- 
titled to second-class transportation from Manila to 
San Francisco, and were not entitled to he paid its 
cost or value. 

The shipping articles provided that the crew 
should receive second-class transportation, and 
wages, to San Francisco, \v^o\\ the termination of 
the voyage. It was stipulated between the parties 
that the cost of a second-class passage from Manila 
to San Francisco at the time of libelants leaving the 
*'Jacox" in Manila, during the month of March, 
1920, was the sum of $222.50. (Tr. p. 61.) There 
is no competent evidence in the record as to the value 
of the transportation actually furnished the libelants 
aboard the Army Transport "Thomas" upon their 
return to San Francisco. The witness Ramsted 
testified that he heard from the ship's crew that the 
passage for each man from Manila was $22.50. This 
testimony, however, was mere hearsay, and there is 
nothing in the record to indicate that the libelants 
were not furnished second-class passage, or its equiv- 
alent, aboard the "Thomas". They were transported 
free of charge on the transport, and received the 
same treatment as was accorded to American sol- 
diers, working only one hour every other day to 
secure certain privileges, and the Court below so 
held, and found that, under these circumstances, 



15 

they were not entitled to recover the cost of trans- 
portation. The shipping- articles are specific that 
the libelants were to receive transportation, and 
there is nothing in the articles from which it can 
be gathered that they would be entitled to its cost 
or value under the circumstances existing in this 

case. 

Ill 

The release executed hy the libelants at San Fran- 
cisco on April 21, 1920, constituted a waiver of all 
claims and demands by reason of the withholding of 
wages. 

The mutual release signed by the libelants and the 
Master of the " Jacox" before the Shipping Commis- 
sioner at San Francisco on April 21, 1920, purport- 
ed to release the Master and owners of the " Jacox" 
from all claims for wages in respect of the voyage 
or engagement. Such a release, properly attested, 
as this was, and given without fraud or coercion, by 
seamen upon the payment to them of their wages for 
a voyage, is conclusive upon them as a settlement of 
all claims on account of such wages. Tlie Pennsyl- 
vania, 98 Fed. 744, 111 Fed. 931. AVhile it is true 
that in the case of Billings vs. Bausback, 200 Fed. 
523, 528, it was held that a release signed by seamen 
on their discharge at the end of a voyage, releasing 
the Master and owners from all claims for wages 
in respect of the voyage or engagement, did not de- 
bar them from the right to sue under Section 4568 
of the Revised Statutes, to recover for a reduction 
of allowance, or for the bad quality of the provisions 



16 

furnished, yet, it is submitted, such a holding is 
distinguishable from the case at bar. The present 
case does not involve an action to recover a penalty 
because of the furnishing of inferior provisions, 
which is a matter having no relation to the matter 
of wages, but is one brought specifically to enforce 
the payment of a penalty equivalent to wages or 
pay from March 4, 1920, to the time the libelants 
arrived in San Francisco. In The Charles L. Baylis, 
25 Fed. 862, the court held that Section 4529 of the 
Revised Statutes was designed to be enforced in 
favor of the seamen as compensation for delay in 
paying them their dues, and that the extra pay pro- 
vided by the Statute was incident to their claim for 
wages proper, and ranked with their wages as a 
prior lien. It was evidently contemplated by Con- 
gress that where wages had been wilfully and wrong- 
fully witlilield without sufficient cause, the sailor, by 
reason of the very nature of his calling, would be 
compelled to lose time while attempting to collect the 
amount due him, and it was to reimburse him for 
the loss of this time that pay, in the nature of wages 
and as an incident to a claim for wages already 
earned, should be awarded. 

IV 

The lihelants tvere deserters and therefore were 
not entitled to recover the statutory penalty because 
of the alleged tvithholding of wages, and were not 
entitled to transportation from Manila to San Fran- 
cisco, 



17 

Upon the arrival of the "Jacox" at Manila on 
February 28, 1920, a controversy arose between the 
Master of the vessel and the libelants as to whether, 
under the shipping articles, the libelants could ])e 
required to proceed with the vessel to Hongkong, 
and be thereafter returned to Manila for final dis- 
charge. The witness Ramsted testified that upon 
arriving at Manila the Master of the '* Jacox" stated 
that he wanted to take the libelants to Hongkong 
and then take them back to Manila, but that the 
sailors were not willing that this be done unless new 
articles were entered into, and that the crew told the 
Master that if it could be arranged to take the ship 
to Hongkong and then get transportation back to 
Manila and then to San Francisco, it would not 
make any difference to them. (Tr. pp. 34-35. This 
witness also testified that the libelants were told that 
if they went to Hongkong they would be brought 
back to Manila for final discharge. (Tr. p. 36.) The 
libelants, however, refused to continue the voyage. 
(Tr. p. 7.) 

After the libelants had been in Manila for a 
period of about twenty-four days, according to the 
testimony of the witness Ramsted, they appeared be- 
fore the Shipping Commissioner at Manila, who told 
them they would have to go back as deserters in the 
Transport "Thomas". (Tr. p. 28.) The Commis- 
sioner issued a Certificate, which was introduced by 
the libelants, "Libelants' Exhibit No. 2", (Tr. p. 66) 
to the following effect: 



18 

"The Government of the Philippine Islands, 
Department of Finance, Bureau of Customs. 

Manila, March 24, 1920. 

"To Whom it May Concern: 

"I hereby certify: That the following mem- 
bers of the crew of the Shipping Board S. S. 
' Jacox', which arrived at this port February 28, 
1920, were considered as deserters therefrom for 
the reason that they refused to proceed with her 
to Hongkong where she had to be delivered. 
(Here follows the names of the libelants.) 

"That the Pacific Mail Steamship Company 
at Manila, who are acting as agents for the said 
vessel, signified their willingness to bring the 
above named members of the crew back to Man- 
ila and here to make the final discharge after 
such delivery was effected if they desired. 

"That notwithstanding the agent's statement, 
the said members of the crew of the S. S. ' Ja- 
cox' insisted on being discharged at this 
port without taking the said vessel to Hong- 
kong, the port of delivery, on the ground that 
she completed her voyage and delivery was 
made; whereupon the Master thereof rated the 
said seamen as such deserters and this office so 
confirms. 

"That the Master of the said vessel paid on 
March 3, 1920, or three days previous to her de- 
parture for Hongkong, to the above members 
of the crew, with the exception of John Cottrell, 
one-half of the wages which were then earned 
by them up to and including March 2, 1920. 

(Signature illegible) 
(seal) Insular Collector of Customs, 

Acting as American Consul at Manila." 



19 

If, as a matter of fact, the libelants were properly 
rated as deserters, such desertion would constitute a 
breach of their contract, and they would not be en- 
titled either to transportation from Manila to San 
Francisco, or to the balance of their wages, or to 
any penalty for delayed payment of wages. Whether 
they were deserters or not depends upon the con- 
struction to be given to that portion of the shipping 
articles whereby the libelants agreed to serve on the 
vessel "From the port of San Francisco, California, 
to Manila, P. I., for final discharge, for a term of 
time not exceeding six (6) calendar months". The 
contention of the libelants was and is that upon the 
first arrival of the " Jacox" at Manila their service 
under the shipping articles ended. The contention 
of the Master of the " Jacox" and of the defendants 
in this suit was and is that under the terms of the 
shipping articles the libelants obligated themselves 
to serve on the '' Jacox" for a ^'term of time" not 
exceeding six months, provided there was a -final 
discharge at Manila, and that the contract of the 
libelants was not, as contended for in the seventh 
paragraph of the libel, for a voyage direct from San 
Francisco to Manila under which calls at Honolulu, 
Sydney, and Newcastle, Australia, would constitute 
a violation of the shipping articles. The contention 
of defendants is borne out by the fact, among other 
things, that the "Jacox" is a steam vessel, and it 
could not have been within the contemplation of 
the parties that a period anywhere approximating 
six months would have been consumed in a direct 



20 

voyage between San Francisco and Manila. In fact, 
the witness Ramsted testified that when the articles 
were signed it was the understanding of the libel- 
ants that the vessel would proceed to Sydney and 
would be brought to Manila as a final port of dis- 
charge. (Tr. p. 39.) Although perhaps the ship- 
ping articles are somewhat ambiguous, all of the 
circumstances indicate that the service of the libel- 
ants was to be for a ^Herm" rather than for a direct 
voyage between two ports, the words "final dis- 
charge", and "term of time", greatly aiding in this 
construction of the articles. In construing the words 
"final port of discharge", the Court in the case of 
Schermacher, et al. vs. Yates^ et al., 57 Fed. 668, 
said: 

"By the terms of the articles, the crew could 
only be discharged at 'a final port of discharge 
in the United States'. These words should be 
construed in view of the language employed in 
Sec. 4530 of the Revised Statutes, where it is 
provided that a seaman is entitled to his wages 
'as soon as the voyage is ended and the cargo 
and ballast fully discharged at the last port of 
delivery'. So construed, the last port of deliv- 
ery where either cargo or ballast was dis- 
charged, if within the United States, would be 
a final port of discharge within the meaning of 
the articles signed by the libelants." 

In United States vs. Barker et al., Fed. Cas. 14516, 
the mate and crew of a vessel signed shipping arti- 
cles in Charleston, S. C, for a voyage "to two or 
three ports of discharge and lading in Europe, and 



21 

back to a final port of discharge in the United 
States". The vessel went to Europe, took cargo, and 
came to Boston as her port of destination. The Mas- 
ter was directed to proceed to Alexandria for final 
discharge, but the mate and crew refused to continue 
the voyage, and were indicted for an endeavor to 
make a revolt. Under this state of facts, Mr. Justice 
Story, said: 

" . . . . We are of the opinion that the 
shipping articles extended the voyage to Alex- 
andria. The fact that the destination was by the 
original instructions of the owner to Boston 
does not necessarily make it a port of discharge. 
'Port of destination' and 'port of discharge' are 
not equivalent phrases. To constitute a port o^ 
destination a port of discharge some goods must 
be unladen there, or some act done to terminate 
the voyage there. But here the tvords are ^ final 
port of discharge^ so that the owner had the 
right to order the ship from port to port until 
there was a final discharge of the tvhole cargo." 

The shipping articles signed by the libelants in 
this case providing as they did for a "term" of 
service and not for a direct voyage between the two 
ports designated, the libelants, by refusing to con- 
tinue with the vessel to Hongkong, under the as- 
surance of the Master that they would be returned 
to Manila for "final discharge", became deserters, 
and under the provisions of Section 4522 of the Re- 
vised Statutes, as amended by the Acts of February, 
27, 1877, and December 21, 1898, forfeited the wages 
or emoluments they had then earned, and no liability 



22 

on the part of the ship or her owner for failure to 
pay the forfeited wages or to return the men to San 
Francisco would accrue. 

V 

Assuming that libelants were not deserters, no 
penalty for withholding wages should have been 
awarded by the Court under the circumstances of 
the case. 

Assuming that the Master of the " Jacox" erred 
in rating the libelants as deserters under the circum- 
stances, and that the American Consul at Manila also 
erred in his adjudication that they were deserters, 
there is still no warrant for inflicting the penalty 
provided by the statute in cases where wages of 
seamen are wrongfully withheld. Section 4529 of 
the Revised Statutes, as amended by the Act of De- 
cember 21, 1898, and the Act of March 4, 1915, con- 
tains the following provision: 

"Every master or owner who refuses or neg- 
lects to make payment in the manner hereinbe- 
fore mentioned without sufficient cause shall 
pay to the seaman a sum equal to two days' pay 
for each and every day during which payment 
is delayed beyond the respective periods, which 
sum shall be recoverable as wages in any claim 
made before the Court"; 

Under this provision it is not every case of delay 
in the payment of wages that calls for the imposition 
of the statutory penalty. The refusal or neglect to 
make j^ayment must be ''without sufficient cause' \ 



23 

and the cases in which this provision have been con- 
strued consistently hold that where the master or 
owner has refused in good faith to make the pay- 
ment, or where the matter has been brought before 
a shipping commissioner or other person with ap- 
parent authority to pass upon the question and an 
adjudication by such means has been had, the pen- 
alty will not be enforced. 

In the case of The George W. Wells, 118 Fed. 761, 
the delayed payment resulted because of an assign- 
ment of wages by the sailor to another. The as- 
signment was held by the Court to be insufficient in 
law, and although it had been honored by the ship 
owner, the sailor claimed the wages and the statutory 
penalty for the delayed payment. But the Court 
held that to construe the language so narrowly was 
contrary to its reasonable intent, and said: 

"Congress can hardly have intended that in 
every controversy, however doubtful, which fin- 
ally results in the seaman's favor, he shall be 
entitled to additional compensation so large 
. . . . It is easy to perceive that the con- 
struction of the statute urged by the libelant 
would encourage seamen to speculate upon con- 
troversies between themselves and the ship. The 
phrase 'without sufficient cause' should rather 
be construed as equivalent to 'without reason- 
able cause'. In this sense there was reasonable 
cause in the case at bar for the delay in the 
payment." 

In a recent case, TJie Silver Shell, 255 Fed. 340, 
there was an actual controversy between the sea- 



24 

men and the owner as to the owner's failure to fur- 
nish the required food, and as to the seamen's claim 
for extra compensation. It was held that the cap- 
tain had the lawful right to have the question adju- 
dicated by the Court and his refusal to pay the sums 
demanded by the seamen was not a wrongful with- 
holding of their wages. 

In The Sadie C. Sumner, 142 Fed. 611, the prin- 
ciple was announced that where there was fair 
ground for claiming the right to reduce the wages 
of a mate because of neglect of duty, the refusal to 
pay him the agreed wages in full on his discharge 
was not "without sufficient cause" so as to subject 
the Master or owner of the vessel to the statutory 
penalty. 

In The St. Paul, 133 Fed. 1002, a fine had been 
imposed on a seaman for disobedience but the same 
was unavailable as a defense to an action for wages 
because of the failure of the ship's master to enter 
the offense in the ship's log book on the day it oc- 
curred, but it was held that the ship was justified in 
contesting its liability, and therefore was not liable 
to a fine on account of the delay in the payment of 
the seaman's wages. 

The statute, said the Court in the case of The 
Amazon, 144 Fed. 153, must be considered as intend- 
ed to secure justice, and not to penalize vessels for 
mere errors of judgment on the part of their mas- 
ters, and should not be applied in a case where the 
seamen left their ship on account of a matter as to 
which there was reasonable ground for controversy. 



25 

The Supreme Court of the United States, in the 
case of Pacific Mail Steamship Co. vs. Schmidt, 241 
U. S. 245, held that the penalty imposed by the stat- 
ute was not incurred during a delay in payment 
occasioned by an attempt to secure a revision in a 
Federal Circuit Court of Appeals of doubtful ques- 
tions of law and fact. In that case Mr. Justice 
Holmes said: 

"It is a very different thing, however, to say 
that the delay occasioned by the appeal was not 
for sufficient cause. Even on the assumption 
that tJie ]}etitioner was tvrong, it had strong and 
reasonable ground for believing that the statute 
ought not to be held to apply. So that the ques- 
tion before us is whether we are to construe the 
Act of Congress as imposing this penalty dur- 
ing a reasonable attempt to secure a revision of 
doubtful questions of law and fact, although its 
language is 'neglect . . . without sufficient 
cause'. The question answers itself. We are 
not to assume that Congress would attempt to 
cut off the reasonable assertion of supposed 
rights by devices that have had to be met by 
stringent measures when practiced by the 
states." 

The facts in The Express, 129 Fed. 655, were that 
deckhands were hired on a steamer making daily 
trips between New York and another port at a 
monthly wage, and after working six days left the 
service without the consent of the master. The owner 
of the vessel contended, although erroneously, that 
the contract of the deck-hands was one from month 
to month, and that they had no right to abandon the 



26 

service before the end of the month. It was held 
in that case that the refusal of the owner to pay 
the deck-hands wages for the time they worked did 
not subject him to the penalty imposed by the stat- 
ute, as there was reasonable ground at least for the 
owner's contention. 

In The Cubadist, 252 Fed. 658, the Court in con- 
struing the statute in question said: 

'^It has been contended that, whenever the 
seaman recovers his wages after a refusal of 
payment has been made by the Master, this re- 
covery should have added to it double pay for 
the period following the demand and until the 
hearing. I can not agree with this contention 
for I do not think the words 'without sufficient 
cause' are intended to mean this. If this were 
the meaning intended, the words 'without suffi- 
cient cause' would have been omitted, and the 
language then used would have expressed this 
meaning. The inclusion of these words, how- 
ever, negatives this idea. ' ' 

"What then is meant by the words 'without 
sufficient cause ' % There are numerous instances 
where masters have been known to wilfully re- 
fuse to pay seamen their wages. In these cases 
I think it unquestionable that, if the seaman re- 
covers, he should also recover double pay. There 
are, however, other cases where the Master may 
have just cause to doubt whether the seaman is 
entitled to demand his pay, or cases where there 
may be a very close question. I do not think 
that the statute was intended to penalize any 
master or vessel for exercising sound judgment 



27 

and discretion, or require them to surrender 
such judgment under a penalty of double pay. 
I think the language used carries with it the 
idea that, where the Court finds that the mas- 
ter's refusal was willful and without justifica- 
tion or excuse, double pay should be given, but 
where the master was exercising a reasonable 
and proper discretion, and the question, was 
doubtful, it reserves to the Court the power to 
pass upon the question of the reasonableness or 
the sufficiency of the excuse of the master, and 
give or deny the double pay according as the 
Court may find the contention of the master to 
be honest and not only a pretext. ' ' 

The circumstances disclosed by the record in this 
case do not warrant a finding that the master of the 
"Jacox" willfulty and without reasonable cause 
withheld the wages from the libelants at Manila. All 
of his actions show honesty of purpose. His offer 
to finally discharge the men at Manila after the trip 
to Hongkong had been made, his submission of the 
controversy to the American Consul at Manila, and 
the fact that the shipping articles themselves bear 
out, as we have shown, his claim, all tend to show 
that the master's acts were not mere pretexts for 
defeating a just claim, but were done in good faith. 

The submission of the matter to the Insular Col- 
lector of Customs, acting as the American Consul at 
Manila, was done pursuant to statutor}^ authority. 
The Act of July 1, 1902, c. 1369 Sec. 84, provides 
that the laws relating to seamen on foreign voj^ages 
shall apply to seamen on vessels going from the 



28 

United States and its possessions to the Philippine 
Islands, the Custom officers there being for such 
purpose substituted for Consular officers in foreign 
ports. Aside from the broad powers granted consuls 
generally in matters concerning seamen, Section 
4600 of the Revised Statutes, as amended by the 
Act of June 26, 1884, and the Act of December 21, 
1898, provides as follows: 

"It shall be the duty of all Consular officers 
to discountenance insubordination by every 
means in their power and, where the local au- 
thorities can be usefully emplo3^ed for that pur- 
pose, to lend their aid and use their exertions 
to that end in the most effectual manner. In all 
cases where seamen or officers are accused, the 
Consular officer shall inquire into the facts and 
proceed as provided in Section four thousand 
five hundred and eighty-three of the Revised 
Statutes." 

The American Consul at Manila clearly had juris- 
diction under Revised Statutes Sec. 4600 to inquire 
into the facts connected with the accusation made 
that the libelants had deserted. His finding, sup- 
porting as it did the contention of the master, even 
though not to be deemed conclusive upon the ques- 
tion of desertion, is at least sufficient to prevent the 
attaching of the statutory penalty. In Tlie Silver 
Shell, 255 Fed. 340, it was held that where a seaman 's 
claim for additional compensation for extra work 
and compensation for insufficient food was submitted 
to the shipping commissioner of a port and decided 
in favor of the captain of the vessel, that of itself 



29 

established that the captain was making a bona fide 
contention that the amounts claimed were not due. 
And in the case of The Alice B. Phillips, 106 Fed. 
956, where both parties went before the Collector on 
the discharge of a seaman, where a dispute had 
arisen as to the amount due him, and where the Col- 
lector decided in favor of the contention of the 
master, it was held that although the controversy 
was not submitted hy the parties by any agreement 
in writing, and although the decision the Collector 
made was erroneous, yet that decision constituted a 
reasonably ^'sufficient cause' ^ for withholding the 
additional wages claimed and exempted the ship and 
her owners from the penalty imposed by the statute 
for a failure to pay the wages promptly on dis- 
charge. 

The libelants claimed what in effect would be 
triple wages for a delay of fifty-three days. The li- 
belants have already been paid single wages cover- 
ing substantially this period, and the Court's con- 
struction of the statute that the libelants would not 
in any event be entitled to triple wages, is undoubt- 
edly correct. The period, however, is incorrectly 
computed. The vessel arrived at Manila on Feb- 
ruary 28, 1920, the balance of wages, if due at all, 
was payable four days thereafter, and the libelants 
arrived at San Francisco and signed the release 
there on April 21, 1920, as shown by paragraph XII 
of the Answer. These matters, however, are wholly 
immaterial in this case, in view of the fact that the 
libelants are not, under the construction given to the 



30 

statute under consideration by the Courts, entitled 
to recover any penalty whatsoever on account of the 
delay in paying them the balance of their wages. 

It is the contention of the libelees that under a 
proper construction of the shipping articles the li- 
belants deserted the '' Jacox" at Manila. But even 
should it be held that the libelants were not deserters 
although they left the vessel immediately upon her 
arrival at Manila, though she did not then finally 
discharge there but proceeded to another port, yet 
such good faith has been shown on the part of 
the master of the vessel, and the circumstances sur- 
rounding the withholding of the wages are such as 
not to entitle the libelants to the statutory penalty. 

It is respectfully submitted that the decree of the 
District Judge should be reversed and the libel dis- 
missed. 

FRANK M. SILVA, 

United States Attorney. 

FREDERICK MILVERTON, 

Special Assistant U. S. Attorney in Admiralty. 

Proctors for Appellee and Cross-Apellant, 

United States of America. 



No. 3615 

Oltrmtt ©ottrt uf AiJp^ala 



W. H. LAWRENCE, 

Plaintiff in Error, 

vs. 

JUSTUS S. WARDELL, as United States Col- 
lector of Internal Revenue for the First Dis- 
trict of California, 

Defendant in Error. 



SfmttHrrijjt of l^worJi. 



Upon Writ of Error to the Southern Division of 
the United States District Court of the 
Northern District of California, 
Second Division. 



, FILED 

JAW 5- i32i 
F. D. moncktom; 



Kilmer Bros. Co. l^rint, 330 Jackson St., S. 1'.. Oal. 



No. 3615 

(Hmult €nurt of Appeals 

JUvx % Ntsttif CHirntft 



W. H. LAWRENCE, 

Plaintiff in Error, 

vs. 

JUSTUS S. WARDELL, as United States Col- 
lector of Internal Revenue for the First Dis- 
trict of California, 

Defendant in Error. 



©rattsmpt nf ^Anavh, 



Upon Writ of Error to the Southern Division of 
the United States District Court of the 
Northern District of California, 
Second Division. 



Filmer Bros. Co. Print, 830 Jackson St., S. 1- .. Oat. 



INDEX TO THE PKl>JTED TRANSCRIPT OF 

RECORD. 



[Clerk's Note: When deemed likely to be of an important nature, 
errors or doubtful matters appearing in the original certified record are 
printed literally in italic; and, likewise, cancelled matter appearing in 
the original certified record is printed and cancelled herein accord- 
ingly. When possible, an omission from the text is indicated by 
printing in italic the two words between which the omission seems 
to occur.] 

Page 

Assignment of Errors 14 

jBond on Writ of Error 17 

Certificate of Clerk U. S. District Court to 

Record on Writ of Error 19 

Citation on Writ of Error 23 

Complaint for Recovery of Income Tax Illegally 

Assessed and Collected 1 

Demurrer 9 

EXHIBITS : 

Exhibit ''A"— Claim for Refund Taxes 

Erroneously or Illegally Collected 6 

Judgment for Defendant 12 

Memorandum 10 

Opinion 10 

Order Allowing Writ of Error 16 

Petition for Writ of El-ror 13 

Return to Writ of Error 22 

Writ of Error - oa 



In the Southern Division of the District Court of 
the United States, Northern District of Cali- 
fornia, Second Division. 



No. 16,373. 
W. H. LAWRENCE, 



Plaintiff, 



vs. 



JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 

Complaint for Recovery of Income Tax Illegally 
Assessed and Collected. 
W. H. Lawrence, plaintiff herein, for his cause 
of action against defendant alleges: 

I. 
That plaintiff is, and since the twenty-sixth day 
of March, 1919, has been, a resident of the City 
and County of San Francisco in the State of Cali- 
fornia. 

IL 
That defendant herein, Justus S. Wardell, is 
now, and since the year 1917 has been, the United 
States Collector of Internal Revenue for the First 
District of California, with his residence and office 
in the City and County of San Francisco, in the 
State of California. 

III. 
That plaintiff" is, and from birth has been, a citi- 
zen of the United States of America, and was 



2 W. H. Laivrence vs. 

throughout [1*] the year 1918, and thereafter 
until the twenty-sixth day of March, 1919, a resi- 
dent of the Philippine Islands. 

IV. 

That plaintiff's net income for the calendar year 
1918, determined in accordance with the provisions 
of Title II of the United States Revenue Act of 
1918, was Nineteen Thousand Six Hundred Eighty 
Dollars and Eighty-one Cents ($19,680.81), of 
which Four Hundred Dollars ($400.00) consisted 
of dividends on stock of corporations organized 
and doing business in the United States, and the 
remainder, to wit, Nineteen Thousand Two Hun- 
dred Eighty Dollars and Eighty-one Cents ($19,- 
280.81) was from sources within the Philippine 
Islands; that plaintiff throughout said year 1918 
was a married man living with his wife, who had no 
separate income, and had wholly dependent upon 
him for their support his three children under 
eighteen years of age. 

V. 

That in accordance with the provisions of the 
United States Revenue Act of 1916 as amended by 
the United States Revenue Act of 1917, then and 
there in force, plaintiff in January, 1919, at the 
City of Manila in the Philippine Islands, made re- 
turn of his income for the year 1918 to the Col- 
lector of Internal Revenue of the Philippine 
Islands, the appropriate internal revenue officer of 
the Philippine government within the meaning of 

*Page-n'Uinber appearing at foot of page of original certified Transcript 
Of Eecord. 



Justus S. Wardell. 3 

section 23 of the United States Revenue Act of 
1916, and paid to said Collector the sum of Two 
Hundred Eighty-one Dollars and Forty-three 
Cents ($281.43) as income tax on and in respect of 
the said income of plaintiff for 1918 and in accord- 
ance with the said return and the said United 
States Revenue Acts. [2] 

VI. 

That the legislature of the Philippine Islands has 
neither amended, altered, modified, nor repealed, 
with respect to income of 1918, the income tax laws 
of the United States Revenue Acts of 1916 and 
1917 in force in the Philippine Islands. 

VII. 

That, notwithstanding the premises, the defend- 
ant, Justus S. Wardell, as such Collector, prior to 
the second day of July, 1919, required of plaintiff 
that plaintiff make return of, and pay income tax 
upon, his aforesaid income for the year 1918, under 
and in accordance with the provisions of Part II 
of Title II of the United States Revenue Act of 
1918. to defendant as such Collector, defendant as- 
serting that a tax of Two Thousand One Hundred 
Sixty-four Dollars and Seventy- three Cents ($2,- 
164.73) and interest thereon in the sum of Ten 
Dollars and Eighty-five Cents were due from plain- 
tiff' under and pursuant to said Part II of Title 
II of the United States Revenue Act of 1918, and 
defendant threatened that in default of such re- 
turn and payment by plaintiff the payment of said 
asserted tax and interest, to wit, the sum of Two 



4 W. H. Lawrence vs. 

Thousand One Hundred Seventy-five Dollars and 
Fifty-eight Cents ($2,175.58), would be enforced 
with penalties by the seizure of plaintiff's property 
and by other means of compulsion provided in the 
statutes of the United States. 

VIII. 

That plaintiff thereupon, to wit, on the second 
day of July, 1919, involuntarily and under compul- 
sion, and for the purpose of avoiding the penal- 
ties, seizure and other proceedings [3] threat- 
ened as aforesaid, made to defendant the return 
required as aforesaid, and paid to defendant for 
the said asserted tax and interest the sum of Two 
Thousand One Hundred Seventy-five Dollars and 
Fifty-eight Cents ($2,175.58), and at the same 
time plaintiff protested to defendant against the 
said requirement and notified defendant that plain- 
tiff made the said return and payment involun- 
tarily and would claim the refund of said payment 
for the reasons set out in the claim for refund then 
and there delivered to defendant in writing, of 
which a true copy is Exhibit "A" of this com- 
plaint. 

IX. 

That thereafter plaintiff duly presented to the 
Commissioner of Internal Revenue of the United 
States his claim in writing for the refund of the 
said sum of Two Thousand One Hundred Seventy- 
five Dollars and Fifty-eight Cents ($2,175.58); 
that a true copy of said claim for refund is an- 
nexed hereto, and referred to, and marked Exhibit 



Justus S. WarcleU. 5 

X. 

That thereafter, to wit, on the eleventh day of 
February, 1920, the Commissioner of Internal 
Revenue of the United States acted upon said claim 
for refund and denied and rejected the same in 
whole; and that said sum of Two Thousand One 
Hundred Seventy-five Dollars and Fifty-eight 
Cents ($2,175.58) is still retained by defendant. 

WHEREFORE, plaintiff prays for judgment 
against defendant for the recovery of the sum of 
Two Thousand One Hundred Seventy-five Dollars 
and Fifty-eight Cents ($2,175.58), together with 
interest thereon from the second day of July, 1919, 
and for his costs of suit herein incurred. [4] 

W. H. LAWRENCE, 
Plaintiff, 
563 Mills Building, San Francisco, California. 

State of California, 

City and County of San Francisco, — ss. 

W. H. Lawrence, being duly sworn, deposes and 
says, that he is the plaintiff in the above-entitled 
action; that he has read the foregoing complaint 
and knows the contents thereof; that the same is 
true of his own knowledge, except as to the matters 
therein stated on information or belief and as to 
those matters that he believes it to be true. 

W. H. LAWRENCE. 

Subscribed and sworn to before me this 15th day 
of April, 1920. 

[Notarial Seal] EUGENE W. LEVY, 

Notary Public in and for the City and County of 
San Francisco, State of California. [5] 



6 W. H. Lawrence vs. 

Exhibit "A." 

CLAIM FOR REFUND TAXES ERRONE- 
OUSLY OR ILLEGALLY COLLECTED. 
State of California, 
County of San Francisco, — ss. 

WILLIAM HAMILTON LAWRENCE (Name of 
claimant). 

3633 Jackson Street, San Francisco, California 
(Address of claimant; give street and number 
as well as city or town and State). 
This deponent, being duly sworn according to 
law, deposes and says that this claim is made on be- 
half of the claimant named above, and that the 
facts stated below with reference to the claim are 
true and complete. 

1. Business engaged in by claimant — lawyer. 

2. Character of assessment or tax — Income tax on 

1918 income. 

3. Amount of assessment or stamps — $2175.58. 

4. Amount now asked to be refunded (or such 

greater amount as is legally refundable) — 
$2175.58. 

5. Date of payment of assessment or purchase of 

stamps — July 2, 1919. 

Deponent verily believes that the amount stated 
in item 4 should be refunded and claimant now 
asks and demands refund of said amount for the 
following reasons: 

Claimant throughout 1918 was a citizen of the 
United States and a resident of the Philippine Is- 



Justus S. Wardell. 7 

lands. In January, 1919, claimant made return 
and paid income tax on his whole net income of 
1918 to the Collector of Internal Revenue of the 
Philippine Islands at Manila in accordance with 
the provisions [6] of the United States Revenue 
Act of 1916 as amended by the Revenue Act of 
1917, then and there in force. On March 26th, 
1919, claimant arrived in San Francisco, Califor- 
nia, from the Philippine Islands and became a resi- 
dent of San Francisco. The Collector of Internal 
Revenue at San Francisco, w4th notice of the facts 
above set out, has required claimant to make return 
and pay income tax on his whole net income of 
1918 in accordance with sections 210 and 211 of 
the Revenue Act of 1918, with credit for the afore- 
said pa3rment in Manila, plus interest. Said pay- 
ment in San Francisco, amounting to $2,175.56, 
was made by claimant on July 2d, 1919, involun- 
tarily, under protest, and under duress of the pen- 
alties prescribed by law. 

The grounds of protest and of this claim for 
refund are: that, by section 1400 of the Revenue 
Act of 1918, Title I of the Revenue Act of 1916 as 
amended by the Revenue Act of 1917 is left in force 
as to 1918 income of residents of the Philippine 
Islands; that by section 261 of the Revenue Act 
of 1918 claimant is required to pay in Manila the 
income tax of the Revenue Act of 1916 on his whole 
income of 1918, as claimant has done; that sections 
210 and 211 of the Revenue Act of 1918 impose 
an income tax only "in lieu of" the corresponding 
taxes of the Revenue Acts of 1916 and 1917, and do 



8 W. H. Lawrence vs. 

not apply in cases where the earlier acts stand 
unrepealed; that the legislature of the Philippine 
Islands has neither amended, altered, modified nor 
repealed the income tax provisions of the Revenue 
Acts of 1916 and 1917 as to income of the year 
1918. 

And this deponent further alleges that the said 
claimant is not indebted to the United States in 
any amount whatever, [7] and that no claim 
has heretofore been presented, except as stated 
herein, for the refunding of the whole or any part 
of the amount stated in item 3. 

Signed: W. H. LAWRENCE. 

Sworn to and subscribed before me this 2d day of 
July, 1919. 

(Signed) THOS. F. FEENEY, 
Deputy Collector of Internal Revenue. 

[Endorsed]: Filed April 16, 1920. Walter B. 
Maling, Clerk. [8] 



In the Southern Division of the District Court of 
the United States, Northern District of Cali- 
fornia, Second Division. 

No. 16,373. 



W. H. LAWRENCE, 



Plaintiff, 



vs. 



JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 



Justus S. Wardell. 9 

Demurrer. 

Comes now defendant in the above-entitled action 
and demurs to plaintiff's complaint on file herein 
on the following ground: 

I. 
That said complaint does not state facts suffi- 
cient to constitute a cause of action against the said 
defendant. 

WHEREFORE, defendant prays that said ac- 
tion be dismissed and that he go hence with his 
costs in this behalf expended. 

ANNETTE ABBOTT ADAMS, 

United States Attorney, 
CHARLES W. THOMAS, Jr., 
Assistant U. S. Attorney. 

Attorneys for Defendant. 
Due service of the copy of the within demurrer 
is hereby admitted this 23d day of April, 1920. 

W. H. LAWRENCE, 
Attorney for Plaintiff. 

[Endorsed] : Filed Apr. 24, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [9] 



10 W. H. Lawrence vs. 

In the Southern Division of the District Court of 
the United States, Northern District of Cali- 
fornia, Second Division. 

W. H. LAWRENCE, 

Plaintiff, 

vs. 

JUSTUS S. WARDELL, Collector of Internal 
Revenue for the First District of California. 

Defendant. 

W. H. LAWRENCE, Esq., Attorney for Plaintiff. 

FRANK M. SILVA, Esq., United States Attor- 
ney, WAYNE JOHNSON, Esq., Solicitor of 
Internal Revenue, and J. M. STERNHAGEN, 
Special Attorney, Bureau of Internal Revenue, 
Attorneys for Defendant. 

Memorandum. 

RUDKIN, District Judge. 

The sole question presented by the demurrer in 
this case is this: Is a citizen of the United States 
who resided in the Philippine Islands during the 
entire year 1918 subject to the tax imposed by the 
Revenue Act of that year"? Section 1 of the Act 
of 1916 imposed a tax upon the entire net income 
received by every individual "a citizen or resident 
of the United States," and upon the entire net in- 
come received by every individual "a nonresident 
alien" from all sources within the United States. 
This Act was amended in 1917, but the amendment 
is not deemed material to our present inquiry. 



Justus S. Wardell. 11 

Section 210 of the Act of 1918 imposed upon the 
net Income of every individual a normal tax in 
lieu of the taxes imposed by the Acts of 1916 and 
1917. From these provisions it will be seen that 
the tax is imposed upon citizens of the United 
States regardless of their place of residence, on 
residents of the United States regardless of their 
citizenship, and upon the income of nonresident 
aliens from sources within the United States. 
Nothing is found in any other provision of the Act 
in conflict with this view. Thus section 260 of the 
[10] Act of 1918 refers to individuals who are 
citizens of any possession of the United States, but 
not otherwise citizens of the United States, and the 
following section provides that returns shall be 
made by individuals who are citizens or residents of 
Porto Rico and the Philippine Islands or derive 
income from sources therein, but makes no refer- 
ence to citizens of the United States residing in the 
Islands. For these reasons I am of the opinion 
that the tax was properly imposed, and the de- 
murrer is therefore sustained. 
November 16, 1920. 

[Endorsed]: Filed Nov. 16, 1920. Walter B. 
Maling, Clerk. [11] 



12 W. H. Lawrence vs. 

In the Southern Division of the United States Dis- 
trict Court for the Northern District of Cali- 
fornia, Second Division. 

No. 16,373. 

W. H. LAWRENCE, 



Plaintiff, 



vs. 



JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 

Judgment for Defendant. 

On the 16th day of November, 1920, an order of 
the above-entitled court having been made, entered 
and filed sustaining a demurrer of the plaintiff here- 
in and without specifying any time within which 
plaintiff might amend his complaint and a notice 
of the sustaining of said demurrer having been 
given to Bert F. Lum on the 26th day of November, 
1920, as will more fully appear from the notice of 
sustaining of demurrer on file herein and the en- 
dorsement thereon of receipt of a copy of the same 
by said Burt F. Lum on the 26th day of November, 
1920. 

Now, on motion of E. M. Leonard, Assistant 
United States Attorney and as such attorney, one of 
the attorneys for the defendant, — 

IT IS ORDERED AND ADJUDGED that the 
complaint herein be, and the same is hereby dis- 
missed. 



Justus S. Wardell. 13 

Dated this 18th day of December, 1920. 

M. T. DOOLING, 
United States District Judge. 

[Endorsed]: Filed and entered Dec. 18, 1920. 
Walter B. Maling, Clerk. [12] 



In the Southern Division of the District Court of 
the United States, Northern District of Cali- 
fornia, Second Division. 

W. H. LAWEENCE, 

Plaintiff, 
vs. 

JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 

Petition for Writ of Error. 

Comes now the plaintiff, W. H. Lawrence, by his 
attorney, Burt F. Lum, and says that on the eigh- 
teenth day of December, 1920, this Court entered 
judgment herein in favor of the defendant and 
against the plaintiff, dismissing the complaint here- 
in, in which judgment and proceedings had prior 
thereto in this cause certain errors were committed 
to the prejudice of this plaintiff, all of which 
will more in detail appear from the assignment of 
errors which this plaintiff files with this petition. 

WHEREFORE, this plaintiff prays that a Writ 
of Error may be issued in this behalf out of the 



14 W. H. Lawrence vs. 

United States Circuit Court of Appeals for the 
Ninth Circuit for the correction of errors so com- 
plained of, and that a transcript of the record, pro- 
ceedings and papers in this case duly authenticated 
may be sent to said Circuit Court of Appeals for 
said Circuit. 

BURT F. LUM, 
Attorney for Plaintiff. 

[Endorsed] : Filed Dec. 21, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [13] 



In the Southern Division of the District Court of 
the United States, Northern District of Cali- 
fornia, Second Division. 

W. H. LAWRENCE, 

Plaintiff, 

vs. 

JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 

Assignment of Errors. 

W. H. Lawrence, plaintiff in this action, in con- 
nection with and as a part of his petition for a writ 
of error filed herein, makes the following assign- 
ment of errors, which he avers were committed by 
the Court in the proceedings and judgment against 
this plaintiff appearing on the record herein, that 
is to say: 



Justus S. Wardell. 15 

I. 

That the Court erred in holding and deciding 
that the complaint of the plaintiff herein does not 
state facts sufficient to constitute a cause of action 
against the defendant. 

II. 

That the Court erred in sustaining the demurrer 
of the defendant, herein filed, to the complaint of 
the plaintiff. 

III. 
That the Court erred in adjudging that the com- 
plaint of the plaintiff herein be dismissed. [14] 

WHEREFORE, this plaintiff prays that the said 
judgment be reversed. 

BURT F. LUM, 
Attorney for Plaintiff. 

[Endorsed] : Filed Dec. 21, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [15] 



In the Southern Division of the District Court of 
the United States, Northern District of Cali- 
fornia, Second Division. 

W. H. LAWRENCE, 

Plaintiff, 

vs. 

JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 



16 W. H. Lawrence vs. 

Order Allowing Writ of Error. 

The petition of W. H, Lawrence, the above-named 
plaintiff, for a writ of error in the above-entitled 
action to the United States Circuit Court of Ap- 
peals for the Ninth Circuit coming on to be heard, 
the said plaintiff being represented by his attorney, 
Burt F. Lum, Esq., and it appearing to the Court 
that said petition should be granted and that a 
transcript of the record and proceedings in the 
above-entitled case upon the judgment herein ren- 
dered, duly authenticated, together with the original 
assignment of errors, writ of error and citation, 
should be sent to the United States Circuit Court of 
Appeals for the Ninth Circuit as prayed, in order 
that such proceedings may be had as may be just 
to correct any manifest errors; 

NOW, THEREFORE, IT IS ORDERED that 
a writ of error be and the same is hereby allowed 
herein, and that the said w^rit of error issue out of 
and under the seal of the above-entitled [16] 
court by the clerk thereof upon bond being fur- 
nished by said W. H. Lawrence, conditioned accord- 
ing to law, in the sum of Three Hundred 00/100 
Dollars ($300.00) ; that a true copy of the record, 
proceedings and papers upon w^hich the judgment 
herein was rendered, together with the assignment 
of errors, writ of error and citation, duly certified 
according to law, shall be transmitted to the United 
States Circuit Court of Appeals for the Ninth Cir- 
cuit, in order that said Court may inspect the same 
and take such action thereon as it deems proper 
according to law and justice. 



Justus S. Wardell. 17 

Dated Dec. 21, 1920. 

W. H. HUNT, 

Judge. 

[Endorsed] : Filed Dec. 21, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [17] 



(Title of Court and Cause.) 

Bond on Writ of Error. 

KNOW ALL MEN BY THESE PRESENTS: 
That we, W. H. Lawrence, of the City and County 
of San Francisco, State of California, as principal 
and the United States Fidelity and Guaranty, a 
corporation, organized and existing under and by 
virtue of the laws of the State of Maryland and 
qualified to do business under the law^s of the 
United States as surety, are held and firmly bound 
unto the above-named defendant, Justus S. War- 
dell, in the sum of three hundred dollars ($300.00), 
to be paid to him, and for the payment of which, 
well and truly to be made, we bind ourselves and 
each of us, our and each of our heirs, executors and 
administrators, successors and assigns, jointly and 
severally, firmly by these presents. 

Sealed with our seals and dated this tw^enty-first 
(21) day of December, 1920. 

WHEREAS, the above-named W. H. Lawrence, 
as plaintiif in error, has sued out a writ of error to 
the United States Circuit Court of Appeals for the 
Ninth Circuit to reverse the judgment rendered in 
the above-entitled action by the United States Dis- 



18 W. H. Lawrence vs. 

trict Court for the Southern Division of the North- 
em District of California: 

NOW, THEREFORE, the condition of this obli- 
gation is such that if the said W. H. Lawrence, 
plaintiff and plaintiff in error, shall prosecute his 
said writ of error to effect, and answer all costs 
and damages that may be adjudged if he shall fail 
to make good his plea, then this obligation to be 
void; otherwise to remain in full force [18] and 
virtue. 

W. H. LAWRENCE. (Seal) 

THE UNITED STATES FIDELITY AND 

GUARANTY COMPANY. 

By HENRY V. D. JOHNS, (Seal) 

[Seal] By ERNEST W. SWIVGLEY, (Seal) 

Attorneys in Fact. 
(Premium charged for this bond is $10.00 per 
annum.) 
Approved . 

WM. H. HUNT, 
Judge. 

[Endorsed] : Filed Dec. 22, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [19] 



Justus S. Wardell. 19 

In the Southern Division of the United States Dis- 
trict Court, in and for the Northern District 
of California, Second Division. 

No. 16,373. 

W. H. LAWRENCE, 

Plaintiff, 

vs. 

JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 

Certificate of Clerk U. S. District Court to Record 
on Writ of Error. 

I, Walter B. Maling, Clerk of the District Court 
of the United States, for the Northern District of 
California, do hereby certify the forgoing nineteen 
(19) pages, numbered from 1 to 19, inclusive, to be 
full, true and correct copies of the record and pro- 
ceedings in the above-entitled cause, as the same re- 
main on file and of record in the office of the clerk 
of said court, and that the same constitute the re- 
turn to the annexed writ of error. 

I further certify that the cost of the foregoing 
return to writ of error is $7.70; that said amount 
was paid by the plaintiff, and that the original writ 
of error and citation issued in said cause are hereto 
annexed. 



20 W. H. Lawrence vs. 

IN WITNESS WHEREOF, I have hereunto set 
my hand and affixed the seal of said District Court 
this 27th day of December, A. D. 1920. 

[Seal] WALTER B. MALING, 

Clerk U. S. District Court for the Northern Dis- 
trict of California. 

By J. A. Schaertzer, 
Deputy Clerk. [20] 



In the United States Circuit Court of Appeals for 
the Ninth Circuit. 

W. H. LAWRENCE, 

Plaintiff in Error, 

vs. 

JUSTUS S. WARDELL, United States Collector, 
of Internal Revenue for the First District of 
California, 

Defendant in Error. 

Writ of Error. 

The United States of America, — ss. 
The President of the United States of America, to 
the Judges of the District Court of the United 
States for the Northern District of California, 
GREETING: 
Because in the records and proceedings, as also' 
in the rendition of the judgment of a plea which is 
in the District Court before you or some of you, be- 
tween W. H. Lawrence, plaintiff and plaintiff in 



Justus S. Wardell. 21 

error, and Justus S. Wardell, United States Collec- 
tor of Internal Revenue for the First District of 
California, defendant and defendant in error, a 
manifest error hath happened to the great damage 
of the said plaintiff in error, as by his complaint 
doth appear; and we, being willing that error, if 
any hath been, should be duly corrected, and full 
and speedy justice done to the parties aforesaid, in 
this behalf do commend you, if judgment be there- 
in given, that then, under your seal, distinctly and 
openly, you send the record and proceedings afore- 
said, with all things concerning the same, to the 
United States Circuit Court of [21] Appeals for 
the Ninth Circuit, together with this writ, so that 
you have the same at San Francisco, California, 
within thirty days from the date hereof, in the said 
Oircuit Court of Appeals to be then and there held; 
that the record and proceedings aforesaid being 
then and there inspected, the said Circuit Court of 
Appeals may cause further to be done therein to 
correct that error what of right and according to 
the laws and customs of the United States of 
America should be done. 

WITNESS the Honorable EDWARD DOUG- 
LAS WHITE, Chief Justice of the Supreme Court 
of the United States, this 22 d day of December, 
1920. 

[Seal] WALTER B. MALING, 

Clerk of the District Court of the United States for 
the Northern District of California. 

By J. A. Schaertzer, 
Deputy Clerk. 



22 W. H. Latvrence vs. 

Allowed by. 

WM. H. HUNT, 
Judge. 
Received a copy of the within writ of error this 
22d day of December, A. D. 1920. 

FRANK M. SILVA, 
United States Attorney. [22] 

[Endorsed] : No. 16,373. In the United States 
Circuit Court of Appeals for the Ninth Circuit. 
W. H. Lawrence, Plaintiff in Error, vs. Justus S. 
Warden, Collector, Defendant in Error. Writ of 
Error. Filed Dec. 22, 1920. W. B. Maling, Clerk. 
By J. A. Schaertzer, Deputy Clerk. 

(Return to Writ of Error.) 

The answer of the Judge of the District Court of 
the United States, in and for the Northern District 
of California, Second Division. 

The record and all proceedings of the plaint 
whereof mention is within made, with all things 
touching the same, we certify under the seal of our 
said court, to the United States Circuit Court of 
Appeals for the Ninth Circuit, within mentioned, 
at the day and place within contained, in a certain 
schedule to this writ annexed as within we are com- 
manded. 

[Seal] WALTER B. MALING, 

Clerk United States District Court for the Northern 
District of California. 

By J. A. Schaertzer, 
Deputy Clerk. [23] 



Justus S. Wardell. 23 

In the Southern Division of the District Court of 
the United States, Northern District of Cali- 
fornia, Second Division. 

W. H. LAWRENCE, 

Plaintiff, 

vs. 

JUSTUS S. WARDELL, United States Collector 
of Internal Revenue for the First District of 
California, 

Defendant. 

Citation on Writ of Error. 

United States of America, — ss. 

To Justus S. Wardell, Defendant Above Named and 
Defendant in Error, GREETING : 
You are hereby cited and admonished to be and 
appear at a United States Circuit Court of Appeals 
for the Ninth Circuit, to be holden at the City of 
San Francisco, in the State of California, within 
thirty days from the date hereof, pursuant to a 
writ of error duly issued and now on file in the 
clerk's office of the United States District Court for 
the Southern Division of the Northern District of 
California, Second Division, wherein W. H. Law- 
rence is plaintiff in error and you, Justus S. War- 
dell, are defendant in error, to show cause if any 
there be, why the judgment rendered against the 
said plaintiff in error, as in the said writ of error 
mentioned, should not be corrected, and why speedy 
justice should not be done to the parties in that 
behalf. [24] 



24 W. H. Laivrence vs. 

WITNESS the Honorable WILLIAM H. HUNT, 
United States Circuit Judge for the Northern Dis- 
trict of California, this 22d day of December, 1920. 

W. H. HUNT, 
United States Circuit Judge. 
Received a copy of the within this 22d day of 
December, A. D. 1920. 

FRANK M. SILVA, 
United States Attorney. [25] 
[Endorsed] : No. 16,373. In the Southern Divi- 
sion of the District Court of the United States, 
Northern District of California, Second Division. 
W. H. Lawrence, Plaintiff, vs. Justus S. Wardell, 
Collector, Defendant. Citation on Writ of Error. 
Filed Dec. 22, 1920. W. B. Maling, Clerk. By 
J. A. Schaertzer, Deputy Clerk. 



[Endorsed]: No. 3615. United States Circuit 
Court of Appeals for the Ninth Circuit. W. H. 
Lawrence, Plaintiff in Error, vs. Justus S. Wardell, 
as United States Collector of Internal Revenue for 
the First District of California, Defendant in Er- 
ror. Transcript of Record. Upon Writ of Error 
to the Southern Division of the United States Dis- 
trict Court of the Northern District of California, 
Second Division. 

Filed December 28, 1920. 

F. D. MONCKTON, 
Clerk of the United States Circuit Court of Appeals 
for the Ninth Circuit. 

By Paul P. O'Brien, 
Deputy Clerk. 



No. 3615. 



IN THE 



United States Circuit Court of Appeals 

FOR THE NINTH CIRCUIT 



W. H. LAWRENCE, 



Plaintiff in Error, 



VS. 



JUSTUS S. WARDELL, United States 
Collector of Internal Revenue for the 
First District of California, 

Defendant in Error. 



BRIEF FOR PLAINTIFF IN ERROR 
Upon Writ of Error to the Southern Division of the 
United States District Court of the Northern Dis- 
trict of California, Second Division. 



W. H. Lawrence, 
Burt F. Lum, 
563 Mills Building, San Francisco, Cal. 

Attorneys for Plaintiff in Error. 



THE RCCOnOCR COMPANY, 689 STEVENSON ST., S. F. 



» K 



No. 3615. 
IN THE 

United States Circuit Court of Appeals 

FOR THE NINTH CIRCUIT. 



W. H. LAWRENCE, 

Plaintiff in Error, 

VS. 

JUSTUS S. WARDELL, United States 
Collector of Internal Revenue for the 
First District of California, 

Defendant in Error. 



BRIEF FOR PLAINTIFF IN ERROR. 



STATEMENT OF THE CASE. 

This is an action to recover $2175.58 paid by plain- 
tiff, under protest, to the defendant Collector as in- 
come tax and interest thereon. Plaintiff in Error and 
Defendant in Error were respectively Plaintiff and 
Defendant in the District Court and will be so desig- 
nated in this brief. 

The District Court sustained a general demurrer to 
the complaint. Plaintiff, declined to amend and suf- 
fered a dismissal. Therefore, the allegations of the 
complaint are the facts of the case, and here, as in 
the District Court, the only question is whether the 
complaint states a cause of action. 



Plaintiff, a citizen of the United States, was a resi- 
dent of the Philippine Islands throughout the year 
191 8 and thereafter until March, 1919. In January, 
1919, before leaving the Philippines, plaintiff there 
paid income tax of $281.48, representing the full 
amount of tax upon his 1918 income computed in 
accordance with the Revenue Act of 1916, as amended 
by the Revenue Act of 1917. In March plaintiff 
established his residence in San Francisco, California, 
and in July was required by the defendant Collector to 
pay income tax upon his 191 8 income computed in 
accordance with sections 210 and 211 of the Revenue 
Act of 191 8, with credit for the amount paid in the 
Philippines. The payment was made under protest, 
and claim for refund was duly presented and was 
denied. (Printed Transcript, pp. 1-8.) 

The case involves the interpretation of the Revenue 
Act of 1918 to determine whether sections 210 and 211 
thereof apply to 1918 income of an American citizen 
residing in the Philippine Islands. 

SPECIFICATION OF ERRORS. 

Plaintiff in error specifies and relies upon three 
errors of the District Court, all of which involve the 
same question and need not, therefore, be argued 
separately: 

(i) That the Court erred in holding and deciding 
that the complaint of the plaintiff herein does not 
state facts sufficient to constitute a cause of action 
against the defendant; 

(2) That the Court erred in sustaining the demur- 
rer of the defendant to the complaint of the plaintiff; 



(3) That the Court erred in adjudging that the 
complaint of plaintiff be dismissed. 

BRIEF OF THE ARGUMENT. 

The Revenue Act of 191 8 repealed the former 
income taxes except in Porto Rico and the Philippine 
Islands. 

"Sec. 1400. (a) That the following parts of 
Acts are hereby repealed, subject to the limita- 
tions provided in subdivision (b) : 

"(i) The following titles of the Revenue Act 
of 1916: 

"Title I (called 'Income Tax') ; 

"(3) The following titles of the Revenue Act 
of 1917: 

"Title I (called 'War Income Tax') ; 

"Title XII (called 'Income-Tax Amend- 
ments'). 

"(b) * * * 

"Title I of the Revenue Act of 1916 as 
amended by the Revenue Act of 1917 shall remain 
in force for the assessment and collection of the 
income tax in Porto Rico and the Philippine 
Islands, except as may be otherwise provided by 
their respective legislatures." 

This exception of the insular possessions was con- 
firmed and emphasized by the specific requirement 
that every citizen and resident of the possessions 
should continue to make returns and payments under 
the Act of 1916. 

"Sec. 261. That in Porto Rico and the Philip- 
pine Islands the income tax shall be levied, col- 



4 

lected, and paid in accordance with the provi- 
sions of the Revenue Act of 191 6 as amended. 

"Returns shall be made and taxes shall be paid 
under Title I of such Act in Porto Rico or the 
Philippine Islands, as the case may be, by (i) 
every individual who is a citizen or resident of 
Porto Rico or the Philippine Islands. * * * 

"The Porto Rican or Philippine Legislature 
shall have power by due enactment to amend, 
alter, modify, or repeal the income tax laws in 
force in Porto Rico or the Philippine Islands 
respectively." 

The new income taxes of the Act of 191 8 were so 
imposed that they should take efifect pari passu with 
the repeal of the old; they operated at once upon those 
affected by the direct repeal; in the possessions they 
came into force only as the former taxes were super- 
seded by local income taxes imposed by the insular 
legislatures under their delegated authority. This was 
accomplished by establishing the new taxes of the 
1918 Act "in lieu of" the old. 

"Sec. 210. That, in lieu of the taxes imposed 
by subdivision (a) of section i of the Revenue 
Act of 1916 and by section i of the Revenue Act 
of 1917, there shall be levied, collected, and paid 
for each taxable year upon the net income of 
every individual a normal tax at the following 
rates : 

u * * * 

"Sec. 211. (a) That, in lieu of the taxes im- 
posed by subdivision (b) of section i of the Rev- 
enue Act of 1 91 6 and by section 2 of the Revenue 
Act of 1917, but in addition to the normal tax 
imposed by section 210 of this Act, there shall 
be levied, collected, and paid for each taxable 
year upon the net income of every individual, a 
surtax equal to the sum of the following: 



It must be borne in mind that the "War Income 
Tax", Title I of the Revenue Act of 1917, did not 
extend to the insular possessions. For that reason it 
is not mentioned in sections 261 and 1400(b), supra, 
which maintain in force in the islands the income tax 
of the Act of 1916. 

"Sec. 5, (of Title I of the Revenue Act of 
1917). That the provisions of this Title shall not 
extend to Porto Rico or the Philippine Islands, 
and the Porto Rican or Philippine Legislature 
shall have power by due enactment to amend, 
alter, modify, or repeal the income tax laws in 
force in Porto Rico or the Philippine Islands re- 
spectively." 

So long as Title I of the Revenue Act of 1916 
remained "in force for the assessment and collection 
of the income tax fn * * * the Philippine 
Islands" (sec. 1400(b), supra) ^ it applied to citizens 
of the United States there resident. This is clear 
from section 261, supra, which requires "every indi- 
vidual who is a * * * resident of * * * the 
Philippine Islands" to make return and pay tax in the 
Philippines under the Act of 1916. It further ap- 
pears from the fact that "the assessment and collec- 
tion of the income tax in * * * the Philippine 
Islands" under the Act of 1916 included such assess- 
ment and collection against Americans there resident. 

The Revenue Act of 1916 extended the income tax 
to all citizens, residents and local income of the 
insular possessions, but assigned to the insular govern- 
ments all the revenues collected in their respective ter- 
ritories, in deference, no doubt, to principles set out in 
our Declaration of Independence. Perhaps it might 



have been more logical to allocate the revenues 
between the United States and the possessions in 
accordance with the source of income; but this method 
would have been cumbersome. Substantial justice 
with simplicity was achieved by allocation accord- 
ing to the place of collection, which depended on the 
residence of the taxpayer. So, a resident of New 
York enjoying Philippine income made his whole 
return and payment in New York, and his tax went 
to the Treasury of the United States. On the other 
hand, a resident of Manila, whether an American 
citizen or other, there paid his tax on his income of 
every origin, and the proceeds went to the Philippine 
government. The principle is illustrated by the rul- 
ing that a corporation conducting its principal busi- 
ness in an insular possession should be deemed there 
resident and should there pay income tax, although 
incorporated in one of the States (T. D. 2090, Dec. 
14, 1914). 

"Sec. I. (a) That there shall be levied, as- 
sessed, collected, and paid annually upon the 
entire net income received in the preceding calen- 
dar year from all sources by every individual, a 
citizen or resident of the United States, a tax of 
two per centum upon such income; and a like 
tax shall be levied, assessed, collected, and paid 
annually upon the entire net income received in 
the preceding calendar year from all sources 
within the United States by every individual, a 
non-resident alien, including interest on bonds, 
notes, or other interest bearing obligations of resi- 
dents, corporate or otherwise." 

"Sec. 15. That the word 'State' or 'United 
States' when used in this title shall be construed 
to include any Territory, the District of Colum- 



bia, Porto Rico, and the Philippine Islands, when 
such construction is necessary to carry out its pro- 



visions 



Sec. 23. That the provisions of this title shall 
extend to Porto Rico and the Philippine Islands: 
Provided, That the administration of the law, 
and the collection of the taxes imposed in Porto 
Rico and the Philippine Islands shall be by the 
appropriate internal revenue officers of those gov- 
ernments, and all revenues collected in Porto Rico 
and the Philippine Islands thereunder shall ac- 
crue intact to the general governments thereof, 
respectively; * * " 

The point to be emphasized is that under the Rev- 
enue Act of 191 6 the Philippine government collected 
and retained the income taxes of citizens of the United 
States residing in the Philippines. 

To provide increased revenues for war purposes 
Congress adopted the Revenue Act of 191 8 with its 
greatly augmented rates of income tax. But, even in 
the emergency, it was evidently deemed improper to 
tax the dependencies for the benefit of the sovereign, 
and if the new taxes were assigned, like the old, to 
the insular governments they would prove dispro- 
portionate to ordinary requirements. The obvious 
course was to leave the Act of 191 6 in force in the 
insular possessions, withholding the Act of 1918 from 
those territories. The power conferred in the Act of 
1 91 7 was continued by section 261 of the Act of 191 8, 
whereby the possessions might modify the income tax 
to meet their own needs, and, if they saw fit, to give 
financial assistance in the prosecution of the war. If 
the Act of 1916 had been repealed entirely, the 
insular possssions, which had not yet exercised their 



8 

power to establish their own income taxes, might have 
been seriously embarrassed. Controlled by such rea- 
sons Congress in the Revenue Act of 1918 defined 
the United States to exclude the insular possessions, 

"Sec. I. That when used in this Act * * * 
the term 'United States' when used in a geo- 
graphical sense includes only the States, the Ter- 
ritories of Alaska and Hawaii, and the District of 
Columbia." 

And left the income tax of the Act of 1916 in force in 
the possessions, "except as may be otherwise provided 
by their respective legislatures." No provision was 
made for distinct taxation of citizens of the United 
States residing in the possessions, but it appears that 
Congress contemplated a repeal by the insular legisla- 
tures of the Act of 1916, which would, of course, 
bring into operation upon resident Americans the new 
taxes "in lieu of" those so superseded. 

In the Philippine Islands the Act of 1916 remained 
in force until January i, 1920, and therefore applied 
to income of 1918, excluding in that territory the 
operation on income of 1918 of sections 210 and 211 
of the Revenue Act of 1918. This appears from para- 
graph V'l of the complaint (printed transcript, p. 3), 
admitted by demurrer. Probably the Court is not 
concluded by this admission, but may judicially notice 
whether or not an Act of Congress has been repealed 
by the Philippine Legislature under delegated power. 
It will be found that there is no pertinent Philippine 
legislation except Act No. 2833, approved March 7, 
1919. This Act, which provides a complete scheme 
of income taxes for the Philippine Islands, is effective 



January i, 1920 (sec. 34) ; it ''supersedes" the Income 
Tax Title of the Revenue Act of 1916 as amended 
by Title XII of the Revenue Act of 1917 (sec. 20). 

So. plaintif]f's 191 8 income, by reason of his Philip- 
pine residence, was subject to tax under the Revenue 
Act of 1916 by virtue of sections 261 and 1400(b) of 
the Revenue Act of 191 8. And, consequently, such 
income was not subject to the taxes of sections 210 
and 211 of the Revenue Act of 1918, which could not 
apply "in lieu." 

The defendant Collector was evidently misled by 
provisions of "Regulations 45" of the Treasury De- 
partment. 

"Art. 1 131. Income tax in Porto Rico and 
Philippine Islands. — In Porto Rico and the Phil- 
ippine Islands the Revenue Act of 1916, as 
amended, is in force and the Revenue Act of 191 8 

is not. See also section 1400 of the statute. 

* * * 

"Art. 1 132. Taxation of individuals between 
United States and Porto Rico and Philippine 
Islands. — (a) A citizen of the United States who 
resides in Porto Rico, and a citizen of Porto Rico 
who resides in the United States, are taxed in 
both places, but the income tax in the United 
States is credited with the amount of any income, 
war profits and excess profits taxes paid in Porto 
Rico. See section 222 of the statute and articles 
(of the regulations) 381-384. * * * The 
same principles apply in the case of the Philip- 
pine Islands." 

As applied to the Philippines, Article 1132, supra, 
is correct for taxation of income of 1919 affected by 
Philippine taxes; it is erroneous for taxation of income 
of 191 8 subject to the taxes of the Revenue Act of 



10 

1916. The error, whether in the Regulations or in 
their interpretation by defendant, arises from a mis- 
understanding of section 222 of the Act of 1918. 

''Sec. 222. (a) That the tax computed under 
Part II of this title shall be credited with: 

"(i) In the case of a citizen of the United 
States, the amount of any income, war-profits, and 
excess-profits taxes paid during the taxable year 
to any foreign country, upon income derived from 
sources therein, or to any possession of the United 
States. * * *" 

Obviously, this section contemplates two returns of 
the same income by a citizen of the United States, one 
in the United States under sections 210 and 211, and 
another in an insular possession. But if the return in 
the possession, here referred to, were the return under 
the Act of 1916 there remaining in force, there would 
be a conflict between section 222 and the inference 
from sections 210, 211, 261 and 1400(b) that the 
operation of the tax of 1916 excludes the operation 
of the tax of 191 8. To contend that the 191 8 tax is 
effective "in lieu of" the 1916 tax while the latter 
still persists would be as paradoxical as to assert 
inheritance from a living ancestor. 

"Direct repeal would be no stronger, as it is 
expressly enacted that the increased duties and 
rates of duty shall be imposed in lieu of the 
duties heretofore imposed by law." (Gossler v. 
Goodrich, 10 Fed. Cas. 836, 839. 

" 'In lieu of means in place of the thing modi- 
fied by the quoted phrase." {Hendricks v. 
Thomas, 242 Fed. 37, 42.) 



1 1 



The apparent conflict disappears and the Act is left 
wholly congruous if the reference in section 222 to 
"taxes paid * * * to any possession" is confined 
to such taxes imposed by the legislature of the pos- 
session under its delegated power. On January i, 
1920, the local statute superseded in the Philippines 
the Act of 1916 and thus left room for the operation 
upon United States citizens there resident of the taxes 
of sections 210 and 211 "in lieu of" those so repealed; 
resident Americans thereafter pay the local income 
tax to the Philippine Islands, and also pay to the 
United States the income tax of 191 8, taking the cor- 
responding credit under section 222. 

This construction is not only required to harmonize 
the statute, but is compelled by the terms of section 
222. It will be noted that the credit is not only for 
income taxes, but also for war-profits and excess- 
profits taxes. As no Act of Congress has ever ex- 
tended war-profits and excess-profits taxes to the insu- 
lar possessions nor to Americans residing therein, the 
reference in that respect could have been applicable 
only to such taxes imposed by local authority. The 
grouping of the possessions with foreign countries 
supports the idea of taxes imposed by other authority 
than that of Congress. The use of the preposition to 
in the phrase, "to any possession," negatives the pos- 
sibility that the taxes of the Act of 1916 were in con- 
templation, for those taxes were paid to the United 
States even though in a possession, and none the less 
because Congress saw fit to allot the insular collections 
to the insular governments. Under the Act of 1916 
the taxpayer in Manila and the taxpayer in San 



12 

Francisco paid income taxes under the same author- 
ity — that of the United States — and discharged the 
same obligation — to the United States. In section 261, 
where the reference is to the Act of 1916, Congress 
uses discriminatingly the phrase "in the Philippine 
Islands." 

The conclusive proof is in the interpretation which 
Congress, in another section of the Revenue Act of 
1918, puts upon the clause, "taxes paid * * * to 
any possession of the United States." 

"Sec. 214. (a) That in computing net income 
there shall be allowed as deductions: * * * 

"(3) Taxes paid or accrued within the taxable 
year imposed (a) by the authority of the United 
States, except income, war profits and excess- 
profits taxes; or (b) by the authority of any of 
its possessions, except the amount of income, war 
profits and excess-profits taxes allowed as a credit 
under section 222; * * *" 

So it appears that the "taxes allowed as a credit 
under section 222" are "taxes * * * imposed 
* * * ^j- the authority of * * * possessions," 
and the description is made more impressive by con- 
trast with the preceding class of such taxes "imposed 
by the authority of the United States," a class which 
does include the income taxes of the Revenue Act 
of 1916. 

Construed as Congress intended it, section 222 fits 
perfectly into the general purpose of the Revenue Act 
of 1918 for which plaintiff contends: that the two 
Acts of Congress should be mutually exclusive; that 
so long as the Act of 1916 applied in any case, the 
Act of 1918 should not come into operation. 



13 

Applying these principles to the facts set out in the 
complaint it appears: that plaintiff's 1918 income 
was taxable in the Philippine Islands in accordance 
with the Revenue Act of 191 6, and, therefore, was not 
taxable under sections 210 and 211 of the Revenue 
Act of 1918. It follows that defendant's exaction of 
payment from plaintiff was unlawful and erroneous; 
that the demurrer to the complaint should have been 
overruled, and that the judgment of dismissal of the 
District Court should be reversed. 

W. H. Lawrence, 
Burt F. Lum, 

Counsel for Plaintiff in Error. 

563 Mills Building, 
San Francisco, Calif. 



No. 3615 

IN THE 



United States Circuit Court of Appeali 



For the Ninth Circuit 



W. H. LAWRENCE, 

Plaintiff in Error, 

vs. 

JUSTUS S. WARDELL, United States 
Collector of Internal Revenue for the 
First District of California, 

Defendant in Error. 



BRIEF FOR DEFENDANT IN ERROR 



FRANK M. SILVA, 

United States Attorney. 

E. M. LEONARD, 

Assistant U. S. Attorney. 
Attorneys for Defendant in Error. 

CARL A. MAPES, 
Solicitor of Internal Revenue, 

FERDINAND TANNENBAUM, 
JOHN M. STERNHAGEN, 

Special Attorneys, 
Bureau of Internal Revenue, 
Of Counsel. 



Neal. Stratford & Kerr. S. F. 11772 



No. 3615 

IN THE 

United States Circuit Court of Appeals 

For the Ninth Circuit 



W. H. LAWRENCE, 

Plaintiff in Error, 

vs. 

JUSTUS S. WARDELL, United States 
Collector of Internal Revenue for the 
First District of California, 

Defendant in Error. 



BRIEF FOR DEFENDANT IN ERROR 



I. 

STATEMENT OF THE CASE. 

The case arose on complaint of the plaintiff in 
error to recover $2175.58 income taxes and interest 
alleged to have been erroneously collected by the de- 
fendant in error under the Revenue Act of 1918. 
Defendant in error filed a general demurrer which 
was sustained by the District Court on a memoran- 
dum opinion of Judge Rudkin handed down No- 
vember 16, 1920. The plaintiff brings error. 



II. 

STATEMENT OF FACTS. 

The plaintiff, a native born citizen of the United 
States, was during all of the year 1918 and until 
March 1919 a resident of the Philippine Islands. In 
January, 1919, before sailing from Manila he there 
paid income taxes amounting to $281.43, represent- 
ing the full amount of taxes on his 1918 income com- 
puted in accordance with the Revenue Act of 1916 
as amended by the act of 1917. In March, 1919, he 
established his residence in San Francisco and was 
required by defendant in July to pay income taxes 
computed in accordance with the Revenue Act of 
1918, credit being given for the amount of taxes 
already paid in Manila. The payment was made un- 
der protest, and claim for refund was duly filed and 
rejected. 

III. 

STATUTES INVOLVED. 

Revenue Act of 1916, approved September 8, 1916, 
Title I., Part I. 

''Sec. 1. (a) That there shall be levied, as- 
sessed, collected and paid amiually upon the 
entire net income received in the preceding 
calendar year from all sources by every indi- 
vidual, a citizen or resident of the United 
States, a tax of two per centum upon such in- 
come; and a like tax shall be levied, assessed, 
collected, and paid annually upon the entire net 



income received in the preceding calendar year 
from all sources within the United States by 
every individual, a nonresident alien, including 
interest on bonds, notes, or other interest-bear- 
ing obligations of residents, corporate or other- 
wise. 

"Sec. 23. That the provisions of this title 
shall extend to Porto Rico and the Philippine 
Islands: Provided, That the administration of 
the law, and the collection of the taxes imposed 
in Porto Rico and the Philippine Islands shall 
be by the appropriate internal-revenue officers 
of these governments, and all revenues collected 
in Porto Rico and the Philippine Islands there- 
under shall accrue intact to the general Govern- 
ments thereof, respectively; Provided further. 
That the jurisdiction in this title conferred 
upon the district courts of the United States 
shall, so far as the Philippine Islands are con- 
cerned, be vested in the courts of the first in- 
stance of said islands. * * * ". 

Revenue Act of 1917, approved October 3, 1917. 

"Sec. 1. That in addition to the normal tax 
imposed by the subdivision (a) of section one 
of the Act entitled 'An Act to increase the rev- 
enue, and for other purposes,' approved Sep- 
tember eighth, nineteen hundred and sixteen, 
there shall be levied, assessed, collected, and 
paid a like normal tax of two per centum upon 
the income of every individual, a citizen or resi- 
dent of the United States, received in the calen- 
dar year nineteen hundred and seventeen and 
every calendar year thereafter. 



' ' Sec. 5. That the provisions of this title shall 
not extend to Porto Rico or the Philippine Is- 
lands, and the Porto Rican or Philippine Legis- 
lature shall have power by due enactment to 
amend, alter, modify, or repeal the income tax 
laws in force in Porto Rico or the Philippine 
Islands, respectively. ' ' 

Revenue Act of 1918, approved February 24, 1919, 
Title II, Part II. 

' ' Sec. 210. That, in lieu of the taxes imposed 
by subdivision (a) of section 1 of the Revenue 
Act of 1916 and by section 1 of the Revenue Act 
of 1917, there shall be levied, collected, and paid 
for each taxable year upon the net income of 
every individual a normal tax at the following 
rates: * ^ *. 

"Sec. 211 (a). That, in lieu of the taxes im- 
posed by subdivision (b) of section 1 of the 
Revenue Act of 1916 and by section 2 of the 
Revenue Act of 1917, but in addition to the 
normal tax imposed by section 210 of this Act, 
there shall be levied, collected, and paid for each 
taxable year upon the net income of every in- 
dividual, a surtax equal to the sum of the fol- 
lowing * * * . 

"Sec. 222. (a) That the tax computed under 
Part II of this title shall be credited with : 

(1) In the case of a citizen of the United 
States, the amount of any income, war-profits 
and excess-profits taxes paid during the taxable 
year to any foreign country, upon income de- 



rived from sources therein, or to any possession 
of the United States ; and * * * . 

"Sec. 260. That any individual who is a citi- 
zen of any possession of the United States (but 
not otherwise a citizen of the United States) 
and wlio is not a resident of the United States, 
shall be subject to taxation under this title only 
as to income derived from sources within the 
United States, and in such case the tax shall be 
computed and paid in the same manner and sub- 
ject to the same conditions as in the case of 
other persons who are taxable only as to in- 
come derived from such sources. 

''Sec. 261. That in Porto Rico and the Phil- 
ijopine Islands the income tax shall be levied, 
assessed, collected, and paid in accordance with 
the provisions of the Revenue Act of 1916 as 
amended. 

Returns shall be made and taxes shall be paid 
under Title I of such Act in Porto Rico or the 
Philippine Islands as the case may be by (1) 
every individual who is a citizen or resident of 
Porto Rico or the Philippine Islands, or de- 
rives income from sources therein * * * , 
An individual who is neither a citizen nor a 
resident of Porto Rico or the Philippine Is- 
lands, but derives income from sources therein 
shall ])e taxed in Porto Rico or the Philippine 
Islands as a nonresident alien individual * *. 

The Porto Rican or Philippine Legislature 
shall have power by due enactment to amend, 
alter, modify, or repeal the income tax laws in 



force in Porto Rico or the Philippine Islands, 
respectively. 

^'Sec. 1400. * * ^ * (b) Such parts of 
Acts shall remain in force for the assessment 
and collection of all taxes which have accrued 
thereunder, and for the imposition and collec- 
tion of all penalties or forfeitures which have 
accrued and may accrue in relation to any such 
taxes, and except that the unexpended balance 
of any appropriation heretofore made and now 
available for the administration of any such 
part of an Act shall be available for the admin- 
istration of this Act or the corresponding pro- 
vision thereof : Provided, That, except as other- 
wise provided in this Act, no taxes shall be col- 
lected under Title I of the Revenue Act of 1916 
as amended by the Revenue Act of 1917, or Title 
I or II of the Revenue Act of 1917, in respect 
to any period after December 31, 1917 * * *. 
In the case of any tax imposed by any part of 
an Act herein repealed, if there is a tax imposed 
by this Act in lieu thereof, the provision im- 
posing such tax shall remain in force until the 
corresponding tax under this Act takes effect 
under the provisions of this Act. 

Title I of the Revenue Act of 1916 as amend- 
ed by the Revenue Act of 1917 shall remain in 
force for the assessment and collection of the 
income tax in Porto Rico and the Philippine 
Islands, except as may be otherwise provided by 
their respective legislatures." 



Regulation 45, United States Internal Revenue. 

*'Art. 1131. Income tax in Porto Rico and 
Philippine Islands. In Porto Rico and the 
Philippine Islands the Revenue Act of 1916, as 
amended, is in force and the Revenue Act of 
1918 is not. See also section 1400 of the Statute. 
No credit against net income is allowed indi- 
viduals and no deduction from gross income is 
allowed corporations with respect to dividends 
received from a foreign corporation (foreign 
with respect to the United States) taxed in 
Porto Rico or the Philippines, but having no 
income from sources within the United States. 

"Art. 1132. Taxation of individuals between 
United States and Porto Rico and Philippine 
Islands, (a) A citizen of the United States 
who resides in Porto Rico, and a citizen of 
Porto Rico who resides in the United States, are 
taxed in both places, but the income tax in the 
United States is credited with the amount of 
any income, war profits and excess profits taxes 
paid in Porto Rico. See Section 222 of the 
statute and articles 381-384. (b) A resident of 
the United States, who is not a citizen of Porto 
Rico, is taxable in Porto Rico as a non-resident 
alien individual on any income derived from 
sources within Porto Rico, but the income tax in 
the United States is credited with the tax paid 
in Porto Rico, (c) A resident of Porto Rico, 
who is not a citizen of the United States, is tax- 
able in the United States as a nonresident alien 
individual on any income derived from sources 
within the United States, and receives no 



8 

credit. See also section 260 and article 1121. 
The same principles apply in the case of the 
Philippine Islands." 

IV. 

THE ISSUE. 

IS THE INCOME OF THE PLAINTIFF, A 
CITIZEN OF THE UNITED STATES RESID- 
ING IN THE PHILIPPINE ISLANDS DURNG 
THE ENTIRE YEAR 1918, TAXABLE IN AC- 
CORDANCE WITH THE REVENUE ACT OF 
1918? 

V. 

THE ARGUMENT. 

1. The Act of 1916, as amended by the Act of 
1^11 ^tvas, insofar, as it affected the Philippine Isl- 
ands, enacted by Congress in its capacity of local 
legislature for the Philippine Islands. 

The problems presented by this case arise pri- 
marily as a result of the peculiar relationship exist- 
ing between the United States and the Philippine 
Islands. An understanding of them necessitates a 
clear comprehension of the attitude of the United 
States toward the territory acquired from Spain 
under the Treaty of 1898. The policy adopted by 
the Federal government with respect to such terri- 
tory was one calculated to permit local autonomy, 
and to introduce our forms of government and ju- 
dicial procedure as soon as, but not sooner than. 



the habits of the people allowed. In this respect, the 
question of revenue legislation proved and still 
proves the most difficult and it was early recognized 
that if the power of the national government to ac- 
quire territory was to be effectually exercised, it was 
not to be subjected to the restriction of uniformity 
of taxation. Doivnes v. Bidwell, 182 U. S. 244. 

The problem of providing revenue for the govern- 
ment of the Philippine Islands, and yet giving to 
the residents of those Islands that local autonomy 
and experience which is so necessary in developing 
a people who have been under the control of a for- 
eign government and as a result thereof have had no 
experience in self government, proved especially dif- 
ficult in connection with the levying of income taxes. 
The Revenue Act of 1916 provided for income taxes 
in the United States. The Philippine Islands, in 
great need of revenues for the purpose of building 
up educational facilities, establishing adequate roads 
and highways, providing for the public health, and 
administering law for the benefit and welfare of the 
people resident therein at the time of the passage of 
such Act, were greatly in need of moneys. Unless 
suitable provisions were made for extending the 
terms of this Act to the Philippine Islands it would 
have been necessary for Congress to make appropri- 
ations for the benefit of these Islands. To prevent 
this contingency, Congress provided that the Reve- 
nue Act of 191G should extend in its entirety to those 
Islands but that the taxes imposed thereby should 



10 

be assessed and levied by the administrative officers 
of the Philippines and that all revenue collected 
under the Act should be paid into the Philippine 
treasury, to be subject to appropriations in the same 
manner as other funds in such treasury. This is 
seen from Section 23 of the Revenue Act of 1916, 
which in effect establishes a local income tax law for 
the Philippine Islands. 

The action of Congress in enacting a law locally 
applicable to a possession is well recognized as a 
proper and valid exercise of its legislative power. 
When legislating for the territories or possessions 
of the United States, Congress is acting in the ca- 
pacity of a local legislature for such territories or 
possessions. When a tax is imposed by a law of 
Congress, to be collected in a territory or possession 
from citizens or residents of such territory or pos- 
session and the amount thus collected is to be 
covered into the treasury of such territory or pos- 
session, the power of Congress is not exercised under 
the power delegated to it by Section 8 of Article 1 
of the Constitution prescribing that duties, imposts 
and excises shall be uniform throughout the United 
States, nor is it exercised under Article XVI of the 
amendments of the Constitution, permitting the 
levying and collecting of taxes on incomes, but is 
exercised under paragraph 2 of Section 3 of Article 
IV of the Constitution, which vests in Congress the 
power to dispose of and make all needful rules and 
regulations respecting the territory or other prop- 



11 

erty belonging to the United States. This fact is 
well illustrated by the case of Binns v. United 
States, 194 U. S. 486. In that case Congress had 
imposed certain license taxes in the territory of 
Alaska. The plaintiff in error was convicted for 
not paying a tax levied in accordance with that Act 
and an appeal was taken therefrom. It was con- 
tended that the Act of Congress levying the tax was 
repugnant to the clause of the Constitution requir- 
ing uniformity throughout the United States be- 
cause the taxes were imposed only in Alaska. The 
Supreme Court held that the legislation was consti- 
tutional because Congress in passing the same was 
merely exerting its authority as a local legislature 
for Alaska, and that it was acting in a similar ca- 
pacity to the legislature of any state in providing 
for the raising of revenues from sources within its 
particular jurisdiction for public use within that 
jurisdiction. On pages 407 and 408 the court said: 

' ' The power of Congress, legislating as a local 
legislature for the District, to levy taxes for 
District purposes only, in like maimer as the 
legislature of any state may tax the people of 
any state for state purposes, was expressly ad- 
mitted, and has never since been doubted. In the 
exercise of this power Congress like any state 
legislature unrestricted by constitutional pro- 
visions may in its discretion exempt certain 
classes of property from taxation, or may tax 
them at a lower rate than other property." 



12 



Therefore, it is evident that Section 23 of the 
Revenue Act of 1916 when it j^rovides that the ad- 
ministration of the Act and the collection of taxes 
imposed in the Philippine Islands shall be by the 
appropriate officials in such Islands, and when it 
si:)ecifies that all revenues collected in such Islands 
shall accrue to the general government thereof and 
that judicial jurisdiction under the Act shall be 
placed in the courts of the first instance of such Isl- 
ands, prescribes for the Philippines a system of do- 
mestic taxation. In other words. Congress extended 
to the Philippine Islands the provisions of the Rev- 
enue Act of 1916, not on the theory that the Philip- 
pine Islands were properly included within the gen- 
eral legislation, but rather on the theory that it was 
acting as a local legislature for the Philippine Isl- 
ands in passing an income tax law peculiarly appli- 
cable to those Islands. 

In the Revenue Act of October 3, 1917, which pre- 
scribed increased rates of taxation it was provided 
by Section 5 that the income tax provisions thereof 
should not extend to the Philippine Islands. An 
express provision was made therein enabling the 
legislature of the Philippines to amend, alter, mod- 
ify or repeal the provisions of the 1916 Act. It is 
evident from Section 5 of the Revenue Act of 1917, 
that Congress regarded the Revenue Act of 1916, so 
far as the Philippine Islands were concerned, as an 
Act for the Philippine Islands rather than general 
revenue legislation which applied to the Philippine 



13 

Islands in the same manner as it applied to the 
United States. 

If it had not been expressly provided by Section 
23 of the Revenue Act of 1916, and Section 5 of the 
Revenue Act of 1917 that the provisions of those 
Acts imposing income taxes upon every individual, 
a citizen or resident of the United States, should 
extend to the Philippine Islands, citizens of the 
United States, resident in the Islands, would have 
been subject to taxation under such Acts because 
the Islands are a part of the United States. DeLime 
V. Bidivell, 182 U. S. 244. However, in order to 
provide sufficient revenues for the Philippines and 
to enable local administrative officials to collect and 
appropriate the same, citizens of the United States 
who were resident in the Philippine Islands were 
placed in the same category for the purposes of tax- 
ation as were citizens or residents of those Islands 
who were not citizens of the United States. Con- 
gress expressly made citizens of the United States 
who were residen4:s of the Philippine Islands, sub- 
ject to the jurisdiction of these Islands in tax 
matters. 

2. Tlte Revenue Act of 1918 imposes a tax equally 
upon all citizens of the United States regardless of 
their residence. 

The Reveime Act of 1918 presents a different sit- 
uation. By that Act, no distinction was made with 
regard to the liability of the citizens of the United 



14 

States, no matter where they reside. Sections 210 
and 211 of the Revenue Act of 1918 include within 
their scope every individual who is a citizen of the 
United States, regardless of his residence. The tax 
imposed upon such citizens are "in lieu of the taxes 
imposed by" the Revenue Acts of 1916 and 1917. 
But if a citizen of the United States had not been 
taxable under the Revenue Acts of 1916 or 1917 he 
would neverthless be subject to taxation under the 
Revenue Act of 1918 even although the taxes im- 
posed by such later Act were in lieu of those im- 
posed by the former Acts. It could not with reason 
be contended that Congress, by using the words "in 
lieu of", limited itself to taxing only those indi- 
viduals who were subject to taxation under prior 
Acts. If this contention were sound, an individual 
who was exempted by the prior Acts would not be 
subject to taxation under the 1918 Act even though 
the 1918 Act removed such exemption. Therefore, 
the argument of the plaintiff in error in this case 
to the effect that the Revenue Act of 1918 only taxes 
those individulas who were taxable under the Rev- 
enue Acts of 1916 and 1917 because Congress used 
the words "in lieu of" is untenable. Even although 
citizens of the United States who were residents 
of the Philippine Islands were taxable under the 
Revenue Act of 1916 by virtue of the fact that such 
Act was applied to the Philippines as a statute of 
local character, and although such citizens were ex- 
empted from the increased rates prescribed by the 



15 



Revenue Act of 1917, nevertheless, no basis exists for 
the contention that such citizens were not made tax- 
able by the Revenue Act of 1918 because Congress 
said that the taxes thereby imposed were "in lieu 
of" those imposed by the prior Acts. 

Section 260 of the Revenue Act of 1918 is in itself 
sufficient to rebut the argument that citizens of the 
United States who are residents of the Philippine 
Islands are not subject to taxes under such Act. 
This section provides "that any individual who is 
a citizen of any possession of the United States 
(but not otherwise a citizen of the United States), 
and who is not a resident of the United States, 
shall be subject to taxation under this title only as 
to income derived from sources within the United 
States, and in such case the tax shall be computed 
and paid in the same maner and subject to the same 
conditions as in the case of other persons who are 
taxable only as to income derived from such 
sources". (Italics ours.) This Section lays down 
the rule that individuals who are citizens of a pos- 
session of the United States and are not citizens 
of the United States by virtue of such fact, and 
persons who are not residents of the United States, 
shall be subject to taxation on income derived from 
sources within the United States. In other words, 
this Section shows that, not only are citizens of the 
United States taxable under the provisions of the 
Revcinie Act of 1918, but also that citizens of pos- 
sessions of the United States who are not citizens 



16 

of the United States are also taxable under such 
Act, but only with regard to income derived from 
sources within the United States. The intention 
of Congress therefore clearly is to subject every in- 
dividual who is under its jurisdiction to the taxes 
imposed by the 1918 Act, except such individuals 
as are citizens of a possession of the United States 
and who do not derive income from sources within 
the United States. Every individual subject to the 
jurisdiction of Congress, no matter whether he re- 
sides in continental United States or in any terri- 
tory or possession of the United States, must have 
been subject to taxation under Sections 210 and 211 
of the Revenue Act of 1918 or it would not have 
been necessary for Congress to incorporate Section 
260 in such Act in order to exempt the income of 
individuals who are citizens of a possession and not 
citizens of the United States and who do not derive 
income from sources within the United States. 

The fact that the Revenue Act of 1918 included 
within its terms all individuals, citizens or residents 
of the United States except citizens of possessions 
who are not citizens of the United States and who 
derive no income from sources within the United 
States, and that Section 261 of such Act specifically 
provided that in the Philippine Islands the income 
tax shall be levied, assessed, collected and paid in 
accordance with the provisions of the Revenue Act 
of 1916, as amended, that every individual who is a 
citizen or resident of the Philippine Islands or de- 



17 

rives income from sources therein shall make re- 
turns and pay taxes under the Revenue Act of 1916 
and that the Philippine Legislature shall have 
power by due enactment to amend, alter, modify or 
repeal the income tax laws in force in such Islands 
illustrates the conclusion hereinbefore reached that 
the Revenue Act of 1916 so far as it applied to the 
Philippine Islands was an act of local character 
which was passed with reference to the Philippine 
Islands in the same manner as though Congress 
were acting in the capacity of a local legislature 
for such Islands. The Revenue Act of 1916 is in 
force in the Philippine Islands until the Philippine 
legislature by due enactment alters, amends or re- 
peals the same, but it is in force therein as a local 
statute and not as a general law of the United 
States. It wag continued in force by the Revenue 
Act of 1918 because it serves to provide a basis for 
local revenues from incomes in such Islands. It is 
repealed as a general statute of the United States. 
As far as the Philippine Islands are concerned, the 
Revenue Act of 1916 serves the same purpose there- 
in, in view of Section 261 of the Revenue Act of 
1918, as the income tax law of New York serves for 
that State. To contend that a citizen of the United 
States is not taxable under the Revenue Act of 
1918 because he resides in the Philippine Islands 
and there is an income tax law in force in such 
Islands, is to argue that a citizen of the United 
States who resides in New York should be exempt 



18 

from taxation under the Revenue Act of 1918 be- 
cause he is subject to income taxes imposed by the 
State of New York. 

Any other conclusion than that reached herein 
would violate the well known principle that taxes 
shall be applied as nearly as practicable so as to 
treat all citizens similarly. It is axiomatic that un- 
less it is clearly shown to the contrary, Congress will 
be presumed to have intended equality of treatment 
in tax matters. Plaintiff alleges that he is a native 
born citizen of the United States and then seeks 
to secure the benefit of lower taxation than that of 
his fellow citizens residing in the United States, by 
reason of the fact that he resided in the Philippines. 
The Government contends that as such a citizen, 
regardless of his place of residence, he is subject 
alike with all other citizens to the Revenue Act of 
1918. If the general principle of similarity of 
treatment of all citizens is kept in mind as the 
underlying spirit of the statute, it will be found 
that all of the provisions of the statute here involved 
are in harmony with this principle and that to con- 
strue them in accordance with the plaintiff's conten- 
tion would be to violate their intendment. 

Simply stated, there are in the Philippines three 
classes of individuals dealt with by the 1918 Act. 
First, citizens of the United States ; second, citizens 
of the Philippine Islands, and third, residents of 
the Philippine Islands. By the principle of mutual 



19 

exclusion, the third class can only include persons 
who are not citizens of the United States. In other 
words, the plaintiff in error cannot, by reason of 
his residence in the Philippines, throw off his obli- 
gations as a citizen of the United States to bear the 
burdens equally with all other citizens in time of 
war. Thus it will be seen that the court below was 
entirely correct when it said in its memorandum 
opinion that: 

"The tax is imposed on citizens of the United 
States regardless of their place of residence, on 
residents of the United States regardless of 
their citizenship, and upon the income of non- 
resident aliens from sources within the United 
States. Nothing is found in any other pro- 
vision of the Act in conflict with this view. 
Thus section 260 of the Act of 1918 refers to 
individuals who are citizens of any possession 
of the United States, but not otherwise citizens 
of the United States, and the following section 
provides that returns shall be made by indi- 
viduals who are citizens or residents of Porto 
Rico and the Philippine Islands or derive in- 
come from sources herein, but makes no ref- 
erence to citizens of the United States residing 
in the Islands." (R. page 11.) 

The plaintiff in error, being a United States cit- 
izen, claims exemption from the taxes imposed by 
the 1918 Act. He must show beyond doubt that he 
is entitled to such exemption. In Bank of Com- 
merce V. Tennessee, 161 U. S. 134, the United States 
Supreme Court said (page 146) : 



20 

*' These cases show the principle upon which 
is founded the rule that a claim for exemption 
from taxation must be clearly made out. Taxes 
being the sole means by which sovereignties can 
maintain their existence, any claim on the part 
of any one to be exempt from the full payment 
of his share of taxes on any portion of his 
property must on that account be clearly de- 
fined and founded upon plain language. There 
must be no doul^t or ambiguity in the language 
used upon which the claim to the exemption is 
founded. It has been said that a well founded 
doubt is fatal to the claim; no implication will 
be indulged in for the purpose of construing the 
language used as giving the claim for exemp- 
tion, where such claim is not founded upon the 
plain and clearly expressed intention of the 
taxing power." 

In J. W. Perry Company v. Norfolk, 220 U. S. 
472, the Supreme Court said more recently (page 
480): 

"Where one relies upon an exemption from 
taxation * * * the contract of exemption 
must be clear. Any doubt or ambiguity must 
be resolved in favor of the public." See, also, 
Vickshurg v. Dennis, 116 U. S. 665, 668. 

The plaintiff in error contends that subdivision 
(1) of Section 222 (a) of the Revenue Act of 1918, 
which provides that a citizen of the United States 
shall be credited with "the amount of any income, 
war profits, and excess profits taxes paid during the 
taxable year * * * to any possession of the 
United States", shows that citizens of the United 



21 



States who are residents of the Philippine Islands 
are not subject to taxation under the Revenue Act 
of 1918 because the return in the possesion refered 
to in this section is not a return under the Act of 
1916 inasmuch as it only applies to taxes imposed 
by local authority. Such a construction is unwar- 
ranted. As has been shown above, the taxes im- 
posed by the Revenue Act of 1916 in the Philippine 
Islands were not paid to the United States but were 
paid to the Philippine Islands on the theory that 
the 1916 Act so far as it applied to the Philippines 
was a local Act passed by Congress acting in the 
capacity of the Philippine legislature. Section 222 
permits individuals who are subject to taxes under 
the Revenue Act of 1918 and who reside in the 
Philippine Islands and are consequently taxable 
therein, whether such taxes are imposed by Congress 
acting in the capacity of the legislature of the Phil- 
ippine Islands or by the local legislature thereof, to 
take a credit for taxes imposed therein. It contem- 
plates two returns by such an individual, one under 
the Revenue Act of 1916 and one under the Revenue 
Act of 1918. The return under the Revenue Act 
of 1916, which Act is repealed as to the United 
States generally, is a return to the Philippine Isl- 
ands while the return under the Revenue Act of 1918 
is the one prescribed for every citizen of the United 
States. There is no conflict between the Acts. Sec- 
tion 222 (a) in itself shows that the Revenue Act of 
1918 is applicable to the plaintiff in error. 



22 

While it is submitted that the position of the 
Government is amply sustained by the plain language 
and spirit of the statutes themselves as above inter- 
preted further support is found in the administra- 
tive regulations of the Department of the Govern- 
ment charged with the duty of applying the statute. 
The construction of the statute by such Govern- 
mental Department is entitled to great weight.. 
United States v. Graham, 110 U. S. 219; United 
States V. Falk, 204 U. S. 143; United States v. Her- 
manos y Compania, 209 U. S. 337 ; Komada & Com- 
pany V. United States, 215 U. S. 392. 

By Regulations 45, Articles 1131 and 1132, the 
view which has been set forth is clearly expressed 
in the following language : "a citizen of the United 
States who resides in" the Philippine Islands is 
"taxed in both places but the income tax in the 
United States is credited with the amount of any 
income, war profits, and excess profits taxes paid in" 
the Philippine Islands. The taxes here sought to 
be recovered were collected in accordance with this 
Regulation and full credit was admittedly given to 
plaintiff for the amount of taxes which he had 
already paid in the Philippine Islands. This Article 
also makes it clear that citizens of the United States 
are treated differently in the Philippines from cit- 
izens of the Philippine Islands. For by provision 
(b) of the Article a citizen of the United States 
residing in the United States deriving income from 
sources within the Philippines is taxable in the 



23 

Philippines as a nonresident alien individual. Fur- 
ther, by provision (c) a resident of the Philippines 
who is not a citizen of the United States is taxable 
in the United States as a nonresident alien indi- 
vidual. By implication, a resident of the Phil- 
ippines who is a citizen of the United States is pro- 
vided for elsewhere. This confirms the view that 
Section 261 has no apiDlication whatever to citizens 
of the United States. 

VI. 

CONCLUSION. 

The Revenue Act of 1918 is applicable to the 
plaintiff in error as a citizen of the United States, 
and judgment for the defendant in error should 
therefore be affirmed. 

Respectfully submitted, 

FRANK M. SILVA, 

United States Attorney. 

E. M. LEONARD, 

Assistant U. S. Attorney. 
Attorneys for Defendant in Error. 

CARL A. MAPES, 

Solicitor of Internal Revenue, 

FERDINAND TANNENBAUM, 
JOHN M. STERNHAGEN, 

Special Attorneys, 
Bureau of Internal Revenue, 
Of Counsel. 



No, 3616 






MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, a Corporation, 

Appellant, 
vs. 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, a Corporation, 

Appellee, 



©rattamj^t vi IJ^wrJi. 



Upon Appeal from the Southern Division of the 
United States District Court for the 
Northern District of California, 
Second Division. 



* » L. t. M 



KilDier liros. Co. Print, 330 Jackson St., a. F., Oal. 



No. 3616 



MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, a Corporation, 

Appellant, 

vs. 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, a Corporation, 

Appellee. 



®raitHm|jt of ^Mtaxk 



Upon Appeal from the Southern Division of the 
United States District Court for the 
Northern District of California, 
Second Division. 



Kilmer Uros. fo. I'rint, 330 Jacksou St., S. b ., Oal. 



INDEX TO THE PRINTED TRANSCRIPT OF 

RECORD. 



[Clerk's Note: When deemed likely to be of an Important nstare, 
cTors or doubtfiU matters appearing in the original certified record are 
printed literally in Italic; and, likewise, cancelled matter appearing in 
the original certified record is printed and cancelled herein accord- 
ingly. When possible, an omission from the text Is indicated by 
printing in italic th« two words between which the omission seems to 
occur.] 

Page 

Assignment of Errors of Plaintiff on Appeal 
from Order and Decree Entered in the 
Minutes, October 4, 1920, and Final Decree 

Made and Entered November 1, 1920 117 

Bill of Complaint for Infringement of Patent. 1 

Bond on Appeal 125 

Certificate of Clerk U. S. District Court to 

Transcript of Record 130 

Citation 131 

Decree 36 

Judgment 36 

Opinion Dismissing Bill 21 

Order Allowing Appeal of Plaintiff from Order 
and Decree of October 4, 1920, and from 
the Final Decree of November 1, 1920. . . . 115 
Order Allowing Withdrawal of Original Exhib- 
its 127 

Order Designating Judge Dietrich to Sit in 

This Court 18 

Order Dismissing Bill, etc 19 

Order Enlarging Time to and Including Janu- 
ary 20, 1921, to File Record and Docket 
Cause 133 



ii Majestic Electric Development Company vs. 

Index. Page 
Petition of Plaintiff for an Order Allowing 
Appeal from Order and Decree of October 
4, 1920, and from the Final Decree of No- 
vember 1, 1920 113 

Praecipe for Transcript of Record 128 

Second Amended Answer 7 

Statement of Evidence Under Equity Rule 75 

for tlie Purposes of Appeal 38 

Stipulation in Re Statement of Evidence on 

Appeal 37 

TESTIMONY ON BEHALF OF PLAIN- 
TIFF: 

BROWN, EDMUND N 39 

Cross-examination 47 

Redirect Examination 48 

Recalled 56 

In Rebuttal 97 

Cross-examination 102 

HENRY, GEORGE J. (In Rebuttal).... 104 

Cross-examination 110 

HILLER, J. R 56 

Cross-examination 60 

LABATT, MRS. HENRY 49 

Cross-examination 51 

SHOENBERG, MILTON H 49 

TESTIMONY ON BEHALF OF DEFEND- 
ANT: 

BEAM, VICTOR S 69 

Cross-examination 85 

Redirect Examination 90 

WENTWORTH, G. L 93 

Cross-examination 94 



In the Southern Division of the United States 
District Court for the Northern District of 
California, Second Division. 

No. 492i. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Bill of Complaint for Infringement of Patent. 

Now comes plaintiff in the above-entitled suit 
and files this its bill of complaint against the defend- 
ant, and for cause of action alleges : 

1. That the full name of the plaintiff is Majestic 
Electric Development Company, and at all times 
hereinafter mentioned plaintiff was and still is a cor- 
poration created under the laws of the State of Cali- 
fornia and having its principal place of business in 
the City and County of San Francisco, State of Cali- 
fornia. 

2. That the full name of the defendant is West- 
inghouse Electric & Manufacturing Company, and at 
all the times hereinafter mentioned said defendant 
was and still is a corporation created under the laws 
of the State of Pennsylvania, and having a regular 
and established place of business in the Northern 
District of California, Southern Division, to wit, at 
the City and County of San Francisco, State of Cali- 
fornia, with an agent engaged in conducting such 



2 Majestic Electric Development Company vs. 

business in said Northern District of California, 
Southern Division. 

3. That heretofore, to wit, prior to May 28, 1917, 
one Edmund N. Brown, a citizen of the United 
States, residing at the City and County of San Fran- 
cisco, State of California, [1*] invented a new, 
original and ornamental design for an article of 
manufacture, to wit, an electric heater casing, not 
known or used by others in this country before his 
invention, and not patented or described in any 
printed publication in this or any foreign country 
prior to his invention thereof, or more than two 
years prior to his application, and not in public use 
or on sale in this country for more than two years 
prior to his application, and not abandoned; and 
being such inventor, heretofore, to wit, on May 28th, 
1017, said Edmund N. Brown filed an application in 
the Patent Office of the United States praying for 
the issuance to him of letters patent of the United 
States for said design for an electric heater casing. 

4. That after the filing of said application and 
prior to the issuance of any patent thereon, the said 
Edmund N. Brown for value received by an assign- 
ment in writing, sold and assigned to the plaintiff 
herein the aforesaid design, together with any and 
all letters patent that might be issued therefor, and 
in and by said assignment requested the Commis- 
sioner of Patents to issue the said patent to the said 
Majestic Electric Development Company, a corpora- 
tion, its successors and assigns, which assignment 
was filed in the Patent Office of the United States 



*Page-numbcr appearing at foot of page of original certified Transcript 
of Record. 



Westinghouse Electric & Mfg. Company, 3 

prior to the issuance of letters patent on said applica- 
tion. 

5. That thereafter, to wit, on July 17th, 1917, 
letters patent of the United States for said design, 
dated on said day, and numbered 51,043 were issued 
and delivered by the Government of the United 
States to the plaintiff herein, Majestic Electric De- 
velopment Company, a corporation, whereby there 
was granted unto the said plaintiff, its successors 
and assigns, for the term of seven (7) years from the 
17th day of July, 1917, the exclusive right to make, 
use and vend the said invention covered by said 
letters patent throughout the United States of 
America and the territories thereof. [2] 

6. That ever since the issuance of said letters 
patent plaintiff has been and still is the sole owner 
and holder thereof, and of all the rights, liberties 
and privileges thereby conferred, and has made and 
sold electric heater casings to which the said design 
was applied, and upon each and every one of the 
said articles so sold the date and number of the 
aforesaid patent were marked. 

7. That after the issuance of said letters patent 
and during the term thereof, to wit, between the 17th 
day of July, 1017, and the commencement of this 
suit, in the Southern Division of the Northern Dis- 
trict of California, to wit, at the City and County of 
San Francisco, in the State of California, and at 
other places in the Northern District of California, 
and at places outside of the Northern District of 
California, the defendant herein without the license 
or consent of the plaintiff did apply the design 



4 Majestic Electric Development Company vs. 

secured by said letters patent and colorable imita- 
tions thereof to articles of manufacture, to wit, elec- 
tric heater casings, for the purposes of sale, and did 
sell and expose for sale the said articles of manu- 
facture to which said design and colorable imitations 
thereof had without the license or consent of the 
plaintiff been applied, knowing that the same had 
been so applied, and did so also at the City and County 
of San Fi'ancisco, in the State of California, and else- 
where without the license of plaintiif to sell electric 
heater casings containing and embracing the inven- 
tion patented in and by said letters patent No. 
51,043. 

8. That by reason of the infringement aforesaid 
plaintiff has suffered damages, and plaintiff is in- 
formed and believes and upon such information and 
belief alleges that the defendant has realized profits, 
gains and advantages, but the exact amount arc un- 
known to the plaintiff. 

9. That the plaintiff has requested the defendant 
to cease and desist from further infringement upon 
said letters patent [3] and to account to the plain- 
tiff for the aforesaid damages and profits, but the 
defendant has failed and refused to comply with 
such request or any part thereof. 

10. That the defendant is now continuing the in- 
fringement of said letters patent as aforesaid daily 
at the City and County of San Francisco, State of 
California, and elsewhere, and threatens to continue 
the same, and unless restrained therefrom by this 
Honorable Court will continue the same, whereby 
plaintiff will suffer great and irreparable injury and 



Westinghouse Electric c6 Mfg. Company. 5 

damage, for which it has no plain, speedy or adequate 
remedy at law. 

11. Plaintiff further avers that heretofore, to wit, 
on September 5, 1917, plaintiff commenced an action 
at law in this Honorable Court against the Holabird 
Electrical Company, a corporation, alleging the in- 
vention of the said design for electric heater casings 
by Edmund N. Brown; the assignment thereof to 
the plaintiff'; the filing of an application for patent 
thereon, and the issuance of the said patent. No. 
51,043; the ownership of said patent by plaintiff'; the 
infringement thereof by the defendant in said action ; 
the suffering of damages by said infringement of the 
defendant coupled with a prayer for judgment against 
the defendant and in favor of the plaintiff for dam- 
ages; that the Holabird Electrical Co., defendant, 
appeared in said action and filed its answer, together 
with notices of special matter attacking the validity 
of the said patent and denying infringement; that 
afterwards, to wit, on June 16, 1919, said action came 
on for trial on the issues so framed, and the same 
was duly tried in this Honorable Court before a jury 
of twelve men, and was submitted to said jury for 
its verdict; tliat thereupon on the 16th day of June, 
1919, said jury rendered a verdict sustaining the 
validity of said patent and finding infringement 
thereof and awarding the plaintiff' damages for said 
[4] infringement; whereupon a judgment for plain- 
tiff was duly made and entered b}^ this Honorable 
Court, and the same has never been altered, set aside, 
or reversed, and is still in full force and effect. 



6 Majestic Electric Development Company vs. 

WHEREFORE, plaintiff prays as follows: 

First: That a final decree be entered in favor of 
plaintiff, Majestic Electric Development Company, 
and against the defendant, Westinghouse Electric & 
Manufacturing Company, perpetually enjoining and 
restraining the said defendant, its officers, servants, 
agents, attorneys, workmen and employees, and each 
of them, from making, using or selling the device 
or devices described, claimed and patented in and by 
the said letters patent either directly or indirectly, 
or from contributing to any such infringement. 

Second: That upon the filing of this bill of com- 
plaint a preliminary injunction be granted to the 
plaintiff enjoining and restraining the defendant, 
Westinghouse Electric & Manufacturing Company, 
its officers, servants, agents, attorneys, workmen and 
employees, and each of them, until the further order 
of this Court, from making, using or selling the de- 
vice or devices described, claimed and patented in 
and by the said letters patent, and from making, 
using or selling any device or devices in colorable 
imitation thereof, and from infringing upon said let- 
ters patent either directly or indirectly or from con- 
tributing to any such infringement. 

Third: That plaintiff have and recover from the 
defendant Westinghouse Electric & Manufacturing 
Company the gains, profits and advantages realized 
by the defendant and the damages suffered by the 
plaintiff from and by reason of the infringement 
aforesaid, together with costs of suit, and such other 
and further relief as to the Court may seem proper 



Westinghouse Electric & Mfg. Company. 7 

and in accordance with [5] equity and good con- 
science. 

MAJESTIC ELECTRIC DEVELOPMENT 
COMPANY. 

By EDMUND N. BROWN, 

Secretary. 
JOHN H. MILLER, 

Attorney and Counsel for Plaintiff, 
723-6 Crocker Building, 

San Francisco, California. 

United States of America, 

Nortliern District of California, 

City and County of San Francisco, — ss. 

Edmund N. Brown, being duly sworn, deposes and 
says: That he is secretary of Majestic Electric 
Development Company, plaintiff, in the within en- 
titled case ; that he has read the foregoing bill of com- 
plaint and knows the contents thereof; that the same 
is true of his own knowledge, except as to matters 
therein stated on information and belief, and as to 
those matters he believes it to be true. 

EDMUND N. BROWN. 

Subscribed and sworn to before me this 1st day of 
November, A. D. 1919. 

[Seal] EUGENE P. JONES, 

Notary Public in and for the Cit}^ and County of 
San Francisco, State of California. 

[Endorsed:] Filed Nov. 1, 1919. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [6] 



8 Majestic Electric Development Company vs. 

(Title of Court and Cause.) 

Second Amended Answer. 

The answer of Westingliouse Electric & Manufac- 
turing Company, the above-named defendant, to the 
bill of complaint of the above-named plaintiff. 

This defendant, now and at all times hereafter, 
saving and reserving to itself all and all manner of 
benefit and advantage of exception which may be 
had, or taken, to the many errors, uncertainties, im- 
perfections and insufficiencies in said bill of com- 
plaint contained, for answer thereunto, or unto so 
much and such parts thereof as this defendant is 
advised that it is material or necessary to make an- 
swer unto, answ^ering, says: 

1. As to whether the full name of the plaintiff 
is Majestic Electric Development Company, and 
whether the plaintiff was and still is a corporation 
created under the laws of the State of California 
and has its principal place of business in the City 
and County of San Francisco of the State of Cali- 
fornia, defendant does not know and leaves plaintiff 
to make proof thereof. 

2. Answering further, this defendant admits 
that the full name of defendant is Westinghouse 
Electric & Manufacturing Company and that it was, 
and still is, a corporation of the State of Pennsyl- 
vania and has a regular and established place of 
business in the City and County of San Francisco 
of the State of California, with an agent conducting 
such business. 

3. Answering further, this defendant admits that, 



Westinghoiise Electric & Mfg. Company. 9 

on May 28, 1917, one Edmund N. Brown filed an ap- 
plication in the United States Patent Office praying 
for the issuance to him of Letters Patent of the 
United States for a design for an electric heater 
casing, but denies that the said design was new, 
original or ornamental; that it was not known or 
used by others in this country before his alleged in- 
vention thereof and not patented [7] or described 
in any printed publication in this or any foreign 
country before his alleged invention thereof or more 
than two years prior to his application for Letters 
Patent, and not in public use or on sale in .this 
country for more than two years prior to his said 
application and that it had not been abandoned. 

4. Answering further, as to whether the said 
Edmund N. Brown did, subsequent to the filing of 
said application and prior to the issuance of Letters 
Patent thereon, for value received, sell and assign 
to the plaintiff herein by an assigmnent, in writing, 
the aforesaid design, together with any and all Let- 
ters Patent that might Ije issued therefor, and re- 
quested the Commissioner of Patents to issue such 
patent to the Majestic Electric Development Com- 
pany, its successors or assigns, and whether any such 
assignment was filed in the Patent Office of the 
United States prior to the issuance of Letters Patent 
on the said application, this defendant is not in- 
formed and leaves the plaintitf to make proof thereof. 

5. Answering further, this defendant admits that 
Letters Patent No. 51,(M3, were issued to the Ma- 
jestic Electric Development Company on July 17, 
1917, for the term of seven years from that date, ])ut 



10 Majestic Electric Development Gompcmy vs. 

whether such Letters Patent were delivered to the 
plaintiff herein defendant does not know. 

6. Answering further, as to whether the plain- 
tiff has been and still is the sole owner or holder 
of the said Letters Patent and of all rights, liberties 
and privileges thereby conferred and whether the 
plaintiff has made and sold electric heater casings 
embodying the said design and whether any electric 
heater casings made and sold by the plaintiff were 
marked with the date and number of the aforesaid 
patent, defendant does not know and leaves the plain- 
tiff' to make proof thereof. 

7. Answering further, this defendant denies that, 
between the 17th day of July, 1917, and the com- 
mencement of this suit, it has, [8] in the Southern 
Division of the Northern District of California, to 
wit, in the City and County of San Francisco, or in 
an}^ other place or places in the Northern District 
of California or elsewhere applied the design secured 
by said letters patent or any colorable imitations 
thereof to electric heater casings for the purposes of 
sale or that it has sold or exposed for sale any such 
article of manufacture embodying such design or 
any colorable imitation thereof. 

8. Answering further, this defendant denies that 
it has realized profits, gains or advantages or that 
the plaintiff has suffered damages by reason of any 
infringement of said Letters Patent No. 51,043 by 
the said defendant. 

9. Answering further, this defendant admits 
that it has been requested by the plaintiff to desist 
from infringing said letters patent and to account 



Westinfjhoiise Electric d- Mfg. Company. 11 

to plaintiff for alleged damages and profits, but this 
defendant denies that it has failed and refused to 
comply with any such request, or threatens or in- 
tends to continue to make, use and sell anything 
described and claimed in said letters patent, or that 
it has made, used and sold any such heater casings 
since the receipt of such notice, or at any other time. 
10'. Answering further, this defendant denies that 
it is now continuing infringement of the said letters 
patent, directly or otherwise, in the City and County 
of San Francisco, State of California, and elsewhere, 
or that it threatens to continue any such infringe- 
ment or that the plaintiff will suffer great and irrep- 
arable injury and damage by reason of any acts of 
defendant. 

11. Answering further, as to w^hether, on Septem- 
ber 5, 1917, the plaintiff commenced an action at law 
against the Holabird Electrical Company, a corpora- 
tion, alleging the infringement of letters patent No. 
51,043; whether said action was tried and [9] 
whether a jury rendered a verdict sustaining the 
validity of said patent and finding infringement 
thereon; and whether a judgment for plaintiff was 
made and entered by this Honorable Court, which 
has never been altered, set aside or reversed, and 
is still in full force and effect, defendant does not 
know and leaves plaintiff' to make proof thereof. 

12. Answering further, this defendant denies 
that the finding of a jury in a case at law against 
the Holabird Electrical Company, a corporation, is 
binding upon this defendant because there is no 
privity of parties defendant in the alleged and in 



12 Majestic Electric Development Company vs. 

the present actions; there is not such similarity of 
subject matter of the respective actions as to war- 
rant such holding, and the articles manufactured and 
sold by the Westinghouse Electric & Manufacturing 
Company, the defendant herein, and alleged to in- 
fringe said letters patent bear no such sunilarity to 
the articles involved in the alleged suit against the 
Hollabird Electrical Company as to make any verdict 
of a jury in such suit in any manner or degree bind- 
ing upon this defendant. 

13. Answering further, this defendant denies 
that the alleged design for electric heater casings 
shown, described and claimed in said letters patent 
No. 51,043, contains and embodies any material bene- 
ficial advance over what had previously been known 
to those skilled in the art, but avers the fact to be 
that the patent is invalid and void, for the following 
reasons : 

(a) Because the said Edmund N. Brown was not 
the original and first inventor or discoverer of the in- 
vention alleged to be shown, described and clauned in 
said letters patent, or of any material or substantial 
part thereof, but that the same and all material or 
substantial parts of the alleged invention had been 
patented or described in the printed publications and 
letters patent prior to the date of the alleged inven- 
tion of the said Edmund N. Brown, as follows: [10] 



Westinghouse Electric & Mfg. Company. 13 
LETTERS PATENT OF THE UNITED STATES. 



No. 


Date. 


Patentee. 


8,101 


May 


20, 


1851 


R. Jobson. 


Design 45,317 


Feb. 


24, 


1914 


A. A. Warner. 


Design 46,922 


Feb. 


9, 


1915 


F. X. Chassaing. 


235,199 


Dee. 


7, 


1880 


A. G. Bell. 


235,497 


Dec. 


14 


1880 


A. G. Bell & S. Tainter 


492,247 


Feb. 


21 


1893 


W. E. Ulmer. 


530,016 


Nov. 


27, 


1894 


J. Cinnamon. 


654,630 


July 


31 


1900 


H. V. Hayes & E. B 
Cram. 


658,706 


Sept. 


25 


1900 


H. J. Dowsing. 


684,459 


Oct. 


15 


1901 


E. F. Porter. 


881,017 


Mar. 


3 


1908 


W. E. H. Morse. 


893,994 


July 


21 


1908 


F. C. Green. 


902,003 


Oct. 


27 


1908 


A. D. Rathboue. 


921,476 


May 


11 


1909 


W. A. Soles. 


988,824 


Apr. 


4 


1911 


L. A. Sagendorph. 


1,084,375 


Jan. 


13 


1914 


G. B. Swinehart. 


1,097,282 


May 


19, 


1914 


L. W. Andersen. 


1,109,551 


Sept. 


1 


1914 


M. H. Shoenberg. 


1,120,003 


Dec. 


8 


1914 


A. A. Warner. 


1,147,951 


July 


27 


1915 


F. T. Kitchen. 


1,187,968 


June 


20 


1916 


E. N. Cherry. 


1,205,011 


Nov. 


14 


1916 


Phillips & Anderson. 



LETTERS PATENT OF GREAT BRITAIN. 
No. 19,311 of 1894. 
No. 11,013 of 1910. 
No. 2,764 of 1912. 
No. 19,971 of 1913. 
No. 102,070 of 1916. 



14 Majestic Electric Development Company vs. 

PUBLICATIONS. 

Page 79 of the issue of Jan. 25, 1912, The Electrical 
Times, published in London, England. 

Page 37 of the issue of Jan. 11, 1912, The Electrical 
Times. 

Page 239 of the issue of Mar. 7, 1912, The Electrical 
Times. 

Page 362 of the issue of Mar. 6, 1913, The Electrical 
Times. 

Page 364 of the issue of Mar. 6, 1913, The Electrical 
Times. 

Page 214 of the issue of Oct. 3, 1913, the Supple- 
ment to "The Electrician," published in Lon- 
don, England. 

Page 353 of the issue of Oct. 9, 1913, The Electrical 
Times. 

Page 591 of the issue of Dec. 4, 1913, The Electrical 
Times. 

Page 12 of the issue of Oct. 16, 1914, the Supple- 
ment to "The Electrician." 

Page 19 of the issue of May, 1915, Electrical Rec- 
ord, published in New York, N. Y. 

Page 162 of the issue of Aug. 31, 1916, The Elec- 
trical Times. 

Page 14 of the issue of May, 1907, Electrical Rec- 
ord, published in New York, N. Y. 

Advertising insert — page two of the Supplemental 
to "The Electrician" of the issue of September 
20, 1912. 

Page 163 of the issue of Aug. 16, 1912:, of the Supple- 
ment to "The Electrician." 



WestingJiouse Electric & Mfg. Company. 15 

Pages 1 and 11 of the Oct. 3, 1906, issue of "Prome- 
theus," published by Dr. Otto N. Witt in Ber- 
lin, Germany. [11] 
Also in many other letters patent and printed 
publications not now known to this defendant, but 
which, when discovered hereafter, defendant prays 
leave of the Court to furnish and concerning which 
defendant prays leave to incorporate data in this, 
its answer, by suitable amendment thereof. 

(b) Because, in view of the state of the art in 
respect to electric heater casings prior to, or at the 
time of, the alleged invention of the said Edmund N. 
Brown, the supposed improvement shown, described 
and claimed in said letters patent w^as not a patent- 
able invention, discovery or improvement but com- 
prised mere selections and adaptations from prior 
known structures requiring no invention but being 
within the domain of mere judgment and skill in the 
art and, in view of such prior art, this defendant 
refers to and hereby makes a specific part of its 
answer, the several printed publications and letters 
patent hereinbefore cited. 

(c) Because, defendant is informed and believes, 
the said Edmund N. Brown was not the original and 
first inventor of the alleged invention, discovery or 
improvement described and claimed in said letters 
patent or any material or substantial part thereof; 
that, prior to any such invention by said Edmund 
N. Brown, said invention, discovery or improvement 
was publicly known to, and used by, others, at places 
in this country, to wit : 



16 Majestic Electric Development Company vs. 

Alonzo A. Warner and Landers, Fraiy & Clark, at 
New Britain, Connecticut, and elsewhere. 

(d) Because, as defendant is informed and be- 
lieves, the Majestic Electric Development Company, 
the plaintiff herein, manufactured, publicly offered 
for sale and sold electric heater casings like or sub- 
stantially like that shown, described and claimed in 
the said letters patent No. 51,043, in the City and 
County of San Francisco, in the State of Califor- 
nia, and elsewhere, and that such heater casings were 
so sold and were pubUcly [12] used more than 
two years prior to the 28th day of May, 1917. 

(e) Because, as defendant is informed and be- 
lieves, one Alfred E. Huntington, formerly of San 
Francisco, California, now of Riverside, California, 
was the originator of the design for which said de- 
sign patent No. 51,043 was granted to Edmund N. 
Brown, and the plaintiff herein and said Edmund 
N. Brown surreptitiously and unjustly obtained the 
said design patent for that which was in fact in- 
vented or originated by another, to wit, the said 
Alfred R. Huntington, who was using reasonable 
diligence in adapting and perfecting the same. 

14. Further answering, this defendant avers and 
says that, in view of the proceedings had and taken 
in the United States Patent Office during the 
prosecution of the application for the said letters 
patent No. 51,043, the claim forming part of the 
said letters patent cannot lawfully be construed as 
covering and embracing any device manufactured 
and sold by this defendant, or any substantial or 
material part thereof, but that said claim, if held 



Westinglioiise Electric & Mfg. Company. 17 

to be valid at all, must be so narrowly construed as 
not to cover or include the devices so manufactured 
and sold. 

15. Wherefore, the said letters patent are null 
and void and have no effect to secure the plaintiff 
any exclusive right in or under the subject matter 
of the claim of the said letters patent. 

16. This defendant denies that it has done any 
act or thing, or proposes to do any act or thing, 
which entitles the said plaintiff to an injunction or 
to an accounting or to any other relief. 

All of which defenses said defendant is ready to 
further maintain and prove as this Honorable Court 
shall direct, and it prays to be hence dismissed with 
Its costs in this behalf most wrongfully sustained. 

WESTINGHOUSE ELECTRIC & MANU- 
FACTURING COMPANY, 

By T. P. GAYLORD, 
Acting Vice-president. 



Solicitor for Defendant. 
WESLEY G. CARR, 
Of Counsel. [18] 
State of Pennsylvania, 
County of Allegheny, — ss. 

T. P. Gaylord, being duly sworn, deposes and 
says: 

I am acting vice-president of the Westinghouse 
Electric & Manufacturing Company, the above- 
named defendant; I have read the foregoing 
amended answer to the bill of complaint in the suit 



18 Majestic Electric Development Company vs. 

of Majestic Electric Development Compan.y, Plain- 
tiff, vs. Westinghouse Electric & Manufacturing 
Company, Defendant, and know the contents 
thereof, and the same is true of my own knowledge, 
except as to the matters therein stated on informa- 
tion and belief, and as to those matters I believe it 
to be true. 

T. P. GAYLORD, 
Acting Vice-president. 

Sworn to and subscribed before me this first day 
of May, 1920. 

[Seal] E. E. LITTLE, 

Notary Public. 

My commission expires at end of next session of 
Senate. 

[Endorsed] : Filed June 9, 1920. Walter B. Mat- 
ing, Clerk. [14] 



(Order Designating Judge Dietrich to Sit in This 

Court.) 
WHEREAS, in my judgment the public interest 
so requires, I hereby designate and appoint the 
Honorable FRANK S. DIETRICH, United States 
District Judge for the District of Idaho, to hold the 
District Court of the United States for the North- 
ern District of California, during the months of 
August and September, 1920, and to have and ex- 
ercise within said district the same powers that are 
vested in the judges thereof. 



Westingliouse Electric & Mfg. Company. VJ 

WITNESS my hand hereto this 23cl day of 
August, 1920. 

W. B. GILBERT, 
Senior Circuit Judge of the Ninth Circuit. 

[Endorsed] : Filed Aug. 24, 1920. W. B. Mating, 
Clerk. [Ii5] 



At a stated term, to wit, the July term, A. D. 1920, 
of the Southern Division of the United States 
District Court for the Northern District of 
California, Second Division, held at the court- 
room in the City and County of San Francisco, 
on Monday, the 4th day of October, in the year 
of our Lord one thousand nine hundred and 
twenty. Present: The Honorable MAURICE 
T. DOOLING, District Judge. 

No. 492^EQUITY. 
MAJESTIC ELECTRIC DEVELOPMENT CO. 

vs. 

WESTINGHOUSE ELECTRIC & MNFG. CO. 

(Order Dismissing Bill, etc.) 
In accordance with the opinion of Honorable 
Frank S. Dietrich, United States District Judge for 
the District of Idaho (before whom this suit was 
heretofore tried), which said opinion is this day 
filed, it is ordered that the bill herein be and the 
same is hereby dismissed, with costs to defendant, 
and that a decree be signed, filed and entered accord- 
ingly. [16] 



20 Majestic Electric Development Company vs. 



In the United States District Court, Northern Dis- 
trict of California, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. 

WESTINGLIOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

No. 493. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

No. 544. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 



Westinghotise Electric & Mfg. Company. 21 

No. 499. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. 

HOLBROOK, MERRILL & STETSON, a Corpo- 
ration, 

Defendant. 

(Opinion Dismissing Bill.) 

JOHN H. MILLER, Attorney for Plaintiff. 

WESLEY G. CARR, DAVID L. LEVY, NA- 
THAN HEARD, and SAMUEL KNIGHT, 

Attorneys for Defendants. [17] 

DIETRICH, District Judge: 

Four suits for infringement (numbers 492, 493, 
499 and 544) were tried consecutively, in a large 
measure upon the same evidence, and have now been 
submitted upon the same argument. In each of 
them the Majestic Electric Development Company 
is the plaintiff; the Westinghouse Electric & Manu- 
facturing Company is the defendant in numbers 492, 
493 and 544, and Holbrook, Merrill & Stetson in 499. 
Nmnbers 492 and 499 are for infringements of 
United States design patent No. 51,043, issued July 
17, 1917, to the plaintiff company, as the assignee of 
Edmund N. Brown, patentee, whose application 
therefor was filed May 28, 1917. Number 493 is for 
infringement of mechanical or utility patent num- 
bered 1,245,084, issued by the United States on Oc- 



22 Majestic Electric Development Company vs. 

tober 30, 1917, to the plaintiff, as the assignee of Ed- 
mund N. Brown, patentee, whose application therefor 
was filed July 10, 1917. And number 544 is for in- 
fringement of design patent numbered 51,253, issued 
by the United States on September 11, 1917, to the 
plaintiff, as assignee of Edmund N. Brown, patentee, 
upon an application filed July 10, 1917. Hence three 
patents are in suit : 
Design patent No. 51,043, applied for May 28, 1917, 

issued July 17, 1917. 
Design patent No. 51,253, applied for July 10, 1917, 

issued September 11, 1917. 
Utility patent No. 1,245,084, applied for July 10, 
1917, issued October 13, 1917. 
All of the patents relate to a portable electric 
heater or its casing, and cover substantially the same 
device. It will be more convenient first to dispose of 
the suit involving the utility patent. The claims are 
as follows : 

"1. An electric heater, comprising a concavo- 
convex reflector, a heating unit supported at sub- 
stantially the focus of said reflector, an an- 
nular member extending outwardly from [18] 
the margin of said reflector, and a protective 
cage having guard wires arched between op- 
posite sides of said annular member. 

2. An electric heater, comprising a concavo- 
convex reflector, a heating unit supported at sub- 
stantially the focus of said reflector, an annular 
member extending outwardly from the margin 
of said reflector, and a protective cage of arched 
guard wires hinged to said annular member so 



Westinghouse Electric & Mfg. Company. .23 

that it may be swung outwardly from the re- 
flector. 

3. An electric heater, comprising a concavo- 
convex reflector, a heating unit supported at sub- 
stantially the focus of said reflector, a concavo- 
convex casing extending over the convex side 
of said reflector and spaced therefrom except at 
the margins, said casing having an annular por- 
tion extending outwardly from the margin of 
said reflector, and a protective cage having 
guard wires arched between opposite sides of 
said annular portion. 

4. An electric heater, comprising a concavo- 
convex metal reflector, a heating unit in space re- 
lation thereto, said reflector being provided with 
apertures having their margins bent to form 
flanges, insulating means upon either side of 
said flanges, and connecting devices extending 
through said insulating means and connected to 
the terminals of said heating unit." 

In the specifications we are advised that the inven- 
tion relates to improvements in electric heaters, in 
which the heat rays generated by a resistance coil 
or heating unit are reflected from a highly polished 
surface, and, further, that one of the main purposes 
of the invention is to provide means by which the 
highly heated portions of the device are inclosed by 
protecting members. While the phrase "beam 
heater" is not used in the application for patent, the 
device is so referred to and characterized in the 
trade. The purpose thereof is by reflection to con- 
centrate the radiant energy upon a comparatively 



24 Majestic Electric Development Company vs. 

small area, and thus to funiisli the desired meas- 
ure of heat within the range of the "beam," 
without the necessity of heating to so high a degree 
the entire space in the room. Admittedly an ideal 
beam, of substantially parallel rays, cannot be 
realized, and the various devices used for the purpose 
only [19] approximate such a result, some more 
closely than others. It is also well understood that 
the physical laws relating to the reflection of heat 
are the same as those pretaining to the reflection of 
light. 

The position of the plaintiff is that the invention 
disclosed by the patent in suit is generic, and that 
thereby Brown introduced a broad fundamental idea 
theretofore unknown in the art, whereas the defend- 
ant contends that he only embodied a familiar con- 
ception in a slightly different form of mechanism. 
Correctly, it is thought, counsel for the plaintiff so 
defines the underlying issue, and unless in that re- 
spect its position is sustained it cannot succeed. 
Considerable testimony, it is true, was offered to 
show that certain members of the defendant's heater 
are the functional equivalents of similar parts of 
the patented device. But if the patent is held to 
cover, not a generic idea, but only minor improve- 
ments in a known mechanism, there is no infringe- 
ment. It is possible, of course, to characterize the 
turned-over edge of the defendant's reflector as a 
flange, and to find that in a slight degree it performs 
the function for which the annular member or flange 
illustrated in the Brown patent was designed, but 
such an effect is merely incidental. Its primary pur- 



Westinghouse Electric & Mfg. Company. 25 

Ijose is to give to the reflector strength and a finished 
appearance. It is to be observed that the reflecting 
member of the plaintiff's heater also has a turned- 
over edge, so that if we eliminate the annular flange 
we still have a reflector very closely corresponding to 
the reflecting member of the defendant's heater, in- 
cluding the turned- over edge, and hence the novelty 
or patented feature in the Brown device, namely, 
the broad flange, to which the claims doubtless 
relate, is not found in the defendant's heater at all. 
The correctness of this view may be readily demon- 
strated by removing the reflector in the plaintiff's 
heater from its casing and thus separating it from 
the protective flange. [20] 

The defendant's heater has no casing by means of 
which in the plaintiff's device the back of the reflec- 
tor is protected, and therefore there can be no con- 
tention of infringement in that respect. 

There is no novelty in the plaintiff's wire guard 
or cage, unless it be in the hinging device, and the de- 
fendant's guard is not hinged. 

If valid at all, the fourth claim must be narrowly 
construed, for the necessity of insulation and gen- 
erally the means by which it is accomplished are mat- 
ters of familiar knowledge, and such novelty, if any, 
as the claim discloses must be found in the minute 
details of construction; but in such details the de- 
fendant's insulating and connecting devices are sub- 
stantially different. 

If, then, the plaintiff* can succeed only upon the 
theory that the invention is generic, is such a theory 
tenable? Admittedly the language employed in the 



26 Majestic Electric Development Company vs. 

patent application does not aptly express a claim of 
that character. Nowhere does the applicant suggest 
the view that he has discovered the principle of a 
"beam heater," or any broad, fundamental idea in 
relation thereto. Upon the other hand, there is an 
implied recognition of the fact that the principle has 
already found expression in the art. One of the 
main purposes of the invention, the applicant de- 
clares, is to provide, not a beam heater or a beam of 
radiant energy, but the means for enclosing and pro- 
tecting the higlily heated members of such a heater. 
And when we consider the prior art, with which 
Brown was doubtless familiar, the reason for limit- 
ing his claims to minor improvements, and par- 
ticularly to protective devices, becomes apparent. 
He was at the head of the plaintiff company, which 
at the time was actively engaged in manufacturing 
and marketing beam heaters, under the Shoenberg 
patent, of which it was the assignee. (United States 
No. 1,109,551, issued September 1, 1914.) And it is 
difficult to resist the conclusion that, when the plain- 
tiff's heater No. 7, illustrated in the patent in suit, 
[21] was first put on the market in 1916, the plain- 
tiff understood and assumed that it was protected by 
the Shoenberg patent. That in so far as concerns the 
general principle or generic idea this patent antici- 
pates the one in suit is scarcely open to question. 
The invention is described as relating to electric 
heaters or radiators in which, as here, ''the heat 
waves generated by resistance coil are directed by a 
polished metal reflector." Even in certain details 
now emphasized by the plaintiff there is substantial 



Westinghouse Electric <£■ Mfg. Company. 27 

identity, for Shoenberg also provided both a wire 
guard for the front and a protective casing for the 
back of the reflector. Distinction is sought to be 
made because the reflector illustrated in the Shoen- 
berg patent differs in contour from the one illustrated 
in the Brown patent, but admittedly this difference 
is not of the essence. The latter also differs from 
the one used by the defendant, in that the one is hem- 
ispherical and the other parabolic. It is not a ques- 
tion of the specific fomi illustrated, but of the 
principle involved and the scope of the claims of the 
patent, and it would hardly be contended that one 
manufacturing a device in all other respects like that 
illustrated in the Shoenberg patent could escape a 
charge of infringement by showing that he used a 
purely parabolic reflector. That patent is broad 
enough to embrace either a parabolic or hemispher- 
ical reflector. It refers to the reflector merely as a 
''reflector," without specifying the form, or as being 
"dome-like," or "hemispherical," or as having an 
"inner concave surface." But it discloses the pur- 
pose and principle or generic idea quite as clearly 
as does the patent in suit, and if it does not 
fully anticipate the latter, it is only because of the 
wide annular flange in the later device and possibly 
certain details in the matter of insulating the con- 
ducting wire and coimecting it with the resistance coil. 
One has only to glance at the photograph (Defend- 
ant's Exhibit "E") of plaintiff's exhibit at the Pan- 
ama Ex])osition to see how fully the general prin- 
ciple of such a [22] heater had already in 1914 
found expression in the art. It is true that the types 



28 Majestic Electric Development Company vs. 

of reflector illustrated in the iShoenberg patent and 
employed by the plaintiff prior to the patent in suit 
created a less perfect beam, but the difference is in 
degree only. In this respect the defendant's heater 
is an advance upon the one put out by the plaintiff 
under the patent in suit. But aside from the Shoen- 
berg patent, the principle is clearly disclosed in the 
earlier patents and in the prior art. In English 
patent No. 12,320, Kempton claimed that by the use 
of a reflector of "parabolic or conical shape," located 
in a fireplace or in open space, for the purpose of 
throwing the heat into the room, gas could be used 
for heating purposes as cheaply as coal. He shows 
a gas jet in the same relation to the reflector as here 
the resistance coil. The principle is suggested in 
the Morse patent (United States No. 881,017, March 
3, 1908), illustrating a device for applying heat to a 
portion of the bod.y, to be used in the practice of 
therapeutics. In the English patent for the "Sim- 
plex," (No. 19,971, September 4, 1914), there is a 
very complete disclosure. True here again the re- 
flector illustrated has the configuration of a cone, but 
the inventor's preference for this form seems to rest 
upon considerations of economy of construction. 
He adds that it may be "parabolic or the like con- 
tour." The heating element both in form and in its 
relation to the reflector closely resembles that 
of the defendant's device, and the front of the re- 
flector is fitted with a wire guard. The object of the 
invention we are informed "is to provide an appa- 
ratus of convenient form in which the radiant heat 
issues in the form of a condensed beam of rays, di- 



Westinghouse Electric & Mfg. Company. 29 

vergent, approximately parallel, or convergent, as 
the case may be, and adapted to be pointed in any de- 
sired direction, horizontally or vertically. ' ' It would 
be difficult to state the principle [23] more clearly 
or comprehensively. This device was manufactured 
and generally advertised before the Brown applica- 
tion was filed. Material also are the Warner patent 
of December 8, 1914 (United States, No. 1,120,003), 
and the Gieger patent of August 8, 1916 (United 
States, No. 1,194,168), and the Taylor patent of 
November 16, 1916 (English, No. 102,070). Note- 
worthy also are the ' ' Ferranti Fires, ' ' devices in the 
market and more or less generally advertised as 
early at least as 1911, as appears from the trade liter- 
ature offered in evidence. 

THE DESIGN PATENTS. 

One of these patents covers a casing of the precise 
form illustrated in the mechanical patent just con- 
sidered, and the other a casing similar in form, ex- 
clusive of the wide annular flange. There could be, 
and of course is, no claim for size, color, or material, 
nor, as I understand, does the patent extend to the 
supporting standard or pedestal, which is of the com- 
mon telephone type. The patented designs, there- 
fore, relate to the reflector and the protective devices, 
viewed, of course, in connection with the attendant 
heater element. 

The first design, the one with the wide annular 
flange (No. 51,043), is not thought to be infringed 
by the defendant's devices. They are neither 
reproductions nor colorable imitations. True, there 
are points of resemblance; so there are also points 



30 Majestic Electric Development Company vs. 

of resemblance between these devices and the com- 
mon telephone and electric fan. In all reflectors, 
whether for headlights or heaters, there are simi- 
larities of appearance. So common is a concavo- 
convex reflector that the word reflector alone imme- 
diately suggests such a device. But taking the 
heaters here as a whole and excluding from consider- 
ation slight differences of detail, there are two im- 
portant differentiating features: Whatever may be 
said in support of the view that the turned-over edges 
of the defendant's reflectors are the functional 
equivalents of the broad annular flange in the plain- 
tiff's heater, [2:4] clearly in so far as affects appear- 
ance they are wholly dissimilar, and the broad flange 
is a conspicuous differentiating feature of the plain- 
tiff's design. So of the heater element. As shown by 
the testimony of one of the plaintiff's witnesses, who 
first observed the Westinghouse heater upon passing 
a show-window where it was displayed, this is an out- 
standing feature in the appearance of the device, — 
the attention is arrested by it; and the incident so 
testified to is in accord Avith my own experience dur- 
ing the course of the trial. When it was necessary 
quickly to identify the plaintiff's device, grouped as 
it frequently was with many others in the courtroom, 
my eyes involuntarily sought the element as the most 
conspicuous distinguishing mark. If, therefore, we 
consider the entire assemblage — the reflector, the 
protective members, and the element — as the design, 
there is substantial dissimilarity in appearance. 

But in the second place, in so far as they are alike, 
the plaintiff's casings, as well as those of the defend- 



Westinghouse Electric & Mfg. Company. 31 

ants, are entirely devoid of purely ornamental fea- 
tures, either of form or drapery; they are nude 
utilities. That, of course, is not to say that they are 
without comeliness. By reason of their simplicity 
and symmetry and the "glow," they may be pleasing 
to the eye ; but the point is that they are bare mechan- 
isms, no parts or lines of which can be dispensed 
wdth or substantially altered without impairing their 
utility, and one cannot, under cover of a design 
patent, debar others from employing the mechanical 
means necessary to give effect to a known and use- 
ful mechanical principle, however pleasing to the eye 
such requisite mechanism may be. 

In the third place, unless limited to the precise 
form illustrated in the drawing, the plaintiff's de- 
sign is anticipated in prior patents, to some of which 
reference has already been made, and, in view of the 
prior art, is without invention. Indeed it is difficult 
to perceive upon what basis a claim of patentable 
novelty for No. 51,253, the design without the annular 
[25] flange, can be predicated. The casing showai 
is simply a reflector of the most familiar type, old in 
the art, and without novelty either in configuration 
or feature. True, upon placing the device of this 
design as actually manufactured side by side with the 
heater actually manufactured by the plaintiff under 
the Shoenberg patent, we have a substantial contrast 
in appearance, but the contrast is of material, color, 
and size, and not of form. Make both of the same 
size and finish them both in nickel or copper, and we 
have similarity instead of contrast. Who, without 
having the specific object in mind, would, after ob- 



32 Majestic Electric Development Company^ vs. 

serving with reasonable care the drawing of patent 
51,253, and thereupon being handed a photograph of 
the plaintiff's exposition exhibit, say with confidence 
that the device covered by the drawing is not shown 
in the photograph ? The point is that in the absence 
of contrasting color or size there is a striking simi- 
larity in general appearance. Moreover, the design 
is almost identical with that shown in Figure 1 of 
the Taylor patent above referred to. (English, 
102,070.) Substantial identity is expressly conceded 
by counsel for the plaintiff, who, however, contests 
the priority of the Taylor patent. It is true that 
while this patent was applied for on January 11, 
1916, it was not finally issued until November 15, 
1916. It is further true that Brown's "invention," 
as disclosed in his mechanical patent and his de- 
sign patent 51,043 (covering the annular flange) 
was made as early as April, 1916, although the pat- 
ents were not applied for until the following year. 
But if there is any evidence that the design invention 
of patent 51,253 antedates the application, which was 
filed July 10, 1917, it has escaped my attention. It 
is not without significance that in the application for 
the Taylor patent, made before any of the Brown 
"inventions," the applicant carefully limited her 
claim with the explanation that she was "aware that 
it is not broadly new to construct an electric radiator 
with a resistance wire wound spirally upon a tubular 
member made of refractory material, such resistance 
element being mounted in front of a reflector, with a 
protecting guard in front [26] of the element." In 
its more conspicuous features the plaintiff's design 



Westinghouse Electric <£■ Mfg. Company. 33 

also closely resembles the Warner device, the para- 
bolic ' ' Simplex, ' ' and the ' ' Ferranti Fires. " If it be 
said that the element in the Warner heater distin- 
guishes its general appearance, the answer is that, as 
already noted, such distinction also exists between 
the plaintiff's designs and the alleged infringing de- 
vices. 

As bearing upon the question of invention in either 
the mechanical or the design patents, or both, plain- 
tiff puts great stress upon the fact that following the 
placing on the market of its No. 7 heater (the device 
with the broad annular flange), there was an in- 
creased demand and it soon went into general use, 
but while the fact is to be recognized as having 
weight, I have not deemed it sufficient, under all of 
the circumstances, to overcome the considerations 
hereinbefore stated. From the record it is manifest 
that in the period of four or five years immediately 
preceding the Brown patents there had come to be an 
unusual and widespread interest in the matter of 
electric heating. The invention of nichrome wire 
solved the problem of a dependable and efficient 
element, but the right to its use was involved in 
litigation, which was not finally concluded until 
about the time of the Brown patents. With this 
question out of the way, heaters began to be put on 
the market in increasing numbers, and doubtless by 
means of advertising and the arts of salesmanship, 
the desire for such heaters was greatly stimulated. 
In this work the plaintiff was active, but undoubtedly 
it was to some extent also the beneficiary of the ac- 
tivities of its competitors. It may be conceded that 



?A Majestic Elective Development Company vs 

its No. 7 heater was in some degree more efficient 
than its earlier devices, and was more attractive in 
appearance, but, as already pointed out, its attractive- 
ness was due not so much to slight changes in form 
as to increase in size and more particularly a sub- 
stitution of the warm copper bowl with suitable trim 
in the place of the nickel type of heater. [27] Fur- 
thermore, in the changes of social and housing condi- 
tions and in the rapidly growing tendency to use 
electrical energy for divers purposes in the home, 
may doubtless be found contributing causes for the 
increased demand. But whatever may be the full ex- 
planation, such popularity as heater No. 7 may have 
had and may now have cannot reasonabl}^ be attrib- 
uted merely to the slight change in the contour of the 
reflector or the addition of the broad annular flange, 
or to both of these changes. 

It is urged that in a measure the present design 
suits are ruled by the judgments recently procured 
by the plaintiff in this court against other parties, in 
actions at law for infringement of the same patents. 
The causes were tried wdth a jury, resulting in nomi- 
nal verdicts for the plaintiff, and while they were 
pending upon writ of error in the Circuit Court of 
Appeals the parties made some adjustment, the 
nature of which is not disclosed, and accordingly, by 
agreement, the writs were dismissed. Just what 
effect should be given to the judgments under such 
circumstances is not entirely clear. It is, of course, 
not contended that they constitute a judicial estop- 
pel. The judge who presided at the trial, it is true, 
must have entertained the view that the evidence 



Westinghouse Electric & Mfg. Company. 35 

was sufficient to go to the jury, but there is noth- 
ing in the records to indicate what his conclusion 
would have been had he been called upon independ- 
ently to decide the entire issue. I find no difficulty 
in accepting his ^dews of the law as set forth in his 
charge; but wliile it is to be conceded that uniformity 
of decision in the same tribunal is highly desirable, 
and to that end, in the case of a doubtful issue, one 
judicial agency may with propriety defer to a preced- 
ent established by another of the same dignity, I am 
unable to say that here I entertain such doubt as 
would warrant me in subordinating my own judg- 
ment to that of the jury in the other cases, even if it 
be assumed that the evidence is substantially the 
same. [28] 

There being no controversy touching such general 
principles of patent law as are involved, I have 
thought it unnecessary to add to the length of the 
opinion by stating them. Nor would it serve any 
useful purpose to review the cited cases. Altogether 
they are, of course, helpful, but no single one can be 
regarded as a controlling or even highly persuasive 
precedent upon the real issue, which is compara- 
tively narrow, and more largely one of fact than of 
law. 

For the reason stated, the bills must be dismissed, 
and such will be the decree in each case, with costs. 

[Endorsed] : Filed Oct. 4, 1920. Walter B. Mat- 
ing, Clerk. [29] 



36 Majestic Electric Development Company vs. 

(Title of Court and Cause.) 

Decree. 

This cause came on to l)e heard 1)efore the Honor- 
able FRANK S. DIETRICH, United States District 
Judge, at the July 1920 Term of court, on the ii'oth 
day of August, 1920, and thereupon was thereafter 
tried from day to day until and including the second 
day of September, 192i0, upon the introduction of 
evidence oral and documentary, by each party hereto, 
and upon the argument of counsel; and thereupon 
after consideration thereof it was, on the 4th day of 
September, 1920, ORDERED that the bill of com- 
plaint be dismissed with costs to defendant, and that 
a decree be signed, filed and entered accordingly. 

NOW, THEREFORE, it is hereby ADJUDGED 
AND DECREED that said bill of complaint be and 
the same is hereby dismissed, with costs to de- 
fendant to be taxed. 

Dated: Nov. 1, 1920. 

R. S. BEAN, 
United States District Judge. 

[Endorsed] : Filed and entered November 1, 1920. 
Walter B. Maling, Clerk. [30] 



Westinghouse Electric d- Mfg. Company. 37 

In the Southern Division of the United States Dis- 
trict Court for the Northern District of Cali- 
fornia, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 



Plaintiff, 



vs. 



WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Stipulation in Re Statement of Evidence on Appeal. 
IT IS STIPULATED AND AGREED by and 
between the parties to the above-entitled suit, that 
the annexed statement of evidence on appeal is true, 
complete and properly prepared, and that, under 
Federal Equity Rule 75, the same may be approved 
by the Honorable MAURICE T. DOOLING, Judge 
of and holding- Court in the District Court of the 
United States for the Northern District of California. 
Dated : December 16th, 1920. 

JOHN H. MILLER, 

Attorney for Plaintiff. 
WESLEY G. CARR, 
DAVID L. LEVY, 
WALTER SHELTON, 
Attornevs for Defendant. 



38 Majestic Electric Development Company vs. 

IT IS ORDERED that the annexed statement of 
evidence in the above-entitled suit be and the same 
is hereby approved. 

M. T. DOOLING, 
Judge of the United States District Court for the 

Northern District of California. 
Dated: December 17, 1920. [31] 



In the Southern Division of the United States Dis- 
trict Court for the Northern District of Cali- 
fornia, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. 

WESTINGHOUSE ELECTRIC & MFG. CO., 

Defendant. 

Statement of the Evidence Under Equity Rule 75 for 
the Purposes of Appeal. 

This case came on for trial on August 25th, 1920, 
in the above-entitled court at the City and County of 
San Francisco, State of California, before Honor- 
able FRANK S. DIETRICH, United States Judge 
for the District of Idaho, John H. Miller, Esq., ap- 
pearing as attorney for plaintiff, and Wesley G. Carr, 
Esq., and David L. Levy, Esq., as attorneys for de- 
fendant. 

John H. Miller made the opening statement on 
behalf of the plaintiff, and Wesley G. Carr made the 



Westingliouse Electric d Mfg. Company. 39 

statement on bclialf of the defendant, and thereupon 
the following proceedings were had. 

Plaintiff offered in evidence the original letters 
patent No. 51,043, dated July 17th, 1917, issued to 
Majestic Electric Development Company, as the as- 
signee of Edmund N. Brown, for the term of seven 
years, which said letters patent were received in evi- 
dence and marked "Plaintiff's Exhibit No. 1, Patent 
in Suit," and the same is hereby referred to and by 
such reference made a part hereof. [32] 

Testimony of Edmund N. Brown, for Plaintiff. 

EDMUND N. BROWN, being duly sworn, was 
called as a witness on the part of plaintiff, and tes- 
tified on direct examination as follows: 

I am 43 years of age and I reside at San Fran- 
cisco; I am the president of the Majestic Electric 
Development Company, plaintiff' in this suit. Its 
place of business is at 656 Howard Street, San 
Francisco, California, and consists in manufactur- 
ing Majestic Electric Heaters and Majestic appli- 
ances. I am the Edmund N. Brown referred to in 
the patent in suit, and I herewith produce one of 
the samples of the device referred to in that patent 
and marketed by the plaintiff. The tag attached to 
said device shows that it was offered in evidence by 
the plaintiff in a prior suit in this court of the 
Majestic Electric Development Company vs. Hola- 
bird Electrical Company, No. 16,100, where it was 
marked "Plaintiff's Exhibit No. 2." Thereupon 
the said device was offered and received in evidence 
and marked "Plaintiff's Exhibit No. 2, Brown 



40 Majestic Electric Developmoit Company vs. 

(Testimony of Edmund N. Brown.) 
Patented Device," which said device is hereby 
referred to and by such reference made a part hereof. 
(The witness continues:) My company, plaintiff, 
has placed these devices upon the market in a <?om- 
mercial way. The trade name I gave to this article 
which has been put in evidence as "Plaintiff's Ex- 
hibit No. 2" is "No. 7," and that is the name by 
which we sell it and by which it is generally known. 
The first commercial sale of that device was made 
by us in October, 1916, to Holbrook, Merrill & Stet- 
son, in Los Angeles, California, and almost simul- 
taneously to Harper & Reynolds of Los Angeles. 
We sold 500 of the devices to each of said firms ; the 
devices so sold were the same as the model here 
' ' Plaintiff 's Exhibit No. 2. " The Boesch Lamp Com- 
pany of San Francisco manufactured [33] the vari- 
ous parts of these devices for us with the exception 
of the electrical parts. We made the electrical parts 
and assembled the devices. Prior to this sale and 
shipment in October, 1916, I had made up a sample 
of the device in the early part of 1916, and I have 
an invoice under date of April 4, 1916, showing the 
same. The device so made at that time was iden- 
tical with exhibit No. 2 except that it had a blue 
finish instead of a red finish, that is to say, the back 
of the heater, the base and the stem were colored 
blue, whereas those portions of exhibit 2 are colored 
red. With that exception the device made up by 
me in April, 1916, was identical with exhibit 2. I 
went East in April, 1916, first going to Canada, 
afterwards to New York and Philadelphia. I took 



Westinghouse Electric & Mfg. Company. 41 

(Testimony of Edmund N. Brown.) 
the heater which I made in April, 1916, with me and 
showed it to people to figure on its cost of manufac- 
ture. I went to several people with that idea and 
got prices from them as to what they would charge 
to manufacture the device. My headquarters were 
in New York, and we opened a plant in Philadel- 
phia that year. I was east on that trip about four 
months. I first went to Canada and showed the 
device up there, then I went back to New York 
and showed the machine where I solicited bids 
for the cost of manufacture. I then went to Phila- 
delphia for the purpose of opening up a plant 
there and subsequently made arrangements to open 
up said plant, and did open up the same and it has 
been operating to this day. We manufactured these 
heaters there and sold them all over the Eastern 
territory and foreign countries. I returned to San 
Francisco in August, 1916, and immediately ar- 
ranged with the Boesch Lamp Company for dies to 
be made so that we could manufacture these heaters 
in quantities; the Boesch Company has continued 
to make them ever since for us, and they make them 
for us now. The devices which we sent to Los An- 
geles in October, 1916, gave general satisfaction so far 
as I could see, and after that we made and sold them 
during the [34] remainder of the year. Our first 
order to the Boesch Lamp Company was for 5,000 
and we made 2,000 in addition thereto. During the 
• remainder of the year 1916 we made and sold some 
7,000 or 8,000 of the devices covering the entire ter- 
ritory of the United States and foreign countries. 



42 Majestic Electric Development Coapany vs. 

(Testimony of Edmund N. Brown.) 
We continued to manufacture them in 1917, 1918, 
1919 and 1920, and have been manufacturing them 
ever since. During that period I should say 
roughly speaking, we have sold in the neighborhood 
of 350,000 or 400,000; that is an approximation. 
We also manufactured some at Philadelphia. We 
also had an office in Kansas City. Plaintiff is now 
manufacturing them both at Philadelphia and San 
Francisco. After the sale of the first thousand in 
October, 1916, the demand increased very much, and 
the business is now a large one extending generally 
over the world, you might say. We send them into 
practically every foreign country, China, Japan, 
New Zealand, Australia, Spain, France, Great Brit- 
ain, Italy, Denmark and South American coun- 
tries — practically all countries. 

I am familiar with the former suits which were 
brought in this court by the Majestic Electric De- 
velopment Company against the Holabird Electrical 
Compan}^ and Hale Brothers, Inc., with reference 
to infringement of this patent, and am familiar 
with the devices which were used in that case and 
testified to as being and decided as being in- 
fringements of the patent in suit, and can pick out 
the same from the exhibits now present. (Here 
the witness picks out from the exhibits before him 
and used in the said identified cases two exhibits and 
the same were thereupon offered in evidence and 
marked respectively "Plaintiff's Exhibit No. 3" and 
''Plaintiff's Exhibit No. 4.") 

I am familiar with the device put on the market 



Westinghouse Electric d Mfg. Company. 43 

(Testimony of Edmund N. Brown.) 
by the Westinghouse Electric & Manufacturing 
Company, defendant herein. I think it was in 1918 
that I saw the first one. I have one of those devices 
here which was put in evidence in the prior [35] 
litigation and marked "Plaintiff's Exhibit No. 17, 
Westinghouse," and I herewith produce it. (Such 
exhibit was then offered and received in evidence and 
marked "Plaintiff's Exhibit No. 5, Westinghouse 
Device.") 

I have seen the Westinghouse device on sale in 
various stores in different parts of the country. 

Thereupon the following question was put to the 
witness: 

"Q. Now taking the case of an ordinary person 
who was familiar with the Brown heater No. 7, which 
has been put in evidence here, and had never seen or 
heard of a Westinghouse heater, and who desired 
to purchase a Brown heater, and who should go into 
a store and be shown a Westinghouse heater such 
as the exhibit which has been put in evidence here, 
what, in your opinion, would be the impression con- 
veyed by the appearance of that heater upon the 
mind of such a person as that, using such care as per- 
sons of that kind usually use when desiring to pur- 
chase an article of that kind, so far as similarity of 
appearance is concerned? 

"Mr. CARR.— I object to that as calling for a 
question of opinion, an expert opinion or any other 
kind of an opinion, as to which this man is entirely 
incompetent; also irrelevant, but especially incom- 
petent.'* 



44 Majestic Electric Development Company vs. 

(Testimony of Edmund N. Brown.) 

The objection was sustained and to such ruling 
plaintiff excepted, the same being Exception No. 1. 

At this point it was admitted by defendant's coun- 
sel that the defendant had manufactured and sold 
since the date of the patent in suit electric heaters 
shown, illustrated and identified by the Plaintiff's 
Exhibit No. 5. 

Plaintiff' then offered in evidence a letter admitted 
to be written by J. H. Miller, attorney for the Ma- 
jestic Electric Company, to the Westinghouse Elec- 
tric .& Mfg. Co., dated July 29th, 1919, reading as 
follows : 

San Francisco, July 29, 1919. 
Westinghouse Electric & Mfg. Co., 

East Pittsburgh, Pa. 
Gentlemen : 

On behalf of the Majestic Electric Development 
Co. of this city, I desire to inform you that the elec- 
tric heaters marketed by you are infringements upon 
some of the electric heater patents owned by the Ma- 
jestic Co. and I must request that you desist from 
further sale of such heaters. In a suit recently tried 
in the U. S. District Court of San Francisco, brought 
by the Majestic Electric Development Co. against 
the Hotpoint Electric Heating Company and its 
agents, it was decided that the so called Hedlite 
heater formerly manufactured by the Hotpoint Elec- 
tric Heating Co. and now being manufactured by 
the Edison Appliance Co. is an infringement [36] 
upon design patent No. 51,043, owned by the Ma- 
jestic Company. In the trial of that case, one of the 



Westinghoiise Electric & Mfg. Company. i6 

(Testimony of Edmund N. Brown.) 
Westinghouse heaters was in evidence and tested 
out. It is as much an infringement of this design 
patent as is the Hedlite heater. Not only is it an 
infringement of the patent mentioned, but it is like- 
wise an infringement of design patent 51,253 and 
mechanical patent No. 1,245,084 both owned by the 
Majestic Electric Development Co. 

On July 19th, I wrote to your attorney, Mr. Wesley 
G. Carr, advising him of these matters, but have had 
no reply from him. 

We had hoped that after the decision of the Court 
in the above case, that your company would respect 
the decision and discontinue the infringements; but 
the fact seems to be that you are disregarding said 
decision, and continuing with the marketing of your 
infringing heaters. This causes us considerable 
damage and some of our orders are being cancelled 
on account of your infringing operations. 

We beg, therefore, to call your attention to this 
matter and ask that you discontinue this infringe- 
ment, otherwise we shall be compelled to commence 
legal proceedings again^^t you or your agents. 
Before doing so, however, we beg that you will ad- 
vise us of your intentions in the matter, and there- 
fore we shall wait a reasonable length of time before 
commencing court proceedings. 

Yours very truly, 
JOHN H. MILLER." 
Plaintiff also offered in evidence a letter written 
by Wesley G. Carr, as attorney for Westinghouse 



46 Majestic Electric Development Company vs. 

(Testimony of Edmund N. Brown.) 

Electric & Mfg. Co., to John H. Miller, Esq., under 

date of August 4, 1919, reading as follows: 

"Mr. John H.Miller, 
723 Crocker Bldg., 

San Francisco, Cal. 
Dear Sir: 

Your letter of July 29, addressed to the Westing- 
house Electric & Manufacturing Company has been 
referred to me for attention. Your letter of July 
19, addressed to me and covering the same subject- 
matter, was given careful attention and I replied to 
it in detail on July 25th. My reply to your former 
letter is believed to constitute an adequate reply to 
3^ours of July 29 except that it does not state specifi- 
cally whether the Westinghouse Company will or 
wdll not discontinue manufacturing the heaters of 
which you complain. For reasons which I set forth 
in my former letter, I cannot see that the Westing- 
house Company would be justified, at the present 
time, in retiring from the field as you expect, or at 
least, desire it to do. 

Yours truly, 
WESLEY G. CARR, 

Attorney. ' ' 

Thereupon the following question was propounded 
to Mr. Edmund N. Brown, to wit: 

"Q. Mr. Brown, in this letter that was written 
on July 29, 1919, to the defendant in this case, it 
is stated that some of your orders are being cancelled 
on account of the infringing operations of the de- 



Westinghouse Electric d Mfg. Company. 4. 

(Testimony of Edmund N. Brown.) 

fcndant; just state whether that is the fact, and if 

so, what are the details?" [37] 

This question was objected to by defendant's coun- 
sel on the ground that it was irrelevant and immate- 
rial in this controversy. The objection was sus- 
tained. Thereupon plaintiff's counsel excepted (Ex- 
ception No. 2). 

Thereupon the following question was put to the 
witness Brown by plaintiff's attorney, to wit: 

"Q. State whether or not your company has 
lost any sales of its No. 7 heater by reason of 
the fact that the Westinghouse heater has been 
on the market." 

This question was objected to by defendant's coun- 
sel on the same grounds and the objection was sus- 
tained, to which plaintiff excepted (Exception No. 3). 

(The witness continued:) When we commenced 
to sell our No. 7 heaters, the price was $7.50, and the 
present price is $11. After the issuance of the pat- 
ent in suit we marked our No. 7 heaters with the 
date and number of the patent. 

Cross-examination of the Witness BROWN. 
On cross-examination, the witness Brown testified 
as follows: The price of our No. 7 heater is deter- 
mined by two factors; one is the license agreement 
with the Hoskins Company the patentees of the re- 
sistance wire which we use, who placed a minimum 
charge on heaters of this type, and the second is the 
cost of manufacture. Our company has a license 
from the Hoskins Company under the Marsh patent 
for the alloy wire. We do not use nichrome; we 



48 Majestic Electric Development Company vs. 

(Testimony of Edmund N. Brown.) 
use what is manufactured by Hoskins and called 
chromel A. Nickel chrome alloy would be more 
correct. We have been operating under license 
from that company for the Marsh patent I think since 
the fall of 1916. It was on my eastern trip in 1916 
that we were granted a license. 

Our more recent No. 7 heaters are provided with a 
name plate bearing the date "Patented September 
1,1914." That refers [38] to patent No. 1,109,551 
granted to Majestic Electric Development Company 
on an application filed by Milton H. Shoenberg 
bearing that date, September 1, 1914. 

Redirect Examination of Witness BROWN. 

On redirect examination said witness testified as 
follows : 

Regarding the license under what has been de- 
nominated as the Marsh patent, that refers to this 
resistance wire which is wrapped around this coil 
which we purchased from the Hoskins Manufactur- 
ing Company, which company controlled a patent 
for alloyed wire. It is just the wire itself that is 
covered by the patent and not the device itself. It 
is the alloy from which they make this particular 
kind of wire that is acted upon by electricity in the 
most advantageous way, whereas a different kind of 
wire, it seems, would not answer the purpose. The 
patent covers the alloy. The same resistance wire 
is used on toasters and in irons, and other electrical 
devices. 



Westinghousc Electric d- Mf<j. Company. 49 

Testimony of Milton H. Shoenberg, for Plaintiff. 

MILTON H. SHOENBERG, being duly called as 
a witness on behalf of plaintiff, testified as follows : 

I reside in San Francisco and am 45 years of age. 
I am associated with the Majestic Electric Develop- 
ment Company w4iose place of business is 656 
Howard Street, San Francisco. I am familiar with 
j)laintiff's heater No. 7 represented by "Plaintiff's 
Exhibit No. 2." The plaintiff has put that device 
on the market. They began some time in 1916. I 
became actively associated Avith the company in 
1917. I remember Mr. Brown going East in 1916. 
Before he went East I saw the heater which he 
had and which he took east with him, as testi- 
fied to by him. After I became associated with the 
company in 1917, they continued the sale of the No. 
7 heaters. I could not say as to the [39] number of 
heaters sold, because I am not in the sales depart- 
ment, I am the superintendent, but I do know that 
there have been extensive sales for these No. 7 heat- 
ers extending over the entire w^orld. 

Testimony of Mrs. Henry Labatt, for Plaintiff. 

Mrs. HENRY LABATT, having been duly 
called as a witness and duly sworn, testified on be- 
half of plaintiff' as follows: 

I live in San Francisco, and have lived there for 
about six years. My residence is the Chesterfield 
Apartments, 560 Powell Street. I have seen and 
am familiar with the electric heaters which Mr. 
Brown and Mr. Brown's Company, Majestic Elec- 



50 Majestic Electric Development Company vs, 

(Testimony of Mrs. Henry Labatt.) 
trie Development Company sold. I recognize 
''Plaintiff's Exhibit No. 2" as one of these heaters. 
I have been familiar with them since they were 
first manufactured. I have also seen the heater of 
the kind represented by Plaintiff's Exhibit No. 5, 
having the Westinghouse name on it. The circum- 
stances under which I first saw a Westinghouse 
heater were these. I was going out Sutter Street 
one afternoon, and I chanced to look at the exhibit 
outside of the Liberty, and I saw the heater, and 
I said: "Mr. Brown has a new stove out, and he 
has changed the element." It struck me so forcibly, 
I walked on a few feet and then I turned and went 
back to examine it more closely. I did not like 
the way he has changed the element. I liked the 
other element better. 

Thereupon the following testimony was given by 
the witness: 

"Q. When you first saw the heater, what impres- 
sion was produced on you'? 

•'A. It struck me as a Majestic heater, that is, I 
stood looking at it for a few minutes, and I chanced 
to see the word 'Westinghouse' on it. I took it for 
a Majestic heater when I first passed. [40] 

Q. You say that when you first saw it you passed 
down the street a little ways? 

A. Yes, just two or three feet, and I thought to my- 
self I would go back and look at it, because it 
struck me that Mr. Brown had changed the element. 

Q. Then, when you went back, did you examine 
the heater more closely then? 

A. Yes, I stood and looked at it for a few min- 



WestingJwuse Electric & Mfg. Conipcmy. .51 

(Testimony of Mrs. Henry Labatt.) 
utes, and still thought it was a Majestic, and then 
I chanced to see the little name down there, 'West- 
inghouse. ' 

Cross-examination. 

Mr. CARR. — Q. What relation do you have to 
the Majestic Electric Development Company? 

A. None whatever. 

Q. Prior to 3^our noticing this Westinghouse 
heater, had you ever seen and observed any other 
heaters of this general appearance except the Ma- 
jestic? 

A. Well, I had noticed the Hotpoint, when they 
first came out, that it was very similar to Mr. 
Brown's. 

Q. Did you ever mistake the Hotpoint heater for 
the Majestic? A. No, sir. 

Q. What was the striking feature that impressed 
itself upon you? 

A. Just as I said, I thought that Mr. Brown had 
changed the position of the element in the heater. 

Q. In your casual inspection, or notice of this de- 
vice, you had substantially the same view of it as 
you have now, that is, a direct front view of it? 

A. Yes. 

Q. Did you examine it from any other point of 
view ? 

A. I went back and looked at it and examined 
it, and 1 still had the thought of Mr. Brown 
changing the element. I still thought it was a Ma- 
jestic heater. I w^as convinced until I saw the 
name that it was a Majestic heater. 

Q. But you did not examine it except from the 



52 Majestic Electric Development Company vs. 

(Testimony of Mrs. Henry Labatt.) 
front, looking at the front of it? 

A. I saw the heater from the rear as I came up 
the street. I had seen that; it stood outside. I 
took a good look at the heater, and still thought, 
until I saw the name, that it was Mr. Brown's 
heater. 

Q. Are you familiar in a technical way with de- 
vices of this kind, and do you understand their 
structure and mode of operation and the method of 
manufacture generally about them? 

A. To the extent that I have always been fond of 
electricity, and as a housewife I have used many of 
the appliances in different ways. 

Q. You have not been engaged in any way with 
the manufacture of them, or connected with the 
manufacture of them? A. No, sir. 

Q. Or sale? A. No, sir. 

Q. Have you used devices of this general char- 
acter in your home? 

A. You mean stoves, the little cook stoves, heat- 
ing stoves? 

Q. I mean devices of this character, for this pur- 
pose, these so-called beam heaters. 

A. No, I have never used those heaters. 

Q. Why do you use the term 'element' with refer- 
ence to this part of the device? 

A. Perhaps that is not the technical term, but I 
just thought that was the element; that is what I 
call it. 

Q. You did not devise that yourself, did you? 

A. No, I just always called the heating part of 
the [41] stove the element of the stove. I may 



Westinghouse Electric & Mfg. Company. 53 

(Testimony of Mrs. Henry Labatt.) 

be wrong in that, but that is what I called it. 

Q. You are familiar with the use and operation 
of these heaters, are you"? 

A. I have seen them used. 

Q. You have seen them in operation? 

A. Yes, sir. 

Q. Have you seen them in operation tilted at 
different angles'? 

A. I have the Majestic. 

Q. But this one is not tiltable, is it? (Referring 
to Plaintiff's Exhibit No. 2.) 

A. It does not look to me right now as though 
it is tilted. When they have them outside on dis- 
play I rarely have seen them tilted. They just 
have them in the position that the Majestic is now. 
So I never have paid very much attention to that. 
That is the position I saw this one in. 

Q. The feature that really impressed you, as I 
understand it, was the position of the part you term 
the "element"? 

A. And the model of the stove is so similar to the 
Majestic, the whole structure of the stove is so 
much like the Majestic? 

Q. Except that feature? 

A. Yes. That was not, and therefore, I thought 
that Mr. Brown had changed the element. 

Q. If I correctly understand the previous state- 
ment of yours, you really never noted and never 
observed whether the Majestic device was adjust- 
able or tiltable at different angles, such as is pos- 
sible and readily available with this Westinghouse 
device; is that correct? 



54 Majestic Electric Development Company vs. 

(Testimony of Mrs. Henry Labatt.) 

A. Yes, I did. I knew it was adjustable. 

The COURT.— Q. You knew that Mr. Brown's 
device was adjustable — the Majestic? 

A. The Majestic. 

Q. That it could be tilted? A. Yes, sir. 

Mr. CARR.— Q. That is not true, however, of 
this device shown to you, this Plaintiff's Exhibit 
2 ? A. Well, one model is. 

Q. If you have never had one of these devices of 
your own, how does it happen that you are so 
familiar with the structure? 

A. I have friends who have the stove. At one 
time I was very much interested in getting one of 
the stoves, and I examined into it very thoroughly. 

Q. Have you ever visited the establishment where 
these devices are manufactured? 

A. Which devices? 

Q. The Majestic? A. Yes, sir. 

Q. You have seen more or less of the process of 
manufacture ? 

A. No, sir, I have not. I have just been through 
the establishment, but I have not seen the process 
of manufacture of it. I have been through the 
establishment. 

Q. Are you in any way related to Mr. E. N. 
Brown? A. No, sir. 

Q. Just a friend ? A. Just a friend. 

Q. Are you able to state what outstanding char- 
acteristics of the Westing-house device caught your 
attention on the occasion you mention? 

A. I thought Mr. Brown had changed the ele- 
ment in his stove, because the construction is so 



Westinghonse Electric & Mfg. Company, 55 

(Testimony of Mrs. Henry Labatt.) 
much like the other, like the Majestic. 

Q. You observed that it was apparently an- elec- 
trical heater, having a copper bowl-shape reflector? 

A. Well, I just thought it was Mr. Brown's 
heater. I had no other thought but that that was 
Mr. Brown's heater, and that he had changed the 
element in the heater. That is Avhat impressed me 
as I passed by the stove. 

Q. Prior to that time had you seen at any place 
Majestic Company heaters of different sizes? 

A. Yes, sir. [42] 

''Q. I mean different from the one before you, 
Plaintiff's Exhibit No. 2? A. Yes, sir. 

Q. Both larger and smaller? A. Yes, sir. 

Q. Otherwise different in shape? 

A. Some of the heaters are of different shape. 
The round heaters are all of the same shape. 

Q. With reference to the Majestic factory, have 
you made more than one visit to that factory? 

A. I think I have only been there once or twice, 
but perhaps not through the factory, just in the 
office. 

Q. How recently? A, It has been a long 
time. 

Q. Did you examine what you found there with 
any particular degree of particularity? 

A. No, sir. I did not go for that purpose; I just 
went with a friend to go through. 

Q. And was it there you saw these I'ound heaters, 
as you have termed them, of different sizes, or 
have you seen them elsewhere? 



56 Majestic Electric Development Company vs. 

(Testimony of Mrs. Ilenry Labatt.) 

A. I have seen those in the windows, and I have 
had friends who had them and used them. I no- 
ticed that heater when it w^as first on the market." 

Testimony of Edmund N. Brown, for Plaintiff. 

Here E. N. BROWN, b}^ permission of the 
Court, was recalled for further examination, and 
testified as follows: 

I note that this heater. Plaintiff's Exhibit No. 2, 
is not tiltable so as to be tilted at different angles, 
but we put on the market also one that i^ tiltable 
or adjustable at different angles, and that heater 
is now on the market by my company. There is 
a joint in there we call a swivel, and it tightens up 
with a screw. That makes it adjustable or tiltable. 

Testimony of J. R. Hiller, for Plaintiff. 

J. R. HILLER, being called as a witness and 
duly sworn, testified on behalf of plaintiff as fol- 
lows: 

I have resided at San Francisco, California, about 
22 years, and am manager of the Boesch Lamp 
Company, a corporation located at San Francisco. 
I am familiar with the Brown heater, known as No. 
7, and we have manufactured a portion of these 
heaters for the Majestic Electric Development Com- 
pany and for Mr. Brown. We have manufactured 
a great many for them, I should judge between 
100,000 and 200,000. The first one we made was in 
April, 1916. I have with me the invoice showing 
the [43] date of April 4, 1916, and I can verify that 



Westinghouse Electric d' Mfg. Company. 57 

(Testimony of J. R. Hiller.) 

date from our books. That heater did not differ from 
Plaintiff's Exhibit 2, except as to a different col- 
ored enamel. That portion of Exhibit No. 2 which 
is of a red tint was enameled blue in the heater re- 
ferred to ; that was the only difference. Mr. Brown 
went east directly after April 4, 1916, and returned 
some time about July or August of that year. He 
sent for me to talk over the production of this 
heater in quantities and asked estimates as to costs. 
I gave him estimates, and the result was an arrange- 
ment between the two companies for the manufac- 
ture of these heaters in quantities. We started in 
to manufacture an order for 5,000. Of course we 
had to make tools and it took us a month or two to 
get those tools into use, but before we had the 5,000 
delivered we had other orders. Tlie quantity ran 
considerably over what we estimated. We manu- 
factured and delivered the first order for 5,000 and 
after that we delivered 10,000, and continued on up 
to the present time. We are making and delivering 
them up to date. 

I have seen the Westinghouse heater such as is 
shown by "Plaintiff's Exhibit No. 5," with the 
Westinghouse name and trademark on it, and I 
know of occasions where there has been confusion 
created in the market by the similarity of that 
heater to Mr. Brown's No. 7 heater. The minute 
that there was another heater of that design put on 
the market, our attention was brought to the fact, 
and friends who were aware that we were manu- 
facturing Brown's heater drew our attention to it, 



58 Majestic Electric Development Company vs. 

(Testimony of J. R. Hiller.) 

and from time to time our attention was perhaps 
forcibly brought to the fact. I recollect one par- 
ticular time. It must have been in 1917 or 1918, 
I was called to Sacramento to give estimates on 
manufacturing goods for the aeroplane factory 
that was started there, and I had to see a Mr. Jor- 
dan who was general manager of that organization. 
He had been down to our place and I had shown 
him through the factory, and he sent for me to 
come up [44] there to Sacramento. When I 
arrived at the aviation grounds it was quite chilly. 
Mr. Jordan made apologies for the chilliness of the 
room. He said that if we had been putting up a 
little better product than what we were that would 
not have happened. He said, "Maybe you can fix 
up those two heaters of yours in there for me." I 
said, "What is the troubled" He sent for a 
couple of heaters and brought them in and set them 
down before me. He said, "They don't work." I 
said, "Well, I don't know anything about those 
kind of heaters; those are not our make; they are 
not what we are making." He said, "They are 
not^" I said, "No. That is another make of 
heater, not what we are producing." He seemed 
to be somewhat astonished and said, "It looks very 
much like it." I showed him there was a slight 
difference in the element, and one thing and an- 
other, but in general appearance they were the 
same. I presume he purchased thqii on the 
strength of that. However, I was unable to do any- 
thing for him and that incident was passed. Those 
were Hotpoint heaters. 



Westinghoiise Electric & Mfg. Company. 59 

(Testimony of J. R. Hiller.) 

Regarding matters of a similar nature in refer- 
ence to the Westinghouse heater. I had never seen 
a Westinghouse heater, and one day I went into a 
store on Mission Street, looking at some electric 
motors. In the course of conversation in reference 
to business they wanted to know" what we were 
doing principally, and I said, "We are making 
heaters still." The salesman said, "Are you still 
turning them out? We just bought one; it is up- 
stairs." He then asked if there w^as quite a sale 
for them and I said, "Yes, we have been kept 
pretty busy on them." We were in the basement 
when this happened. When we went upstairs I 
went into his office and looked down and saw the 
heater, and I saw that big "W" on it, and I sized 
it up thoroughly. It was the first time I had seen 
one of their heaters. What passed through my 
mind at the time was that it was a new imitation 
of the heater we are putting out. It was one I had 
not seen, and I came to the conclusion that it was 
[45] not very good for our business, but as we 
were not concerned in the patents on it, I men- 
tioned nothing about it and went away. That was 
one instance. 

AVhile I used to devote some of my time in the 
store taking care of customers, several times these 
heaters have been brought in there by people who 
were aware that we were manufacturing heaters 
and asked us to make repairs on them. I remem- 
ber a Westinghouse heater having been brought in 
there and other makes brought in for repairs. Evi- 
dently the people had been directed to us as man- 



GO Majestic Electric Development Company vs. 

(Testimony of J. R. Hiller.) 

ufacturers of that heater. Of course we were not 
in the business of repairing electrical goods, we 
were manufacturing heaters, the metal portion of it. 
We directed the people who had Majestic heaters to 
the Majestic Electric Developmerit Company. Some 
of the Westinghouse heaters were brought into our 
place that way, and we received telephone mes- 
sages from time to time to send someone up to re- 
pair the heaters. On inquiry if they called the 
name of it, we would tell them what we could in 
reference to it. We did not do any of those re- 
pairs. 

Cross-examination of J. R. HILLER. 

On cross-examination, the witness testified as fol- 
lows: 

In reference to the incident of the Westinghouse 
heater testified to on direct examination, it was at 
the Widenthal & Gosliner motor house, at the cor- 
ner of New Montgomery and Mission Streets, and 
I was talking with a salesman whose name was 
Wentworth. Since that time he has become Gen- 
eral Manager of the institution. 

Thereupon the following testimony was given ))y 
the witness: 

"Q. He told you merely that he had one of these 
heaters? A. That he had one of our heaters. 

Q. One of your heaters? 

A. Yes. I consider that heater is our heater just 
as much as Mr. Brown's. We are making it; we 
are doing the mechanical work on it. AVhile it is 
not being sold by us as the owners of the patent, 
it is one we are making. We are just as much con- 



Westinghouse Electric & Mfg. Company. 61 

(Testimony of J. R. Hiller.) 

cerned in the production and efficiency of it as any- 
body." [46] 

(Witness continues:) I did not ask Mr. Went- 
worth from whom he purchased the heater. He 
said he had just purchased it and I saw it there in 
the office. 

In reference to those other incidents mentioned, 
I was told and led to believe that the heaters in 
question were Majestic heaters. Up to the moment 
that he showed them to me I expected to see Majes- 
tic heaters. His convei'sation had all been directed 
in that direction. He evidently thought they were 
Majestic heaters himself, or he would not have 
spoken to me as he did. He didn't mention the 
name Majestic, but he did bring two heaters in 
there that he accused me of being the producer of, 
and that were out of order, and he wanted me to 
repair them. He had seen us producing them in 
the factory and admired them, and asked me some 
questions about them at the time when he was 
through our factory a few days previously. I 
know that when I take anything for repair, if I 
know it is being manufactutred in a certain place, 
I take it to where 1 know it is being manufactured 
to have repairs made in order to get the best results. 
That is true of machines of any kind or character. 

I cannot tell you the exact language that Went- 
worth used. I was talking about matters and busi- 
ness, and how business was, and he mentioned that 
Ave were busy with heaters, and he mentioned that 
he just ])urchased a heater, one of our heaters. 
There was nothing said further and we went back 



62 Majestic Electric Development Company vs. 

(Testimony of J. R. Hiller.) 

to the subject of motors. When I went upstairs 
and went into his office I saw the heater, and I was 
very much surprised; I noticed the "W" on it. I 
had not previously seen one of these heaters. It 
just passed through my mind — "Another infringer 
on the patent," that I presumed existed. 

"Q. He might have said, 'I have just purchased 
one of these heaters such as you make,' might he 
not? 

A. Had he said that, I would have forgotten the 
incident, it would have gone entirely out of my 
mind, because I know that people are purchasing 
these heaters here, there, and ever3"where; but he 
said, 'One of your heaters,' it was forcibly drawn 
to my attention that he must have been misled. 
That fact could not be changed. It was not my 
business where he purchased his heater, and I 
[47] had no right to question him about it and I 
didn't. 

Q. Well, whatever he said, he conveyed to you 
the impression that in his mind he had purchased 
one of the heaters turned out by your establish- 
ment *? 

A. That w^as what was conveyed to me at the 
time. 

Q. But these other instances you mentioned 
merely because heaters were brought in to be re- 
paired 1 

A. I cannot say I mentioned the incident at Sac- 
i-amento as one of them. 

Q. But those were not Westinghouse heaters? 



Westinghouse Electric & Mfg. Company. 63 

(Testimony of J. R. Hiller.) 

A. Well, the people who brought them into the 
store, of course those people were strangers, and 
we were not anxious for any repair work, and we 
directed them to some other place. We were aware 
of the fact, though, that it was just one more inci- 
dent to draw our attention to the fact that people 
knew we were producing the heater. 

Plaintiff then produced from the records of this 
court the judgment-rolls in the case of Majestic 
Electric Development Company versus Holabird 
Electric Company, No. 16,100, and the Majestic 
Electric Development Company versus Hale 
Brothers, Inc., No. 16,103, and it was stipulated 
that they should be considered as having been 
offered in evidence. The said judgment-rolls are 
hereby referred to and by such reference made a 
part hereof as fully and completely as though the 
same were incorporated herein. 

Thereupon the plaintiff rested its prima facie 
case. [48] 

DEFENDANT'S TESTIMONY. 
Defendant produced and offered in evidence 
page 79 of a printed publication entitled ''The 
Electrical Times," dated January 25, 1912, pub- 
lished at London, England, and by stipulation of 
counsel it was agreed that the original should be 
withdrawn and a photographic copy thereof substi- 
tuted therefor, which said photographic copy was 
then offered in evidence and was marked "Defend- 
ant's Exhibit 1," the same being hereby referred 
to and by such reference made a part hereof. 



64 Majestic Electric Development Company vs. 

Defendant produced and offered in evidence 
page 37 of a printed publication, entitled "The 
"Electrical Times," dated January 11, 1912, pub- 
lished at London, England, and by stipulation of 
counsel it was agreed that the original should be 
withdrawn and a photographic copy thereof substi- 
tuted therefor, which said photographic copy was 
then offered in evidence and was marked "Defend- 
ant's Exhibit 2," the same being hereby referred to 
and by such reference made a part hereof. 

Defendant produced and offered in evidence 
page 239 of a printed publication, entitled "The 
Electrical Times," dated March 7, 1912, pub- 
lished at London, England, and by stipulation of 
counsel it was agreed that the original should be 
withdrawn and a photographic copy thereof substi- 
tuted therefor, wliich said photographic copy was 
then off'ered in evidence and was marked "Defend- 
ant's Exhibit 3," the same being hereby referred to 
and by such reference made a part hereof. 

Defendant produced and offered in evidence 
page 362 of a printed publication, entitled "The 
Electrical Times," dated March 6, 1913, pub- 
lished at London, England, and by stipulation of 
counsel it was agreed that the original should be 
withdrawn and a photographic copy thereof substi- 
tuted therefor, which said photographic copy was 
then offered in evidence and w^as marked "Defend- 
ant's Exhibit 4," the same being hereby referred to 
and by such reference made a part hereof. [49] 

Defendant produced and offered in evidence 
page 364 of a printed publication, entitled "The 
Electrical Times," dated March 6, 1913, pub- 
lished at London, England, and by stipulation of 



Westinghouse Electric & Mfg. Company. 65 

counsel it was agreed that the original be with- 
drawn and a photographic copy thereof substi- 
tuted therefor, which said photographic copy was 
then offered in evidence and was marked "Defend- 
ant's Exhibit 5," the same being hereby referred to 
and by such reference made a part hereof. 

Defendant produced and offered in evidence 
page 214 of a printed publication, entitled "Supple- 
ment to the Electrician," dated October 3, 1913, 
published at London, England, and by stixjulation 
of counsel it was agreed that the original should 
be withdrawn and a photographic copy thereof sub- 
stituted therefor, which said photographic copy 
was then offered in evidence and w^as marked "De- 
fendant's Exhibit 6," the same being hereby re- 
ferred to and by such reference made a part 
hereof. 

Defendant produced and offered in evidence 
page 353 of a printed publication, entitled "The 
Electrical Times," dated October 9, 1913, published 
at London, England, and by stipulation of comisel 
it was agreed that the original should be withdrawn 
and a photographic copy thereof substituted there- 
for, which said photographic copy was then offered 
in evidence and was marked "Defendant's Exhibit 
7," the same being hereby referred to and by such 
reference made a part hereof. 

Defendant produced and offered in evidence 
page 591 of a printed pubHcation, entitled "The 
Electrical Times," dated December 4, 1913, pub- 
lished at London, England, and by stipulation of 
counsel it was agreed that the original should be 
withdrawn and a photographic copy thereof substi- 



66 Majestic Electric Development Company vs. 

tuted therefor, which photographic copy was then 
offered in evidence and was marked "Defendant's 
Exhibit 8," the same being hereby referred to and 
by such reference made a part hereof. [50] 

Defendant produced and offered in evidence 
page 12 of a printed publication, entitled "Sup- 
plement to the Electrician," published at London, 
England, dated October 16, 1914, and by stipulation 
of counsel it w^as agreed that the original should be 
withdrawn and a photographic copy thereof substi- 
tuted therefor, which said photographic copy was 
then offered in evidence and was marked "Defend- 
ant's Exhibit 9," the same being hereby referred to 
and by such reference made a part hereof. 

Defendant produced and offered in evidence 
page 162 of a printed publication entitled "The 
Electrical Times," dated August 31, 1916, pub- 
lished at London, England, and by stipulation of 
counsel it was agreed that the original be with- 
drawn and a photographic copy thereof be substi- 
tuted therefor, which said photographic copy was 
then offered in evidence and was marked "Defend- 
ant's Exhibit 10," the same being hereby referred 
to and by such reference made a part hereof. 

Defendant produced and offered in evidence 
page 163 of a printed publication, entitled "Supple- 
ment to the Electrician," published at London, 
England, dated August 16, 1912, and by stipulation 
of counsel it w^as agreed that the original should be 
withdrawn and a photographic copy thereof substi- 
tuted therefor, w^hich said photographic copy was 
then offered in evidence and was marked "Defend- 



Westinghouse Electric & Mfg. Company. 67 

ant's Exhibit 11," the same being hereby referred 
to and by such reference made a part hereof. 

Defendant produced and offered in evidence 
an advertising insert, page 2, of a printed publica- 
tion entitled ''The Electrician," dated September 
20, 1912, published in London, England, and by 
stipulation of counsel it was agreed that the origi- 
nal be withdrawn and a photographic copy thereof 
substituted therefor, which said photographic copy 
was offered in evidence and marked "Defendant's 
Exhibit 12," the same being hereby referred to and 
by such reference made a part hereof. [51] 

Defendant produced and offered in evidence 
page 1 of a printed publication entitled "Prome- 
theus," dated October 3, 1906, published at Berlin, 
Germany, in the German language, and by stipula- 
tion of counsel it was agreed that the original be 
withdrawn and a photographic copy thereof substi- 
tuted therefor, which said photographic copy was 
off'ered in evidence and was marked "Defendant's 
Exhibit 13," the same being hereby referred to 
and by such reference made a part hereof. 

Defendant produced and offered in evidence 
page 11 of a printed publication, entitled "Pro- 
metheus," dated October 3, 1906, published at Ber- 
lin, Germany, in the German language, and by 
stipulation of counsel it was agreed that the origi- 
nal be withdrawn and a photographic copy substi- 
tuted therefor, which said photographic copy was 
offered in evidence and marked "Defendant's Ex- 
hibit 14," the same being hereby referred to and 
by such reference made a part hereof. 

Defendant produced and offered in evidence 



68 Majestic Electric Development Company vs. 

page 14 of a printed publication entitled "Electri- 
cal Record," dated May, 1907, published at New 
York City, New York, and by stipulation of 
counsel it was agreed that the original be with- 
drawn and a photographic copy thereof be substi- 
tuted therefor, which said photographic copy was 
offered in evidence and marked ''Defendant's Ex- 
hibit 15," the same being hereby referred to and 
by such reference made a part hereof. 

Defendant produced and offered in evidence 
page 19 of a printed publication entitled "Electri- 
cal Record," dated May, 1915, published at New 
York City, N. Y., and by stipulation of counsel it 
Avas agreed that the original be withdrawn and a 
photographic copy thereof substituted therefor, 
which said photographic copy was offered in evi- 
dence and marked "Defendant's Exhibit 16," the 
same being hereby referred to and by such refer- 
ence made a part hereof. [52] 

Defendant produced and offered in evidence an 
electric heating device which was marked "Defend- 
ant's Exhibit 'A,' " and it was admitted by counsel 
for plaintiff that said device was manufactured and 
sold by the Majestic Electric Development Com- 
pany more than two years prior to the date of 
apx)lication for the patent in suit. 

Defendant also produced and offered in evidence 
another electric heating device which was marked 
"Defendant's Exhibit 'B,' " which said device was 
a duplicate of a device offered and received in evi- 
dence in the prior litigation as "Defendant's Ex- 
hibit 'E,' " and it was admitted by plaintiff's coun- 
sel that the said device was made and sold by the 



Westingliouse Electric & Mfg. Company. 69 

Majestic Electric Development Company more 
than two years prior to the application for the pat- 
ent in suit. 

Defendant then produced and offered in evidence 
another electrical heating device which was received 
and marked as "Defendant's Exhibit 'C,' " the 
same being a dux^licate of a device which was 
offered and received in evidence in the said prior 
litigation, and there marked "Plaintiff's Exhibit 
13," and it was admitted by the plaintiff's counsel 
that such device was made and sold by the Majes- 
tic Electric Development Company as early as the 
fall of 1915. 

Defendant produced and offered in evidence an- 
other electrical heating device which was marked 
"Defendant's Exhibit 'D,' " and it was conceded 
by plaintiff' 's counsel that such device w^as made and 
sold by Majestic Electric Development Company 
more than two years prior to the application for 
the patent in suit. 

Defendant produced and offered in evidence and 
the same was marked "Defendant's Exhibit 'E,' " 
a photograph of the Majestic Electric Development 
Company's exhibit at the Panama Exposition 
prior to May, 1915. [53] 

Testimony of Victor S. Beam, for Defendant. 

Defendant then produced as a witness VICTOR 
S. BEAM, who having been duly sworn, testified as 
follows : 

1 am 44 years of age and reside at Maplewood, 
New Jersey; my occupation is electrical mid 



70 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 
mechanical engineer with offices at 165 Broadway, 
New York City, I graduated in Electrical En- 
gineering from Princeton University, in 1899. 
From there I entered the employ of the Westing- 
house Electric & Mfg. Co. in July, 1899, and have 
been connected with that Company either directly 
or indirectly ever since. I am still in the employ 
of that company. During my employment with the 
Westinghouse Company and others I became quite 
generally familiar with the design and operation 
and construction of various electrical devices 
and machines manufactured in this country and 
have always followed the electrical heating art 
quite closely. I am quite familiar with the laws 
and rules governing those devices and the design 
and operation of the same. 

The following question was propounded to the 
witness by defendant's attorney, viz: 

"Q. Please give the pertinent portions of the 
history of this specific art as applicable to the 
plaintiff's and defendant's heaters now before 
the court?" 

Plaintiff's counsel objected to said question as en- 
tirely improper because it calls for the opinion of the 
witness in that it calls for what he considers to be 
the pertinent part of the prior art and also those 
parts that are applicable to this device. 

The objection was overruled, to which ruling 
plaintiff excepted, and thereupon the defendant's 
witness answered as follows : 

"A. These devices and the patents relate to a spe- 



WestingJiouse Electric & Mfg. Company. 71 

(Testimony of Victor S. Beam.) 
cial form, a special type of electric heating, namely, 
the heating of the object; they are not attempting to 
heat the whole room or enclosure in which the object 
is located. The object is usually a person who wants 
to be warmed, and that purpose necessarily brings in 
the matter of portability; the device should be [54] 
portable, so as to be carried around from one place 
to another in the room, or from one room to another ; 
and of course, if the owner moves from one part of 
the city to another, to take it with him. It is related 
quite closely to the electric light art. It was quite 
old to have flash lights to carry around when you 
wanted to light up a particular object; you would not 
have enough current to light the whole room, but you 
would simply light the particular object you were 
interested in. They have search-lights on boats and 
other places, selective in application so that they only 
light up one or a few objects at a time. 

They have had flood light projectors, in which 
large quantities of light were generated, and used to 
light up large objects, and oftentimes buildings. 
That art is quite old. Flood lighting was done in 
numerous places, and I daresay it goes back to 1905 
and 1906, at least, but it reached almost perfection 
at the Panama Pacific Exposition in 1915 at San 
Francisco. The previous World's Fairs had been 
lighted in a very extensive manner, with the require- 
ment of wiring the outside of the building. At the 
Buffalo Exposition in 1901, that was quite a feature ; 
they used current from Niagara Falls to light up the 
outside of the building, in order to get the esthetic 



72 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 
effect. That was much advertised. In the exposi- 
tion in 1904 at St. Louis that plan was likewise fol- 
lowed, but at the Panama Exposition in San Fran- 
cisco they simply selected the object in a large area 
and lighted that up. Also headlights use the same 
scheme. Of course, heat and light are really un- 
distinguishable, because no one has yet produced a 
source of light that does not give heat; that is the 
great object that nobody has yet done. Likewise, 
when you try to get electric heating, you do not get 
it very effective unless you have some light with it 
to attract the eye; you must light up the device, be- 
cause there is a certain amount of psychology about 
it ; you have got to have people attracted by the heat 
and the light. [55] 

Now, the first projecting device for heat of which 
I have knowledge was the device shown in Morse's 
United States Patent, No. 881,017. There an incan- 
descent lamp, probably an inefficient one, was placed 
in front of a concave surface, with a guard in front 
to protect it, and that was used as stated in the pat- 
ent, to concentrate the heat upon the affected part. 
In that particular case, it was sought to apply heat 
to certain portions of the body ; that would be usually 
held quite close to the body, but it has the prin- 
ciple there of selecting the object you are going 
to heat, and throwing the rays all in one direction. 
Quoting from lines 71 to 77 of this patent, I read : 

'The feature of mounting the electric lamp 
in a horizontal position within the reflector is 
considered highly advantageous, as by this ar- 
rangement, the lamp projects its heat more effi- 



WestingJiouse Electric d; Mfg. Company, 73 

(Testimony of Victor S. Beam.) 

ciently onto the surface of the body, and further- 
more, the socket of the lamp then operates effec- 
tively as a handle, facilitating the handling of 
the heating device. ' 
There in that device you have both heat and 
light projected in a beam onto a selected object. 

Now, another early device was gotten out by the 
Westinghouse Electric & Manufacturing Company 
about 1912 or 1913 and was shown in the Geiger pat- 
ent, No. 1,194,168, granted August 8, 1916. This de- 
vice was put on the market, and has been on sale 
ever since by the Westinghouse Company. That 
device consisted of a concave structure, a shell some- 
what resembling a seashell, the idea being to make 
it extremely ornamental ; the heat source in that case 
was carbon wires or coils inside of tubes. It is, in 
effect, an incandescent electric lamp, although of low 
efficiency, so far as light is concerned. But the de- 
vice was made in considerable quantities, and gave 
out both heat and light, and projected the rays of 
both heat and light in a definite direction, selective, 
[56] so as to light and heat the object. The patent 
says, 'Although the reflector 8 is shown of the clam- 
shell design, it is understood that such a reflector may 
be of any other design or form, ' and as to the source 
of heat and light it says 'preferably it should be of 
the luminous type, preferably arranged side by side 
and extend upward in front of the reflector. It is 
understood that other suitable types of heating units 
may be employed with my invention.' 

Now, that device was extremely ornamental ; it was 
not as efficient as some of the devices to-day, and of 



74 Majestic Electric Development Company vs. 

(Testimony of Victor S, Beam.) 
course it is objectionable in that these lamps break 
quite readily; an incandescent lamp at its best is 
quite fragile, and it has many objections, but it was 
highly ornamental. I have one of these here, and 
produce the same, which consists of a clamshell cop- 
pered on the inside, pleasing in appearance, with in- 
candescent lamps placed within the curvature of the 
shell, and is a device that a housewife would not cer- 
tainly object to having around. They might not 
possibly buy it simply for the beauty of it, but it cer- 
tainly is more pleasing in appearance than some of 
the more practical devices which have followed it. 
That, as I say, was built by the Westinghouse Com- 
pany quite a number of years, and it was about the 
only type of heater that it could build at that time, 
prior to say the middle of 1917, because while it was 
recognized that incandescent lamps were not the best 
sort of thing to generate heat for that purpose, the 
advisability of utilizing the more efficient form of 
wire was doubted by the Westinghouse Company, 
first because there w^as considerable doubt about the 
wires which were then on the market standing up, 
that is, their resisting oxidation, and the other handi- 
cap that presented itself was the patent situation 
with respect to the nickel-chronium alloy of the heat- 
ing element, the only heating element that would 
stand up in exposed conditions, when being burned 
or illuminated. When an electric wire is exjjosed 
[57] to the air, heated to a luminous state, it is at- 
tacked so readily by the oxygen of the air that it al- 
most immediately bums up; the carbon filament in a 
lamp would not last an instant if exposed to the air; 



Westingliouse Electric & Mfg. Company. 75 

(Testimony of Victor S. Beam.) 
they have to put that in a vacuum. Of course, there 
are a lot of heat applications where you cannot use 
lamps, and there were devices using wire on the mar- 
ket, but to a great extent they were in places like 
in a flat-iron where your wire is covered up and 
not exposed to the ai, so that while there were, 
prior to the middle of 1917, considerable heating de- 
vices on the market, and quite a number with the 
wire exposed, yet there w^as a patent situation there 
that had not been cleared up, and it was not until 
1917 that the Westinghouse Company felt free to ex- 
tend its operations in that particular field. That 
patent situation was the result of a patent to Marsh, 
that was granted in 1906 but it was some years before 
it was put in litigation, and it developed very slowly 
under it, because it was held by a comparatively 
small company, and the litigation was long-draw^n out, 
and that was not finally decided until some time in 
1915 by the Court of Appeals of the Seventh Circuit, 
the case of Hoskins Electric Manufacturing Co. v. 
General Electric Company. In that case, from 
Avhich I have an extract, the court pays great tribute 
to the alloy for making up a heating device. It said : 
'The invention of toasters, heaters' — 
Mr. MILLER. — I object to his going into this mat- 
ter. I don't know what he is reading from, so far 
as that is concerned, but I do not think it is proper 
for him to go into a matter of this kind regarding 
the Marsh patent. The Marsh patent decisions are 
reported in the Federal Reporter, and we have ac- 
cess to them. 



76 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 

The COURT.— Yes. [58] 

A. (Continuing.) That alloy which is sold mider 
various trade names, one of which is Nichrome, has 
the distinguished ability to stand up, to resist oxida- 
tion when it is red hot, and it is the use of that alloy, 
the availability of that alloy to the electrical art that 
has made possible a large number of devices and par- 
ticularly the devices in question here ; that is, the ra- 
diant heaters, w^here the heating element must neces- 
sarily be exposed to the air when in operation. 

I may have given the impression yesterday that a 
nickel chronium composition was the only wire that 
could be used in an exposed heater of that sort. I 
should correct that, as it would be possible to use plat- 
inum if the same could be obtained, but as that is 
very scarce and very expensive, it is practically out 
of the question. 

The next and perhaps the most interesting prior 
device of the reflecting heater is that shown in the 
British patent No. 19,971, of 1913, of the Simplex 
Conduits Limited. That shows a reflecting heater 
in several views. The reflector is shown in the 
figures as a fluted cone, but it mentions in the de- 
scription that that reflector may have various forms, 
one of which is a parabola. That appears to be the 
same device that is shown in exhibits Nos. 9 and 10. 
Now, the form shown in the drawings is rather of an 
ornamental nature, in that it has the fluting. That 
does not tend to its efficiency. 

Mr. MILLER. — I object to this line of testimony. 

The COURT.— Yes. 



Westinghousc Electric ci' Mfg. Company. 77 

(Testimony of Victor S. Beam.) 

Mr. MILLER. — When he undertakes to say that it 
does not tend to its efficiency, or something like that, 
that is something beyond the theory of this case. 

The COURT.— Yes, I think so. 

A. The device as shown in Figure 1 consists of a 
stand which [59] is somewhat like the stand that is 
used for electric fans. It consists of a dome-shaped 
piece, and of a vertical standard, and then mounted 
in that is a U-shaped trunnion; that is the form illu- 
strated in the Westinghousc device in this case; then 
the cone-shaped reflector is mounted so as to tilt in 
that trunnion, and, therefore, the direction of the 
light rays is adjustable. Figure 1 is a side view of 
the whole device. Figure 2 is a front view, the trun- 
nion arrangement being shown in dotted lines. 
Now^, as I say, the fluted cone-shape is shown in that 
figure for the reflector, but in the provisional specifi- 
cations it is set forth that the condensed beam of rays 
may be divergent or approximately parallel or con- 
vergent, meaning that the reflector may have various 
forms, and then, further along, in the second para- 
graph it says the reflector is preferably in the form 
of a cone, this being a shape which can be cheaply 
rolled into form out of sheet metal. Then, fur- 
ther along in line 34, it says, 'or the reflector may be 
in whole or in part of parabolic or the like contour, 
according to the form desired for the emergent beam 
of rays.' Then, further on, line 40, in respect of the 
reflector, it says: 

'It may with advantage be corrugated or 
fluted, as this stiffens it and improves its in- 



78 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 

ternal appearance when the heating element is 
incandesced.' 

So that while it is shown as a corrugated reflector, 
it is contemplated that it be perfectly smooth on the 
inside and that it may take the form of a parabola, 
or the like. 

Further, in the provisional specifications line 42, 
it says: 

'We prefer to mount the reflector pivotally on 
a forked stem, which, itself, can pivot on a foot 
bracket, so that the beam of rays can be turned to 
point in any direction,' 

And then in the complete specifications, line 37, it 
speaks of the color of the inside of the reflector; it 
may be of a cast [60] metal lined with copper, and 
that it may be wholly corrugated. The heating ele- 
ment in this case is arranged in line with the longitu- 
dinal axis of the cone or the parabolic reflector, as it 
may be, and that as an arrangement of coil tends to 
give uniform distribution of the light rays. It must 
be recognized in this art that you cannot get your 
source of light down to a single point. Your coil 
takes up space, and therefore you cannot get your 
light source at any geometric or mathematical point ; 
so that you may go to a great deal of trouble to get 
your reflector mathematically perfect, but you will 
be thrown out from your calculations by the fact that 
you cannot get your heating element down to a point ; 
it takes up a space, and, therefore, it is quite ad- 
visable to make your reflector conform to the shape 
of your heating device, or accommodate itself to the 



Westinghouse Electric & Mfg. Coynpany. 79 

(Testimony of Victor S. Beam.) 
requirements of the heating device. A guard is 
shown in this patent designated by the letter H. It 
is shown in Figures 2 and 3. It consists of a central 
ring, with three radiating spokes to support it. I 
have had a device made up in accordance with this 
patent for illustration and herewith produce the 
same. I have had both the corrugated reflector and 
the parabolic reflector made. The parabolic re- 
flector is mounted in the trunnion, and the corrugated 
reflector is separate. The form of guard shown in 
that particular exhibit I have made up is that shown 
in exhibit No. 9 in this case. 

Another illustration of the prior art devices is the 
Warner patent No, 1,120,003, granted December 8, 
1914, United States patent. That patent shows — 

The COURT. — Cannot you save time by introdu- 
cing these? I think they are clear enough without 
lengthy explanation of them. 

Mr. CARR. — I do not think it is necessary for the 
witness to state very much. He might state a word 
or tw^o with reference to the patent. [61] 

The COURT.— Where there is a cut or illustration 
together with an explanation, it would seem to be 
quite obvious. It is a question largely of appearance. 

Mr. CARR.— I think perhaps that any features 
that might be deemed necessary and advisable to 
brino more definitely and specifically to your 
Honor's attention could be done in the argument. 

The COURT.— Yes. 

Q. You say this is an American patent? 

A. Yes. I was simply going to add that that form 



80 .Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 
of heating coil is not the best, and they had used the 
lamp in there to illmninate the device, to get the red 
effect. It shows a concave bowl, mounted on a stand, 
handles for carrying it. It has, I would say, a rather 
inefficient form of heating coil, and they have taken 
the precaution of putting a double casing on there in 
the rear of the reflector. That is to prevent the part 
that the public might touch, marked ''c" from be- 
coming heated from the coil — as a matter of protec- 
tion there. There would be a dead air space in be- 
tween the curved line "e" and the curved line "f." 
Another American patent is one to Milton H. 
Shoenberg, assigned to the Majestic Electric Devel- 
opment Company, San Francisco, and is numbered 
1,109,551, and dated September 1, 1914. One par- 
ticular thing shown in that patent is two linings 
to the casing, the dead air space in between, as shown 
specifically in Fig. 10; it has the bowl-shape reflec- 
tor, the heating element arranged within the curva- 
ture of the same, and it has a guard to protect the 
heating element from being touched. I would call 
particular attention to the arrangement of the heat- 
ing coil with respect to the reflector. You will see 
that that arrangement runs through all of the devices 
produced here as the product of the Majestic Electric 
Development Company, the plaintiff. The coil is ar- 
ranged transverse to the longitudinal axis of the re- 
flector. That arrangement of the coil has [62] 
some drawbacks, as it is difficult to arrange it uni- 
formly with respect to the reflecting surface, and 
portions of the reflecting surface are liable to get 



Westingliouse Electric & Mfg. Company. Rl 

(Testimony of Victor S. Beam.) 
very warm, and it is necessary to take some precau- 
tions to overcome that arrangement. In the hitter 
forms of the Majestic devices, a flange is provided 
for protecting the public from being burned by the 
heat which would be generated in the reflecting sur- 
face, and also there is provided that double casing, an 
additional curved member at the back of the reflec- 
tor, so as to prevent the public from touching the 
heated reflector. As I understand it, the intent was 
to get the coil as near to the focus as possible. Look- 
ing at it one way, that is accomplished, but since the 
coil must have length, it would get very much out 
of focus at the ends, and that is the part that causes 
the trouble in the heating of the reflector. That 
necessity for the flange in the Majestic devices, and 
likewise for the extra casing is clearly set forth in 
patent 1,245,084 to E. N. Brown, dated October 30, 
1917, in which it says : 

At this point counsel for plaintiff objected to this 
testimony, as being directed purely to the utility of 
the device, and that the witness is now proposing to 
read from another patent and the court ruled that 
the objection was well taken. 

Thereupon the witness continued as follow\s: 
A. I simply want to mention that the Porter U. S. 
Patent No. 6'84,459, granted October 15, 1901, shows 
a fonn of guard which might be used in this form of 
heater ; although the device there has the appearance 
of a fan, and is a fan, it is a fan equipped with a heat- 
ing element, so that it may blow warm air instead of 
cool air. WIumi the Westingliouse Company started 



82 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 
to design the present type of heater, it had available 
the straight-line coil of the Simplex Conduits device, 
and it had the curved reflecting device of the Warner 
patent, No. 1,120,008. [63] It recognized the fact 
that it could not get a heating coil at a single point, 
and that the coil would have to have length, so it ar- 
ranged its coil in the same order that the Simplex 
Company of England, had arranged its coil, and 
utilized the curv^ed reflector of the Warner patent, al- 
though it is also clear from the Simplex Conduits 
Company patent that practically any form of re- 
flector may be used. I have shown in the exhibit 1 
one form of parabola, but as a parabola may take 
many forms, depending upon the distance that you 
take between the point called the focus and an out- 
side line called the directrix, the law of a parabola 
being that the distance from any point on the curve 
to the focus must be the same as the distance to the 
line on the directrix ; but the j^arabola, as I say, may 
take many different forms, and when you get a par- 
abola of a wide flare, that is, the distance between the 
focus and the point on the line, large, you approach 
a curvature of a circle, so that like in some of the de- 
vices here, though one may be a parabola and the 
other a circle — it is extremely difficult to tell which — 
a reflector in the form of a segment of a circle cannot, 
strictly speaking, have a focus, and in the Westing- 
house device it is not attempted ; it is recognized that 
it could not have a focus, and no attempt is made to 
get one ; in fact, the heating coil is strung along, ex- 
tended along the longitudinal axis, and the curve of 



Westinghouse Electric <& Mfg. Company. 83 

(Testimony of Victor S. Beam.) 
the reflector is made so as to accommodate that, so 
that the light, going from any point on that coil, is 
reflected properly. The Westinghouse device has a 
reflector corresponding to the arc of a circle, and 
that gives a very wide beam of light, and the coil 
being arranged on the transverse longitudinal axis, 
gives a very good heat distribution over the surface 
of the reflector, so that the reflector keeps cool it- 
self and it needs no provision for protecting the pub- 
lic from the heat, and likewise [64] it has no 
double casing at the back to provide a dead air space 
and prevent the public coming in contact with heat. 
Of course, it has a guard in front to protect the public 
from coming ,in contact with the heated coil, such 
as they provide guards on electric light reflectors and 
on fans; they are very old and necessary expedients. 
The COURT.— Q. You say the reflector on the 
Westinghouse device does not become hot? 

A. No, not as on the others, where the coil is not 
arranged properly. 

Q. It does not become as hot as the Majestic? 
A. No ; that has been my experience. The reason 
for that is, the Westinghouse device is not designed 
along mathematical or geometrical lines; its design 
is rather imperical; but it was designed with the 
appreciation that a straight-line coil on a longi- 
tudinal axis is the only proper device; and it has 
discarded the [65] idea of making the reflector 
parabolic. A parabolic curvature is theoretically 
the proper one, if you have got a point for the 
source of your light and heat. In this case it is 



84 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 
both light and heat. If you want strictly parallel 
rays, you only need to take a parabola and put a 
point of light at the focus and you will get strictly 
parallel rays, but the difficulties of that is that your 
coil must have size, and when you get out of the 
focus then that more than overcomes any nicety 
which you have in mind in arranging the curvature 
of your reflector. ' ' 

Continuing in answer to questions by defendant's 
counsel the witness testified as follows: 

There are not any features or characteristics of 
Defendant's Exhibits ''A," ^'B," "C" and "D" 
which are not readily and obviously apparent to the 
Court as to which I could give any enlightenment. 
I think they are all quite clear on the face. I have 
called attention to the arrangement of the heating 
coil and called attention to the fact that there are 
some elements of the earlier ones, the fluted stand, 
for instance, that is not in the latter device, that is 
not in the No. 7 heaters. A close inspection shows 
that the reflectors of all four devices built earlier 
than No. 7 have a single thickness, that is, in the 
earlier devices. No. 1, No. 2, 2b, and 3 (T3ef end- 
ant's Exhibits "A," "B," "C," and ^^D") had a 
single thickness of the reflector on the back, whereas 
in No. 7 there are two thicknesses giving a dead air 
space in between. I might add that double casing 
allows of bringing out of the electric leads a little 
better form. You will notice that in all of these 
prior devices there are two exposed terminals, re- 
quiring insulation, sufficient to protect from the 



Westinghouse Electric & Mfg. Company. 85 

(Testimony of Victor S. Beam.) 
atmosphere, whereas in the No. 7 device all that is 
arranged on the inside, between the two casings, so 
that the leads come out through a single opening; 
that is a much better arrangement. Of course the 
reason for the two connections comes from [66] 
the fact that they use a transversely arranged coil, 
and it is necessary to make contact at the two ends 
of that coil; of course the coil being long requires 
that the connections to it be quite a distance apart, 
so that necessitates bringing the contacts out from 
the rear of the casing at quite a distance from each 
other. I might point out that with the straight 
line form of heating coil, as used in the Westing- 
house device, that connections to the coil can be 
made much more readily and without having a 
double casing. Of course, I point out that the ear- 
lier devices were nickle plated, whereas the later 
ones are copper colored. With reference to No. 1, 
2, 2b and 3 appearing here as Defendant's Exhibits 
'*A," "B," "C" and "D," those early devices do not 
have the marginal, relatively wide marginal flange 
and the double casing found in No. 7 Majestic 
heater, those earlier devices do not have those pro- 
tective features. 

Cross-examination of Witness BEAM. 

On cross-examination the witness BEAM testified 
as follows: 

I am one of the salaried employees of the West- 
inghouse Electric & Mfg. Co. and have been such 
since 1916, })ut either direc^tly or indirectly I have 
been connected with them since 1899. The princi- 



86 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 
pal place of business of that company is at Pitts- 
burgh, but they have offices in New York City, and 
I have a room there in those offices as any other em- 
ployee would have. I am the mechanical and elec- 
trical expert employed by them in reference to their 
various devices. In reference to nichrome wire 
used in some of the devices, it is the wire referred 
to by me as being covered by the Marsh patent and 
used by the Westinghouse Company in its coil 
under a license from the owners of the Marsh pat- 
ent. The final arrangements for the license were 
made in the middle of 1917, prior thereto the West- 
inghouse Company used in the unexposed heating 
element a wire made by the [67] Driver Harris 
Company which had no chronium in it, and also 
some nichrome wire made by the Driver Harris 
Company and some excello wire, a German wire. 
While the final arrangements with reference to the 
license were not completed until the summer of 
1917, we actually had the license through our sub- 
sidiary company, the Westinghouse Electric Pro- 
ducts Company, some time before that, but there 
was considerable litigation over the matter so that 
the whole subject Avas not cleared up until the sum- 
mer of 1917. This Excello wire which I referred 
to was on sale in the United States, but during the 
w^ar it was impossible to get it. I believe it was on 
sale as early as 1912, and I believe anybody in the 
United States could use it who chose to purchase it, 
if he overlooked the Marsh patent for the time be- 
ing. The Westinghouse Company had used some of 



WestingJiouse Electric d- Mfg. Company. 87 

(Testimony of Victor S. Beam.) 

this excello wire but they used as little as they 

could. 

Mr. Thornton and Mr. Forsbee got up the de- 
sign of the Westinghouse heater that is involved 
here. Mr. Thornton was an engineer in the heat- 
ing department and Forsbee was his assistant, I 
believe. Neither of these gentlemen came out with 
me and they are not available as witnesses here. 
Mr. Thornton is at Mansfield, Ohio, and I don't 
know where Mr. Forsbee is. 

When I said that the Westinghouse Company 
had at that time available for use in getting up 
their design this Simplex Conduits English patent, 
I mean simply that that was an open public docu- 
ment that they could refer to if they desired, a part 
of the prior art, I suppose you could consider the 
Brown No. 7 heater a part of the prior art in a 
sense. I believe the Westinghouse Company began 
getting up this design in the latter part of 1917, 
but production was held up on account of the war 
until the latter part of 1918 I believe. As near as 
I can recollect, the first ones were put on sale in 
the latter part of 1018. [68] When I say they 
had available for their purpose this English patent, 
I do not think that they placed the English patent 
before them and proceeded to make a design corre- 
sponding with that patent; engineers do not usually 
work that way. They also had available in making 
up the design everything that was known at that 
time. They may have taken a Bro^vn No. 7 heater 



88 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 
and examined that and looked it over and noted its 
characteristics at the time they got uf) the Westing- 
house heater. I do not know of my own knowledge 
regarding that matter. The Westinghouse Com- 
pany has a heater here which has a clam shell re- 
flector. They began to manufacture and sell that 
device in 1912 and 1913, and they sold devices of 
that kind. Mr. Geiger got up the device, and he is 
the gentlemen to whom the patent w^as issued and 
it has been assigned to the defendant. Defendant's 
counsel has produced a heater here which consists 
of a deep, parabolic reflector mounted on a stand, 
which could have been made in that way instead of 
making it in the way of a fluted cone. That par- 
ticular device was made in Mansfield, Ohio, at our 
plant, and was manufactured for illustrative pur- 
poses in this case, as an interpretation of the pat- 
ent. It was not manufactured for sale. We have 
not any like that for sale. The other device con- 
sisting of a fluted cone, that is in the same category, 
that is to say, it was made for illustrative purposes 
in this case in our plant at Mansfield, Ohio, as an 
interpretation of the British patent, possibly, well, 
possibly under my direction and possibly under Mr. 
Carr's. I was present at Mansfield, Ohio, when it 
was being made, and I think the only actual sug- 
gestion I made was to make the casing a bit 
thicker so that it would hold its shape. Mr. 
Thornton really supervised the actual construction. 
Mr. Carr instructed Mr. Thornton and I did, too, to 



Westinghouse Electric d- Mfg. Company. 89 

(Testimony of Victor S. Beam.) 

make it according to the construction of the British 

patent. 

Instuctions were given by Mr. Carr as to how 
to make it. [69] In making tlie Westinghouse 
heater which is involved in this case, we made a flat 
curve instead of a deep one as shown in the Sim- 
plex Conduits device because w^e wanted a little 
wider spread. With a longitudinal arrangement of 
the coil we would have to make the bowl to fit it to 
get the best distribution of heat on the radiating 
area. They apparently found that that shape 
caused the best heat distribution. I am sure that 
is what they were after. I think it did give a better 
heat distribution than the particular form of para- 
bola shown in the English patent. The patent men- 
tions that you can get divergent or parallel or con- 
vergent rays. It gives wide instructions there. 
You could readily make a wider one under the pat- 
ent. There are no directions in the patent as to 
what kind of parabola you w^ould make, whether 
deep, flat or more elongated, there are no directions 
in there as to what kind of parabola you can make. 
The only suggestion about it at all would be the 
most natural one to make in the first instance, al- 
though you were not limited to that. You would 
make one of the shape more nearly corresponding 
to the cone shown there, you have a wide choice 
under the language there. That choice is left to 
the party who wants to make a parabolic reflector in 
accordance w'ith that suggestion. It is stated in 
there that the interior may be smooth; that would 



90 Majestic Electric Development Company vs. 

(Testimony of Victor S. Beam.) 

necessarily apply as well to the parabola as to the 

cone. Of course the man who designed that tended 

rather towards the artistic because he showed the 

fluted cone ; all those British things are rather more 

ornamental. 

On redirect examination the witness said: 

"I do not know the composition of the Excello 
wire to which my attention has been called. I am 
quite sure it has some nickle and some chronium in 
it, but the exact composition of it I do not know at 
this time." [70] 

Defendant then offered in evidence certified copy 
of English patent No. 19,971, application filed 
September 4, 1913, and accepted September 4, 1914, 
by the Government of Great Britain to Simplex 
Conduits, Limited, which is attached to an affidavit 
on motion for preliminary injunction, in this case. 

Defendant offered in evidence copy of U. S. let- 
ters patent No. 881,017, issued to W. E. H. Morse 
on March 3, 1908, and the same was marked De- 
fendant's Exhibit "F." 

Also copy of U. S. patent No. 1,194,168, issued to 
Albert J. Geiger, assignor to Westinghouse Electric 
and Manufacturing Co. on August 8, 1916, which 
was marked Defendant's Ex. "G." 

Also copy of the U. S. patent No. 1,120,003, issued 
to A. A. Warner assignor to Landers, Frary & 
Clark, on December 8, 1914, which was marked De- 
fendant's Exhibit ^'H." 

Also copy of U. S. patent No. 1,190,551, issued to 
Milton H. Shoenberg, assignor to Majestic Electric 



WestingJiouse Electric & Mfg. Company. 91 

Development Co. on September 1, 1914, which was 
marked Defendant's Exhibit "I." 

Also a model as illustrative of the disclosure of 
the British patent 19,971 application filed Septem- 
ber 4, 1913, and accepted September 4, 1914, and the 
same was marked Defendant's Exhibit "J." 

Also a fluted cone produced as illustrative of the 
reflector shown in the British patent, 19,971, appli- 
cation filed Sept. 4, 1913, and accepted Sept. 4, 1914, 
and the same was marked Defendant's Exhibit 

Defendant read in evidence two letters received 
from Mr. John H. Miller, representing the Majestic 
Electric Development Company, as follows: 

"December 31, 1918. 
" Westinghouse Electric & Mfg. Co., 
165 Broadway, 

New York City, N. Y. 
Gentlemen : 

On behalf of my client, the Majestic Electric De- 
velopment Company of this city, I beg to notify you 
that the electric heaters, shown on page 16 of the 
Westinghouse Catalogue, Section 8-C, of November, 
1918, known as 'Cozy-Glow Radiator,' are an in- 
fringement upon United States letters patent No. 
1,245,084, of October 30, 1917, and U. S. design pat- 
ent 51043, of July 17, 1918, also U. S. Letters Pat- 
ent No. 1255814 of February 5, 1918, all of which 
patents are owned by the said Majestic Electric De- 
velopment Company. [71] 

The object of this letter is to advise you of the 
said infringement and request a discontinuance of 



92 Majestic Electric Development Company vs. 

the same. In default of compliance with this re- 
quest, we shall be under the necessity of commencing 
suit against you in the United States District Court 
for infringement and a recovery of damages and 
profits. It is possible that in marketing this device 
you were not aware of the existence of these patents 
or that you were interfering with the rights of my 
client. Consequently, before instituting suit, I shall 
be pleased to hear from you relative to this matter, 
and an early response will greatly oblige 
Yours very truly, 

"JOHN H. MILLER." 

"February 7, 1919. 

Westinghouse Electric Mfg. Co., 
165 Broadway, 

New York City, N. Y. 
Gentlemen : 

Attention of Mr. Victor S. Beam. 
During an extended absence from my office notice 
was sent to you by my managing clerk charging in- 
fringement of certain patents owned by the Majestic 
Electric Development Co., and I have your favor of 
January 6th requesting the specification of the 
claims of patents relied on. 

In reply I beg to say that the claims and patents 
relied on are as follows, viz. : 

1. Design patent, No. 51,253 of Sept. 11, 1917. 

2. Patent 1,245,084, of October 30, 1917, claim 1. 

3. Patent 1,255,814, of February 5, 1918, claim 2. 

4. Patent 1,109,551, of September 1, 1914, claim 1. 
The above particulars differ a little from the 

notice heretofore sent you but the writer of the first 



Westinghonse Electric & Mfg. Company. 93 

letter was not fully posted on the situation and you 
may disregard the first notification and accept this 
one as the correct one. 

Yours very truly, 

''JOHN H. MILLER." 

Defendant's counsel then offered in evidence a 
model which he claimed to be a reproduction of 
what is shown in the Warner patent, No. 1,120,003, 
which he said was not made for sale or copied from 
anything which was made for sale, but was simply 
made from what is shown in the patent as nearly as 
he could make it, and the same was marked Defend- 
ant's Exhibit "L." 

Defendant also offered in evidence a device pro- 
duced and identified by the witness Beam as made 
under and corresponding to the Geiger patent, No. 
1,194,168, referred to as the clamshell heater, and 
the same was marked Defendant's Exhibit "M." 

Defendant produced as a witness Gr. L. Went- 
worth, who, having been duly sworn, testified as 
follows: [72] 

Testimony of G. L. Wentworth, for Defendant. 

I reside in Oakland, and am an electrician, and 
my place of business is 625 Mission Street. I own 
electric radiant or beam heaters, similar to those be- 
fore me on the table. I have one double one and 
two single ones in the place, and I bought one that 
I have in my home, I bought them one at a time 
as I needed them. The first three I just told the 
boys there to order them. I got them one at a time 
as I wanted them, one for the main office, one for 



94 Majestic Electric Development Company i)s. 

(Testimony of G. L. Wentworth.) 
downstairs, and one for myself to take home. They 
got three heaters. I think the first three heaters 
came, I think the name is Majestic — it is Majestic 
something — I don't know just what the name is. 
The place is down on Howard Street, I think be- 
tween New Montgomery and Third. I think that is 
where they came from. I did not ask for any par- 
ticular brand, but I just got Majestic heaters. I 
know it because I 0. K.'d the Majestic bills in 
those three cases. I do not recall any statement 
that I made to anyone with reference to the heaters 
that I purchased, but I do recall — I was caused to 
recall it by it being brought up yesterday; a little 
talk came up regarding it, and if it had not been 
called to my attention I would never have thought 
of it again. Since the talk came up yesterday I do 
recall it, but I cannot recall word for word now 
what the conversation was. I remember that it 
came up in a casual way regarding heaters. It was 
some time ago; it was during the cold weather last 
year, it must have been six or seven months ago, or 
something like that. That was in reference to the 
last heater which I have not mentioned yet. I have 
four. I mentioned 3. It was the last one that I 
bought. The circumstances of buying that heater 
were, I gave the clerk orders to get me another 
heater. I did not say what I wanted or anything; 
four, five, or six days went by and it was still cold, 
and I had a cold myself and I didn't get the heater. 
When I spoke about it [73] they said it was back 
ordered but it had not come yet. So I wanted a 
heater and I gave the nearest clerk to me $10 and 



Westinghouse Electric & Mfg. Company. 95 

(Testimony of G. L. Wentworth.) 
told him to go out and get me a heater. He did so. 
He came back with a box about as large as a hat- 
box, and took out the heater, and screwed the plug 
into a socket over my desk and turned it on and I 
had a heater. That was all there was to it. I did 
not then look to see what it was. It was the heat I 
was looking for and I got it. I paid cash for that 
heater. I gave him $10 and I think I got a little 
change back. I think that heater was brought from 
the railway. I had one ordered for several days 
before, maybe a week before, but it did not come. 
It was a Westinghouse heater that came. I have a 
recollection as to when I observed that it was a 
Westinghouse heater, at the time the talk was 
brought up. I don't remember how long that was 
after I purchased the heater. I did not pay any 
attention to what it was. When the talk came up, 
it was called to my attention that it was not a 
Majestic heater such as was manufactured by the 
party. 

Cross-examination. 
On cross-examination the witness testified as fol- 
lows: I originally had three Majestic heaters, and 
then I ordered a fourth one from the same place 
that the others came from, but I didn't get it be- 
cause there were none available. I sent out a boy 
to get the fourth heater but didn't get the heater, 
and so I sent a different boy the next time. I told 
him to get it. I didn't make any remarks and 
didn't pass any judgment on anybody's heater. I 
just wanted a heater. We make the order out at 
the order clerk's desk, and we have an errand bov 



96 Majestic Electric Beveloprneut Company vs. 

(Testimony of G. L, Wentworth.) 
to send out for these things, but I didn't trust the 
errand boy the second time, I gave the order to an 
order clerk — a clerk to whom I pay $250 a month, 
and he went out and got the heater for me. I paid 
the money out of my own pocket. [74] When he 
returned with it in a box and it was brought to my 
office and taken out of the box, and the cord was 
taken out and it was screwed into a socket and the 
electricity turned on, the clerk simply said to me, 
"There is your heater." I had been doing a little 
bit of talking about it, and I guess rather strong 
talk too, and so I got a heater. I did not pay any 
attention to what brand or make it was. I saw that 
it was red and that it was what I was looking for. 
I didn't pay any attention to it and didn't give it a 
thought, and never thought of it imtil the contro- 
versy was brought up afterwards. I kept using 
that heater and am still using it whenever it is cold 
and I need it. I didn't pay any further attention 
to it, as I had other things to worry about. But 
somebody ultimately called my attention to the fact 
that it was different from the other heaters, and 
that person was Mr. Hillei*. I should judge that 
was four or 5 or 6 months ago, I cannot tell exactly. 
At that time I had been using the heater probably 
a month or something like that. The three Majestic 
heaters I referred to are located I think, one at my 
home and two in my main office. I do not know 
where the Westinghouse heater is now. I loaned it 
to a man to be used by some woman in a hospital, 
and I have not seen it since, so I have all Majestic 
heaters now. I am not going to get it from this 



Westinghouse Electric & Mfg. Company. 97 

woman. I am not going to say a word about it. I 
have already paid for it and I will just let it go. I 
do not know if I am going to buy a new one. If I 
do I will probably do the same thing over again, 
and do the same as I did before. I will simply just 
say, *'Get me another heater." 

At this point defendant rested its case. [75] 

PLAINTIFF'S REBUTTAL. 

Testimony of Edmund N. Brown, for Plaintiff (In 

Rebuttal) . 

In rebuttal plaintiff produced as a witness E. N. 
BROWN, who testified as follows: 

With reference to the use of alloys or wire made 
of alloys, other than the Marsh device, in these ex- 
posed heaters, we used either chronium or nichrome. 
We used Excello first obtained from the Herman- 
Boker Company in New York. It was a wire that 
was on sale in the market, and we used it on all of 
our heaters prior to the time that we commenced to 
manufacture our No. 7. We had no trouble in get- 
ting that wire until after the War was on. The 
difficulty then was because of war conditions. We 
also used another wire besides the Excello called 
Calido made by a firm at Morristown, N. J. After 
the plaintiff started in its business in 1914, the first 
heating device we put on the market was a j>endant 
type, called by our trade name No. 1. The shape 
of the reflector of the device was what we called a 
pie-plate and is the same as the device which I now 
produce. 

Here the device in question was put in evidence 
and marked Plaintiff's Exhibit 6. 



98 Majestic Electric Development Company vs. 

(Testimony of Edmund N. Brown.) 

(Witness continuing:) After that we put on what 
is called a kind of a dish plate which is represented 
by this model, Exhibit ^'A." It was made of nickel, 
and intended to be suspended from a point of sus- 
pension projecting from the wall or hanging from 
the wall. We do not offer that device for sale now. 

The second device which we put on the market 
was known by our trade name No. 3. It has a glass 
knob, and it is represented by Defendant's Exhibit 
"D." We have not continued the sale of this de- 
vice, and it likewise has been abandoned. 

The next device we put on the market was the one 
termed by our trade name No. 10. That was the 
same shape as an oil [76] stove. It had a back to 
it like an oil stove, about one-third of it — the front 
part was a guard, different from the ones we have on 
the other type heaters; it stood up on four legs. 
It looked very much like an oil stove. We also dis- 
continued the sale of that device and it likewise was 
abandoned. 

The next device we put on the market was the one 
we styled by our trade name "No. 2," and repre- 
sented by Defendant's Exhibit "B." We aban- 
doned that device likewise as we did the other de- 
vices. 

The next heaters we put on the market were 
designated by the trade names lb, 2b and 3b, which 
were put on simultaneously. They were to take the 
place of our former Nos. 1, 2 and 3. They had 
a bell shape which we thought would be more effi- 
cient. Defendant's Exhibit "C" represents the 



WestinghoMse Electric d' Mfg. Company. 99 

(Testimony of Edmund N. Brown.) 
said 2b and lb was the pendant type, and the one 
with two elements was 3b. The lb was the suspen- 
sion type, the 2b and 3b w-ere the same with the ex- 
ception of the number of elements. The 2b w^as to 
take the place of the former 2, and the 3b was to 
take the place of the former 3. We proceeded to 
sell the lb, 2b and 3b, and we abandoned them later. 

The next heaters were known by our trade names 
4, 5 and 6. They were of the square type or box 
type, and are illustrated by a device which was put 
in evidence in the prior litigation and marked 
Plaintiff's Exhibit 18. There w^ere three figures 
shown at the bottom of the said exhibit. They have 
the general appearance of a guard or fire place, and 
are called our box type heaters. No. 4 has a single 
element, No. 5 two elements, and No. 6 three ele- 
ments. That and the dimensions are tlie only dif- 
ferences between them. We met with considerable 
success in the sale of our Nos. 4, 5 and 6 heaters, 
and have continued to sell them to this date, and 
carry them in our catalogue and stock. [77] 

The next type of heater we got out was known by 
our trade name No. 7, which is represented by my 
model in evidence here, and that is the one I 
have testified about on direct examination. Our 
object in getting out so many styles of these was 
that I knew I did not have the one that I wanted 
until I got the No. 7. I was striving until I 
hit on the No. 7. I did not have the one that I 
thought was the proper heater. I tested ihat mat- 
ter out by putting them on the market and before 



100 Majestic Electric Development Company vs, 

(Testimony of Edmund N. Brown.) 
the trade and selling them, and in this chain of evo- 
lution I finally reached the No. 7 heater, and T 
found that out as I put them out to the trade. The 
others were abandoned all excepting Nos. 4, 5 and 6 
(box type heaters) which we are selling to-day, but 
that is a different type of heater. After our No. 7 
came on the market we didn't i^ut out any other 
style or change the design. We got out what we 
called a No. 8 of the same design, only that we put 
two elements on it; that was to get additional heat. 
I might add that we are confining ourselves in the 
No. 8 to absolutely the same type reflector. Our 
sales of No. 7 which we put on the market in com- 
parison with the sales of previous heaters increased, 
you might say, with leaps and bounds, I mean the 
No. 7 heater. The No. 7 sold in much greater num- 
bers, several times greater, you might say, as it 
went on, and the sale of No. 7 is increasing all the 
time. The present year is the largest we have had 
up to date in the sale of the No. 7 heaters. I want 
to say one thing. This year we are putting out a 
little larger reflector on our No. 7 and calling it 11, 
but that is the only change. We are calling it that 
to let the trade have something to distinguish it by. 
The diameter of No. 11 is 12 inches. We aban- 
doned the four types of heaters and confined our- 
selves to No. 7 because we considered the No. 7 a 
better article, and we sold a great many times more 
of the No. 7 than we did of any other types. [78] 

The photograph of our exhibit at the Panama 
Exposition which has been put in evidence shows 



WestinghoKse Electric d- Mfg. Company. 101 

(Testimony of Edmund N. Brown.) 
our former heaters, No. 1, No. 2, No. 3 and No. 10, 
and there is one kind of a bird cage we had there, 
hut it was only an experiment; we did not market 
them generally. We had one hung up on the wall 
that was portable also, but we did not sell many 
of these. Those were all of the portable type. The 
photograph does not show^ either lb, 2b or 3b. 
Those, the lb, 2b and 3b were gotten up in the fall 
of 1915, which was too late for the Exposition to 
be shown in the photograph. That series, lb, 2b 
and 3b, was gotten up to take the place of the 1, 2 
and 3. 

Referring to tlie heater of the Simplex Conduits, 
Limited, of London, England, designated as the 
British patent, which has been offered in evidence. 
Application filed Sept. 4, 1913, and accepted (No. 
19,971, Sept. 4, 1914). No heaters of that descrip- 
tion and appearance have been on the market in 
the United States that I know of, and my oppor- 
tunity of determining what heaters are on the 
market in the United States is that I make it my 
business to always keep in touch with anything that 
comes out in our line. 

Regarding the other heater which has been 
offered in evidence here, the Warner patent (De- 
fendant's Exhibit "H"), I talked to some dealers 
and they tell me that that has been taken off the 
market by Landers, Frary & Clark, the manu- 
facturers. I have endeavored to find another one 
in the city here but have been unal)le to do so. 

When we got up our No. 7 heaters, the heaters 



102 Majestic Electric Development Company vs. 

(Testimony of Edmund N. Brown.) 
which we abandoned and discontinued were the 
"b" t3^pe heaters, lb, 2b and 3b and No. 10, and 
previous to getting out of these types we had aban- 
doned the others, 1, 2 and 3. Those prior heaters 
were abandoned because we were, you might say, 
in a period of evohition. We were experimenting 
all the time to see what was the best and we found 
the No. 7 a better heater, more efficient more 
ornamental to the eye and lookked Ijetter. [79] 
Since we put our No. 7 on the market, we have not 
put any other or different t3^pe of heaters on the 
market, except our No. 8 which is the same as No. 7 
with the exception of having two elements. As to 
how our sales of the No. 7 compared with the sale 
of our previous heaters which were abandoned, 
they were so far ahead — they ran into the hun- 
dreds of thousands, that is the No. 7 did. We have 
not sold many thousands of the others. The trade 
liked the No. 7 better than the others; in fact, to 
state an expression of the trade, I can state one 
remark, that we had out now the right kind of a 
heater; and such like remarks. 

Cross-examination of E. N. BROWN. 
Our sales of the previous heaters, Nos. 1, 2 and 3 
and lb, 2b, and 3b, were not confined to the Pacific 
Coast. We were given to understand by the trade 
that the reason why they seemed to like the No. 7 
better than the preceding heaters was that they 
liked the appearance better; it was also a more ejffi- 
cient heater; they liked the appearance. They 
made the remark, *'Now, you have got something 



Westinghouse Electric <£• Mfg. Company. 103 

(Testimony of Edmund X. Brown.) 
that looks right." Never prior to our No. 7 heater 
did we market a heater of portable type having a 
burnished copper reflector. In regard to our ability 
of disposing of all the heaters of the beam type we 
have been able to make, I will say that we have 
restricted our manufacture on account of the in- 
fringement. We could make a great many more 
than we are making to-day if we knew our 
rights were being protected. We have not been 
able to dispose of all we made. We carried over 
some last year. I believe we could supply the 
entire trade of the country if we had an unre- 
stricted right. 

The Excello wire referred to by me is similar to 
the Marsh patent wire. We took a license under 
the Marsh patent because we knew we would be 
infringing if we did not, and that we would be sub- 
ject to being sued. [80] 

We have a few of the heaters preceding No. 7 on 
luind of different types that we have been unable 
to sell, but we do not list them on the market. We 
have not been able to dispose of those heaters. 

Defendant then produced a pamphlet or folder 
iiiul tlie witness identified it as a pamphlet which 
plahitiff is now getting out, containing illustrations 
and reading matter on heaters Nos. 4, 5, 6, 7, 8, 11, 
15, 30 and 35 types, and stated that said catalogue 
represented all the types of heaters which the plain- 
tiff was now marketing except No. 9, which is sim- 
ilar to No. 6, only that it has two more heat units, 
and in proportion is a little larger in size. The 



104 Majestic Electric Development Ccmpany vs. 

document was then offered in evidence and marked 
"Plaintiff's Exhibit 9." 

Defendant also offered in evidence an exhibit 
referred to in the former case as "Plaintiff's Ex- 
hibit 18," for the purpose of showing the types of 
heaters of the plaintiff, numbered 4 and 5 and 6, and 
the same was marked "Plaintiff's Exhibit 10." 

At this point counsel for defendant, by permis- 
sion of the Court, offered in evidence a patent 
which had formerly escaped his attention, copy of 
U. S. Letters Patent No. 684,459, issued to E. F. 
Porter, Oct. 15, 1901, and the same was marked 
"Defendant's Exhibit 'N.'" 

Testimony of George J. Henry, for Plaintiff. 

GEORGE J. HENRY, being duly called as a wit- 
ness on behalf of plaintiff, testified as follows: 

I am 48 years of age and reside at the City and 
County of San Francisco. I am mechanical and 
electrical engineer and patent solicitor. I have 
been following the profession of mechanical en- 
gineer for 26 years; and I have been engaged in 
designing and manufacturing mechanical and elec- 
trical and physical devices over practically all of 
that period of time. I have taken out a number of 
patents on inventions of my own. I have practiced 
before the Patent Office for the last seven or [81] 
eight years in connection with my professional w^ork. 
I am a member of the American Society of Mechan- 
ical Engineers, American Society of Civil Engineers, 
associate member of the American Institute of 
Electrical Engineers. I have examined a great many 



West in (/house Electric d- Mfg. Company. 105 

(Testimony of George J. Henry.) 
mechanical devices, including heaters, including 
electrical devices generally, reported on some of 
them, and had a good deal to do with the designing 
of many devices in this field. 

The Morse patent 881,017 of March 3, 1908 (De- 
fendant's Exhibit "F") shows an incandescent 
electric bulb mounted inside of a reflector, and a 
wire cage or guard stretched across the reflector in 
front of the incandescent lamp. The device is labelled 
"Heating device." The reflector is presumably 
of hemispherical shape generally, and the lamp is 
materially out of focus in the curve in figure 1, the 
wire screen set relatively close to the lamp and w^ell 
within the reflector. The device is a therapeutical 
instrument and is intended for that purpose. The 
invention relates to a device for applying heat to a 
portion of one's body, and is intended to be used in 
the practice of therapeutics. It is a small instru- 
ment to be taken in one's hand and carried around 
and applied to any place where you want heat trans- 
mitted. It is principally for that purpose. The 
handle of the incandescent lamp serves as the 
handle for the devic^e, and also as a socket for the 
incandescent lamp. It has no standard or anything 
of that kind, and is for the purpose of concentrat- 
ing the heat upon the affected parts as you move 
it around in your hand from one spot to another to 
apply the heat, apparently by setting it directly 
over the part itself, not by reflection, but by holding 
the heat of the bulb within the container. 

In the English patent, entitled "Simplex Con- 



106 Majestic Electric Development Company vs. 

(Testimony of George J. Henry.) 
duits, Limited" (No. 19,971, application filed Sept. 
4, 1913, and accepted Sep. 4, 1914). I find a conical- 
shaped container [82] fluted on its outer surface, 
at least in the preferable form and in all the 
forms illustrated. It is mounted upon a standard 
and swivels in any direction, the standard carrying 
a U-frame which is pivoted to the conical-shaped 
reflector. The heat element is a long resistance 
wire would upon insulating material located about 
the axis of the cone, but not coincident with the 
axis. A wire screen is stretched across the front 
of the conical opening, so that the whole thing has 
the appearance of a funnel. The device which you 
now hand me appears to be the device described in 
the English patent. The interior of the cone is cor- 
rugated, made of copper or plated with copper. 
The wire screen is a wire mesh, what is known in 
the trade as wire cloth or wire mesh, fixed in an 
annular frame, which may be slipped over the front 
of the heat opening of the conical reflector. It is 
mounted on horizontal trunnions and also on a ver- 
tical swivel or trunnion, so that it can be swung 
in any direction, up or down, or around a vertical 
axis. That portion of the specification which refers 
to changing the cone to a parabola, commencing at 
line 25, page 3 of the specification, reads as follows : 
"We have found that a diameter of the large 
end approximately equal to the depth of the 
cone gives good results, but the cone angle ma}^ 
be greater or less than that was indicated, or 
the reflector may be in longitudinal section, 



Westinglionse Electric d: Mfg. Company, 107 

(Testimony of George J. Henry.) 

in whole or in part, or of a parabolic or the like 
contour, according to the form desired for the 
emergent beam of rays." 
With regard to the sufficiency of that disclosure 
as to instructing a person to make the heater of 
parabolic shape instead of conical shape, I don't 
think it is any more specific as regards any other 
shape than that shown that would be perfectly ap- 
parent to anyone in the art. A parabolic reflector 
to have any useful function, would have to be, 
as the expert on the other side, Mr. Beam, stated, 
it would have to have its source [83] of heat 
located at the focus of the parabola; and with the 
long element that is here shown, I cannot see how a 
parabola could possibly be effective, for the purpose 
of directing rays in any better shape than this 
cone does. After careful reading of the patent, I 
came to the conclusion that the inventor had in mind, 
rather, the form of the curve of these inverse flutes 
rather than substituting a parabolic form of the 
wiiole cone. These individual flutes might easily be 
curved parabolically in such a way that the focus of 
the parabola, or rather, the locus of the foci of the 
parabola of a single flute would be coincident with 
the center of the heat element ; but I cannot conceive 
a parabola in the plane of a heat element as the 
substitution for this cone which would perform any 
of the functions of reflection aimed at by the pat- 
entee when he says, ''You cau direct the beam as 
you choose by changing the shape of the reflector." 
With such a long heat element, the divergence from 



108 Majestic Electric DcvcJo'pmoit Cowpany vs. 

(Testimony of George J. Henry.) 
the focus of any single parabola would be so great 
over most of the portions of the heat element that 
your emitting area would not be anywhere near 
a parallel beam; it would be widely divergent from 
it. I am very sure that the most accurate parabola 
that could be constructed as a substitute for a 
curve — and I have in mind now such a parabola as 
has been presented here as made by the Westing- 
house company — such a reflector as that, I am very 
sure, would get hot and make a divergent beam that 
would cross a dozen times, probably, in the parabola 
befoi'e it got out, and would make a very wide 
divergent beam. I am referring to the model made 
by the Westinghouse Company of the English Sim- 
plex patent, or any similar reflector made of para- 
bolic to be this form of heat element and based 
on any teaching contained in the Simplex patent. 
The conical fluted type of reflector is the only one 
shown in the illustrations. [84] 

Plaintiff then offered in evidence the device 
representing the English patent testified to by the 
witness, and the same was marked "Plaintiff's Ex- 
hibit 7." 

I have examined and understand the Warner 
patent, No. 1,120,003, dated December 8, 1914, De- 
fendant's Exhibit "H." The device which you now^ 
hand me I believe to be the same device as described 
in this Warner patent. The striking feature of 
this device when you look at it from the front is the 
heat element, and its location with respect to the 
other parts. It is annular in shape and occupies 



Westinghouse Electric & Mfg. Company. 109 

(Testimony of George J. Henry.) 
a large portion of the entire device. The large cage 
covering it is very prominent in appearance. Of 
course, if the device were lighted up the incan- 
descent lamj) will also be a noticeable feature. 
There is an incandescent lamp in it, and the lamp 
is also shown in the model which you have handed 
me and concerning which I have testified. 

Plaintiif then offered in evidence the said device 
or model referred to by the witness as representa- 
tive of the Warner patent, and the same was marked 
Plaintiff's Exhibit 8. 

(Witness continuing:) The device which has been 
put in evidence by defendant and marked Defend- 
ant's Exhibit ''L" is representative of this Warner 
patent. I do not consider it a fair representa- 
tion thereof. It has a very materially different ap- 
pearance. The same elements are present, and 
probably function the same way, but they are 
materially different in size of proportion and re- 
spect to each other. The heat element is located 
much deeper in the reflector than in the first one you 
lianded me. It is also much smaller in cross sec- 
tion relatively, resulting in a very much less prom- 
inent appearance. It is the dominating element in 
the appearance in the patent drawing and also in. 
the heater which you have handed me (Plaintiff's 
Exhibit 8) as distinguished from Defendant's Ex- 
hibit "L." [85] 

Heferring further to the English Simplex patent, 
I note that it does not very prominent^ show in 
its illustration a guard wire over the front. It 



110 Majestic Electric Development Company vs. 

(Testimony of George J. Henry.) 
states that it should be fitted with coarse wire mesh 
or the like, but that does not appear in the illustra- 
tion, it is not shown in the illustration. 

Referring- to a model which has been put in evi- 
dence b}' the defendant marked "Defendant's Ex- 
hibit 'J,' " as illustrative of the Simplex English 
patent, I do not consider that the model correctly 
represents the patent, although it might easily be a 
construction which one skilled in the art, looking 
at the Simplex picture and reading the Simplex 
description, might arrive at a variation. It is 
materially different from the drawings in the Sim- 
plex patent. The heat element is relatively shorter. 
The reflector is curved and smooth on its inner sur- 
face instead of fluted, and is provided with a special 
form of wire guard, whereas no form of wire guard 
is illustrated in the Simplex patent. 

Cross-examination of G. J. HENRY. 
On cross-examination the witness testified as fol- 
lows: I am a practicing attorney as well as en- 
gineer, and at present am associated with Mr. Mil- 
ler, counsel for plaintiff, in connection with some 
work. I have stated that the drawing of the Sim- 
plex Conduits patent. No. 19,971 of 1913 shows no 
guard for the heater. I consider that the part 
marked "H" shown in Figs. 2 and 3 of sheet 1 of the 
drawing, also in Fig. 7, to be the frame work on 
which the patentee intends to stretch a wire mesh, 
which wire mesh is mentioned in the specification. 
The specification does say on page 3, line 21, "The 
end of the reflector is fitted with a guard H, to pro- 



Westinghouse Electric d- Mfg. Company. Ill 

(Testimony of George J. Henry.) 
tect the heating element." Now, if he intended the 
element H of Figs. 2, 3 and 7 to be the guard for 
the heating element, then I am at a loss to inter- 
pret some of his drawings. [86] Take, for ex- 
ample, Fig. 7: This Figure 7 is "A view similar 
to Figure 3 of a modification with three heaters." 
He shows the lines H commencing apparently at 
the small end of the cone and entirely disconnected 
in any way from the outer ring; consequently I 
cannot see, judging from that figure alone, how that 
can be a guard across the front of the reflector, 
although it might be a ring inside and around the 
three elements of Fig. 8. The same testimony ap- 
plies to the showing in Figure 3. The guard seems 
to be away inside of the reflector. I find nothing 
in any of the other figures to clear up such a hiatus. 
Figure 2 shows the guard H extending apparently 
all the way from the outer ring and as such it 
would be a three-wire guard extended across the 
front of the heater with a circular opening at the 
center; but it would so radically diverge from the 
wire mesh mentioned in the body of the specifica- 
tions, that I am inclined to think he did not mean 
it as a guard across the front of the heater in the 
sense of the wiie mesh shown, for example, in the 
model Plaintiff's Exhibit 7. I have criticised the 
portion of the patent specification relative to the 
parabolic curvature reflector as not adapted for 
use with the heater element here shown, on account 
of the length of the heater element. It has not oc- 
curred to me that if the reflector w^ere made more 



112 Majestic Electric Development Company vs. 

(Testimony of George J. Henry.) 
shallow the heater element would naturally he made 
shorter to correspond. Quite the contrary. With 
the type of parabolic reflector shown in Defendant's 
Exhibit ^'J," the heat element would be shorter 
rather than longer. Generally speaking, the shorter 
the distance between the focal point and the direct- 
rix in two parabolas, the less will be the permissible 
area of volume within which your heat should be 
generated. In this case of Defendant's Exhibit 
" J, " we have rather an acute parabola, one in which 
the focus is very deep seated, nearly to the bottom. 
The result would be that your heat element in such 
parabolic reflector would be very [87] much 
smaller proportionately than if the focus were much 
further forward; in other words, if the parabola 
were flatter. I take it that it is well within the 
scope of the presumed knowledge of the designer 
to proportion these parts to suit the conditions im- 
posed by the laws of heat generation and radiation. 
If you have any definite set or parts to work to, 
he could undoubtedly proportion a curve that would 
be well suited to those particular parts, but my tes- 
timony was in reference to a long heat element. 
In this particular Defendant's Exhibit "J" type of 
parabola, it is a fact that the heat radiating from 
the outer portions — I think I am safe in saying that 
nine-tenths of the outer portions of the heat units 
upon being received upon the wires by the reflector 
will be projected inward into the reflector instead 
of outward. 

JOHN H. MILLER, 
Atty. for Plff. 



Westinghouse Electric d Mf(j. Company. 11^ > 

[Endorsed] : Filed Dec. 17, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [88] 



In the Southern Division of the United States Dis- 
trict Court for the Northern District of Cali- 
fornia, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY. 



Plaintiff, 



vs. 



WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Plaintiff's Petition for an Order Allowing Appeal 
from Order and Decree of October 4, 1920, 
and from the Final Decree of November 1, 1920. 
Plaintiff in the above-entitled case feeling itself 
aggrieved by the order and decree heretofore made 
and entered in the minutes of the Court on Octo- 
ber 4, 1920, whereby it was ordered that the bill of 
complaint be dismissed, and that a decree be signed, 
filed and entered accordingly, and feeling itself ag- 
grieved by the final decree heretofore made and 
entered in the case on November 1, 1920, wherein 
and whereby it was ordered, adjudged and decreed 
that the plaintiff's bill of complaint be dismissed 
with costs to the defendant, which said decree was 



114 Majestic Electric Development Company vs. 

signed by Hon. Eobert S. Bean, United States Dis- 
trict Judge. 

Comes now into court by its counsel and prays 
the Court for an order allowing it to prosecute an 
appeal from the said order and decree of October 
4, 19'2:0, and from said final decree of November 
1, 1920, to the Honorable United States Circuit Court 
of Appeals for the Ninth Circuit under and pursu- 
ant [89] to the laws of the United States in that 
behalf made and provided, and that an order be 
made fixing the amount of security of costs and 
damages which said plaintiff shall give and furnish 
on said appeal, and that upon said security being 
given, all further proceedings in this court and the 
issuance of execution be suspended and stayed until 
the final disposition of said appeal by the said 
United States Circuit Court of Appeals for the 
Ninth Circuit. 

And your petitioner will ever pray, etc. 

JOHN H. MILLER. 

Dated: November 17, 1920. [90] 



Westinghouse Electric d Mfg. Company. 115 

In the Southern Division of the United States Dis- 
trict Court for the Northern District of Cali- 
fornia, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 



Plaintiff, 



vs. 



WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Order Allowing Appeal of Plaintiff from Order and 
Decree of October 4, 1920, and from the Final 
Decree of November 1, 1920. 

Plaintiff in the above-entitled suit having filed 
its petition for an order allowing an appeal from 
the order and decree made and entered in the min- 
utes of the Court on October 4, 1920, and from the 
final decree made and entered in the case on Novem- 
ber 1, 1920, accompanied by an assignment of er- 
rors: 

NOW, THEREFORE, on motion of John H. 
Miller, Esq., attorney for plaintiff, it is 

ORDERED that the said petition be and the 
same is hereby granted, and the plaintiff is hereby 
allowed to take an appeal to the United States Cir- 
cuit Court of Appeals for the Ninth Circuit, from 
the order and decree made and entered on the min- 
utes of this court on October 4, 1920, whereby it 



116 Majestic Electric Development Company vs. 

was ordered that the bill of complaint be dismissed 
with costs to the defendant, and that a decree be 
signed, filed and entered accordingly, and also 
from the final decree made and entered in the 
above-entitled case on November 1, 1920, [91] 
wherein it was ordered, adjudged and decreed that 
the plaintiff's bill of complaint be dismissed with 
costs to the defendant. 

And it further appearing that the plaintiff has 
prayed for a supersedeas and stay of execution of 
said decree pending said appeal. 

IT IS ORDERED, ADJUDGED AND DE- 
CREED that the amount of security to be furnished 
by the plaintiff for damages and costs be and the 
same is hereby fixed at the sum of five hundred 
($500.00) dollars, and that upon the plaintiff fur- 
nishing and giving and filing with the clerk of the 
court the aforesaid bond, for damages and costs on 
appeal, in the sum of five hundred ($500.00) dollars, 
conditioned as required by law, all further pro- 
ceedings in this court and the issuance of execution 
be and the same are hereby suspended and stayed 
until the final determination of said appeal by the 
said United States Circuit Court of Appeals for 
the Ninth Circuit. 

And it is further ORDERED, ADJUDGED 
AND DECREED that upon the giving of the bond 
aforesaid conditioned according to law, a certified 
transcript of the records and proceedings herein be 
forthwith transmitted to the said United States 
Circuit Court of Appeals for the Ninth Circuit. 



Westinghouse Electric d Mfg. Company. 117 

Dated: Nov. 17, 1920. 

E. S. BEAN, 
U. S. District Judge. 

[Endorsed] : Filed Nov. 17, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [92] 



In the Southern Division of the District Court of 
the United States, for the Northern District of 
California, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 



Plaintiff, 



vs. 



WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Plaintiff's Assignment of Errors on Appeal from 
Order and Decree Entered in the Minutes, Octo- 
ber 4, 1920, and Final Decree Made and Entered 
November 1, 1920. 

Now comes plaintiff lierein by its counsel and 
si^ecifies and assigns the following as the errors on 
which it will rely upon its appeal to the United 
States Circuit Court of Appeals for the Ninth Cir- 
cuit from the order and decree made and entered in 
the minutes of the court on October 4, 1920, 
whereby it was ordered that the bill herein be clis- 



118 Majestic Electric Development Company vs. 

missed with costs to defendant, and that a decree be 
signed, filed and entered according!}^, and from the 
final decree made and entered in the above-entitled 
case on November 1, 1920, whereby it was ordered, 
adjudged and decreed that the bill of complaint be 
dismissed with costs to the defendant to be taxed, 
viz. : 

1. Error of the Court in making and entering the 
order and decree of October 4, 1920, whereby it was 
ordered that the bill of complaint be dismissed, and 
that a decree be signed, filed and entered accord- 
ingly. [93] 

2. Error of the Court in making and entering 
its final decree of November 1, 1920, wherein and 
whereby it was ordered, adjudged and decreed that 
the plaintiff's bill of complaint be dismissed with 
costs to the defendant to be taxed. 

3. Error of the Court in ordering, adjudging and 
decreeing that the plaintiff's bill of complaint be 
dismissed. 

4. Error of the Court in holding that the patent 
in suit does not extend to the supporting stand or 
pedestal. 

5. Error of the Court in holding that the design 
of the patent in suit relates to the reflector and the 
protective devices viewed in connection with the 
attendant heater element. 

6. Error of the Court in holding that the patent 
in suit was not infringed by the defendant's de- 
vices. 

7. Error of the Court in holding that the de- 



WestingJwuse Electric d Mfg. Company. Tin 

fendant's devices are neither reproductions nor 
colorable imitations of the design patent in suit. 

8. Error of the Court in holding that there are 
points of resemblance between the device of the 
patent in suit and the common telephone and elec- 
tric fan. 

9. Error of the Court in holding that there are 
two important differentiating features between the 
design patent in suit and the design of the defend- 
ant. 

10. Error of the Court in holding that the turned 
over edges of the defendant's reflector in so far as 
affects appearance are w^holly dissimilar to the 
broad annular flange of the patent in suit. 

11. Error of the Court in holding that the broad 
annular flange is a conspicuous differentiating fea- 
ture of the design patent in suit. [94] 

12. Error of the Court in holding that upon the 
testimony of one of the plaintiff's witnesses who 
first observed the Westinghouse heater upon pass- 
ing the show^ wdndow where it was displayed shows 
that the outstanding feature in appearance of plain- 
tiff's device was the heater element. 

13. Error of the Court in holding that the de- 
sign of the patent in suit is entirely void of purely 
ornamental features either of form or drapery. 

14. Error of the Court in holding that the de- 
sign of the patent in this suit is a nude utility. 

15. Error of the Court in holding that the design 
of the patent in suit is a bare mechanism, no part 
or parts or lines of which can be dispensed with or 
substantially altered without impairing its utility. 

16. Error of the Court in holding that one can- 



Ii20 Majestic Electric Development Company vs. 

not under the cover of a design patent debar others 
from employing the mechanical means necessary to 
give eifect to a known and useful mechanical prin- 
ciple, however pleasing to the eye such requisite 
mechanism may be. 

17. Error of the Court in holding that unless 
limited to the precise form illustrated in the draw- 
ing of the patent in suit, plaintiffs' design is antici- 
pated in prior patents. 

18. Error of the Court in holding that unless 
the design of the patent in suit is limited to the 
precise form illustrated in the drawing, the design 
is without invention. 

19. Error of the Court in holding that the de- 
sign of the patent in suit is anticipated. 

20. Error of the Court in holding that the de- 
sign of the patent in suit is without invention. 

21. Error of the Court in holding that the cas- 
ing shown in plaintiff's patent is simply a reflector 
of the most familiar type, old in the art, and with- 
out novelty either in configuration or feature. [95] 

22. Error of the Court in holding that the con- 
trast between the design patent in suit and the de- 
sign as actually manufactured by the plaintiff under 
the Shoenberg patent is but the contrast of material, 
color and size, and not of form. 

23. Error of the Court in holding that if prior 
designs manufactured by the plaintiff* and the de- 
sign of the patent in suit were both made of nickel 
or copper, there would be a similarity instead of a 
contrast between the two. 

24. Error of the Court in holding that in the 
absence of contrasting color or size, there is a strik- 



Westinghouse Electric & Mfg. Company. 121 

ing similarity in general appearance between the 
design of the patent in suit and the design pre- 
viously manufactured by plaintiff under the Shoen- 
berg patent. 

25. Error of the Court in holding that the de- 
sign of the patent in suit is shown and disclosed by 
the photograph of plaintiff's exposition exhibit. 

26. Error of the Court in holding that the de- 
sign of the patent in suit is almost identical with 
that shown in Fig. 1 of the English patent to Taylor, 
No. 102,070. 

27. Error of the Court in considering or giving 
any effect whatever to the alleged English patent 
of Taylor, No. 102,070. 

28. Error of the Court in holding that the al- 
leged date of application for the alleged English 
patent to Taylor, No. 102,070, stated to be January 
11, 1916, could be considered or have any effect in 
this case. 

29. Error of the Court in holding that the al- 
leged English patent to Taylor, No. 102,070, was 
applied for on January 11, 1916. 

30. Error of the Court in holding that the al- 
leged English patent to Taylor, No. 102,070, was 
issued November 15, 1916. [96] 

31. Error of the Court in quoting from the al- 
leged English patent of Taylor, No. 102,070. 

32. Error of the Court in holding that the de- 
sign in the patent in suit closely resembles the 
Warner device. 

33. Error of the Court in holding that the de- 
sign of the patent in suit closely resembles the para- 
bolic ''Simplex." 



123 Majestic Electric Development Company vs. 

34. Error of the Court in holding that the design 
of the patent in suit closely resembles the "Fer- 
ranti Fires." 

35. Error of the Court in holding that in the 
period of four or five years immediately preceding 
the patent in suit an unusual or widespread interest 
in the matter of electric heating had arisen. 

36. Error of the Court in holding that the inven- 
tion of the nichrome wire solved the problem of a 
dependable and efficient element. 

37. Error of the Court in holding that the right 
to use the nichrome wire was involved in the litiga- 
tion which was not finally concluded until about 
the time of the Brown patent in suit. 

38. Error of the Court in holding that it was be- 
cause of the invention of nichrome wire that heaters 
were put on the market in increasing numbers. 

39. Error of the Court in holding that it was 
because of advertising and the arts of salesmanship 
that the desire for such heaters was greatly stimu- 
lated. 

40. Error of the Court in holding that the plain- 
tiff: was to some extent the beneficiary of the activi- 
ties of its competitors. 

41. Error of the Court in holding that the at- 
tractiveness of the design of the patent in suit was 
due, not so much to slight changes in form as to in- 
crease in size and more particularly a substitution 
of the warm copper bowl [97] with suitable 
trimmings in place of the nickel type of heater. 

42. Error of the Court in holding that the wide- 
spread use of the design of the patent in suit was 
due in part to changes in social and housing condi- 



Westingliouse Electric & Mfg. Company. 123 

tions or the rapidly growing tendency to use elec- 
trical energy for divers purposes in the home. 

43. Error of the Court in holding that the wide- 
spread use of plaintiff's design cannot be attributed 
to a slight change in the contour of the reflector. 

44. Error of the Court in holding that the wide- 
spread use of the design of the patent in suit was 
due to the causes or any of them specified in the 
opinion of the Court. 

45. Error of the Court in that its decree is not 
supported by the evidence. 

46. Error of the Court in that its decision and 
decree is contrary to the evidence. 

47. Error of the Court in its failure to give 
effect to the testimony produced by the plaintiff 
showing confusion in the trade, and deception of 
persons of ordinary intelligence taking the defend- 
ant's heater as and for the plaintiff's heater. 

48. Error of the Court in failing to give effect 
to the testimony of the witness Labatt in respect of 
confusion in the trade and deception caused by de- 
fendant's heater. 

49. Error of the Court in failing to give effect 
to the testimony of J. R. Hiller in respect of con- 
fusion in the trade and deception caused by the 
defendant's heater. 

50. Error of the Court in failing to give effect 
to the testimony of G. L. Wentworth in respect of 
confusion hi the trade and deception caused by the 
defendant's heater. [98] 

51. EiTor of the Court in entering its order and 
decree in the minutes on October 4, 1920, through 
and by Honorable Maurice T. Dooling, the District 



124 Majestic Electric Development Company vs. 

Judge who was then presiding, whereas the case was 
tried by and before Frank S. Dietrich, U. S. Dis- 
trict Judge of Idaho, and the written opinion in 
the case was rendered by him. 

52. Error of the Court in making and entering 
its order and decree of October 4, 1920, through and 
by Honorable Maurice T. Dooling, District Judge 
presiding, whereas the case was tried by and before 
Honorable Frank S. Dietrich, U. S. District Judge 
of Idaho, who had been specially designated to act 
as a trial judge for the Northern District of Cali- 
fornia only for the months of August and Septem- 
ber, 1920, and such authority and commission ex- 
pired on the last day of September, 1920. 

53. Error of the Court in making and entering 
its decree of November 1, 1920, through Robert S. 
Bean, District Judge, whereas the case was tried by 
and before Honorable Frank S. Dietrich, United 
States Judge of Idaho, who had been designated 
and appointed to hold United States District Court 
for the Northern District of California during the 
months of August and September, 1920, only, and 
his authority and commission expired on the last 
day of September, 1920. [99] 

NOW, THEREFORE, in order that the foregoing 
assignments of error may be and appear of record, 
the plaintiff presents the same to the Court and 
prays that the same may be filed and such disposi- 
tion be made thereof as is in accordance with the 
laws of the United States in that behalf made and 
provided, and pra3^s that said final decree be re- 
versed, and that the District Court of the United 



WestingJiouse Electric & Mfg. Company. 125 

States for the Northern District of California, Sec- 
ond Division, be directed to enter an interlocutory 
decree in favor of the plaintiff and against the de- 
fendant in the usual manner and fonn, adjudging 
and decreeing the validity and infringement of 
claim 1 of the patent in suit, and enjoining any 
further infringement thereof, and referring the 
case to a Master in Chancery for an accounting of 
damages and profits. All of which we respectfully 
submit. 

Dated : November 17, 1920- 

JOHN H. MILLER, 
Attorney for Plaintiff. 

[Endorsed] : Filed Nov. 17, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [100] 



In the Southern Division of the United States Dis- 
trict Court for the Northern District of Cali- 
fornia, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Bond on Appeal. 
KNOW ALL MEN BY THESE PRESENTS: 
That American Surety Company of New York, a 



126 Majestic Electric Development Company vs. 

corporation organized and existing under and by 
virtue of the laAvs of the State of New York and 
duly licensed to transact a suretyship business in 
the State of California, is held and firmly bound in 
the penal sum of Five Hundred Dollars ($500.00) 
to be paid to the Westinghouse Electric & Manufac- 
turing Company, defendant, its successors or as- 
signs, for which payment, well and truly to be made, 
the American Surety Company of New York binds 
itself, its successors and assigns firmly by these 
presents. 

The condition of the foregoing obligation is such 
that, 

WHEREAS the Majestic Electric Development 
Company, plaintiff in the above-entitled suit, has 
taken or is about to take an appeal to the United 
States Circuit Court of Appeals for the Ninth Cir- 
cuit to reverse the order and decree made and en- 
tered on October 4, 1920, and the final decree made 
and entered on November 1, 1920, by the District 
Court of the United States [101] for the Northern 
District of California, iSecond Division, in the 
above-entitled suit, whereby plaintiff's bill of com- 
plaint was dismissed with costs to defendant. 

NOW, THEREFOEE, the conditions of the fore- 
going obligation is such that if the said Majestic 
Electric Development Company shall prosecute its 
said appeal to effect and shall answer all damages 
and costs, if it shall fail to make its plea good, then 
this obligation shall become void; otherAvise to re- 
main in full force and effect. 



Westinghouse Electric & Mfg. Company. 127 

Dated at San Francisco, California, November 
17th, 1920. 

AMERICAN SURETY COMPANY OF 
NEW YORK. 

By D. ELMER DYER, 
Resident Vice-president. 
[Seal] Attest: E. C. MILLER, 

Resident Asst. Secy. 
Approved Nov. 19, 1920. 

R. S. BEAN, 

Judge. 

[Endorsed] : Filed Nov. 19, 1920. W. B. Maling, 
Clerk. By J. A. Schaertzer, Deputy Clerk. [102] 



In the Southern Division of the United States Dis- 
trict Court for the Northern District of Cali- 
fornia, Second Division. 

No. 492. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Plaintiff, 

vs. i 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Order Allowing Withdrav/^al of Original Exhibits. 
Good cause appearing, on motion of John H. 
Miller, Esq., counsel for Majestic Electric Develop- 
ment Company, plaintiff in the above-entitled suit. 



128 Majestic Electric BeveJopwent Conipany vs. 

IT IS ORDERED that all of the original exhibits 
offered in evidence in the above-entitled canse may 
be withdrawn from the files of the above-entitled 
court and from the clerk thereof, and be by said 
clerk transmitted to the United States Circuit Court 
of Appeals for the Ninth Circuit, as a part of the 
record on appeal of the plaintiff herein to said Cir- 
cuit Court of Appeals, from the order and decree 
made and entered in the minutes on the fourth day 
of October, 1920, and the final decree made and en- 
tered on the first day of November, 1920, which said 
original exhibits are to be returned to the files of 
this Couil; upon the determination of said appeal by 
the said Circuit Court of Appeals. 

Dated Nov. 23d, 1920. 

(Sgd.) R. S. BEAN, 
Judge U. S. District Court. 

[Endorsed]: Filed Nov. 24, 1920. Walter B. 
Maling, Clerk. [103] 



(Title of Court and Cause.) 

Praecipe for Transcript of Record. 
To the Clerk of the United States District Court: 

Please prepare transcript of record on appeal 
from the final decree in the above-entitled suit, and 
incorporate therein the following: 

1. Bill of complaint. 

2. Final amended answer. 

3. Order designating Judge Dietrich to hold court 

in the Northern District of California. 



Westinghouse Electric cC- Mfg. Company, 129 

4. Opinion of Judge Dietrich. 

5. Minute order of October 4, 1920. 

6. Final decree of November 1, 1920. 

7. Statement of evidence. 

8. Petition for order allowing appeal. 

9. Assignment of errors. 

10. Order allowing appeal. 

11. Order allowing withdrawal of exhibits. 

12. Bond on appeal. 

13. Citation. 

JOHN H. MILLER, 
Attorne}^ for Plaintiff. 
Dated November 23d, 1920. 

Service of the within praecipe for transcript of 

appeal admitted this day of November, A. D. 

1920. 

D. L. LEVY, 
W. SHELTON, 
Attorneys for Defendant. 

[Endorsed] : Filed Nov. 23, 1920. W. B. Maling, 
Clerk. By J. A. Sehaertzer, Deputy Clerk. [104] 



130 Majestic Electric Development Company vs. 

In the Southern Division of the United States Dis- 
trict Court, in and for the Northern District of 
California, Second Division. 

No. 492— EQUITY. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 



Plaintiff, 



vs. 



WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Defendant. 

Certificate of Clerk U. S. District Court to Transcript 

of Record. 

I, Walter B. Maling, Clerk of the District Court 
of the United States, in and for the Northern Dis- 
trict of California, do hereby certify the foregoing 
one hundred four (104) pages, numbered from 
1 to 104, inclusive, to be full, true and correct copies 
of the records and proceedings as enumerated in 
the praecipe for transcript of record, as the same 
remain on file and of record in the above-entitled 
cause, and that the same constitute the record on 
appeal to the United States Circuit Court of Ap- 
peals for the Ninth Circuit. 

I further certify that the cost of the foregoing 
transcript of record is $46.50; that said amount v^as 
paid b}^ John H. Miller, Esq., attorney for plaintiff; 
and that the original citation issued herein is here- 
unto annexed. 



Westinghouse Electric <£• Mfg. Company. 131 

IN WITNESS WHEREOF, I have hereunto set 
my hand and affixed the seal of said District Court 
this 29th day of December, A. D. 1920. 

[Seal] WALTER B. MALING, 

Clerk United States District Court for the North- 
em District of California. [105] 



Citation. 

UNITED STATES OF AMERICA,— ss. 

The President of the United States, to Westing- 
house Electric' & Manufacturing Company, 
GREETING: 
You are hereby cited and admonished to be and 
appear at a United States Circuit Court of Appeals 
for the Ninth Circuit, to be holden at the city of 
San Francisco, in the State of California, within 
thirty days from the date hereof, pursuant to an 
order allowing an appeal, of record in the clerk's 
office of the United States District Court for the 
Northern District of California, Second Division, 
wherein Majestic Electric Development Company, 
is appellant, and you are appellee, to show cause, if 
any there be, why the decree rendered against the 
said appellant, as in the said order allowing appeal 
mentioned, should not be corrected, and why speedy 
justice should not be done to the parties in that be- 
half. 

WITNESS, the Honorable ROBERT S. BEAN, 
United States District Judge for the District of 
Oregon, designated to hold and holding the District 



132 Majestic Electric Development Company vs. 

Court of the United States, for the Northern Dis- 
trict of California, this 19th day of November, A. D. 
1920. 

R. S. BEAN, 
United States District Judge. [106] 
Received a copy of the witliin Citation on Appeal 
this 23d day of November, 1920. 

D. L. LEVY, 
W. SHELTON, 
Attorneys for Defendant. 

[Endorsed]: No. 492. United States District 
Court for the Northern District of California. 
Majestic Electric Development Co., Appellant, vs. 
Westinghouse Electric & Mfg. Company. Citation 
on Appeal. Filed Nov. 23, 1920. W. B. Mating, 
Clerk. By J. A. Schaertzer, Deputy Clerk. 



[Endorsed] : No. 3616. United States Circuit 
Court of Appeals for the Ninth Circuit. Majestic 
Electric Development Company, a Corporation, Ap- 
pellant, vs. Westinghouse Electric & Manufactuiing 
Company, a Corporation, Appellee. Transcript of 
Record. Upon Appeal from the Southern Division 
of the United States District Court for the North- 
ern District of California, Second Division. 
Filed December 29, 1920. 

F. D. MONCKTON, 
Clerk of the United States Circuit Court of Appeals 
for the Ninth Circuit. 

By Paul P. O'Brien, 
Deputy Clerk. 



Wesfiugliousc Electric c& Mfg. Compcmy. 13o 

United States Circuit Court of Appeals for the 
Ninth Circuit. 

MAJESTIC ELECTRIC DEVELOPMENT COM- 
PANY, 

Appellant, 

vs. 

WESTINGHOUSE ELECTRIC & MANUFAC- 
TURING COMPANY, 

Appellee. 

Order Enlarging Time to and Including January 
20, 1921, to File Record and Docket Cause. 

Good cause being shown, it is hereby ordered that 
the appellant in the above-entitled suit may have to 
and including the 20th day of January, 1921, within 
which to file the record on appeal and to docket the 
cause in the United States Circuit Court of Appeals 
for the Ninth Circuit. 

Dated December 20, 1920. 

W. H. HUNT, 
Circuit Judge. 

[Endorsed] : No. 3616. United States Circuit 
Court of Appeals for the Ninth Circuit. Order 
Under Sul)division 1 of Rule 16 Enlarging Time to 
and Including Jan. 20, 1921, to File Record and 
Docket Cause. Filed Dec. 20, 1920. F. D. Monck- 
ton, Clerk. Refiled Dec. 29, 1920. F. D. Monckton. 
Clerk. 



No. 3616 

IN THE 

United States Circuit Court of Appeals 

For the Ninth Circuit 



Majestic Electric Development Company, 

Appellant, 

vs. 

Westinghouse Electric & Manufacturing 
Company, 

Appellee. 



APPELLANT'S OPENING BRIEF. 
[Design Patent 51,043, Electric Heater Casing.] 



John H. Miller, 

Attorney for Appellant. 



FILED 

I- FEB 2 1 1921 4 

RD-lyiONOKTOK? 



< 



Index. 

Page 

Statement of Facts 1 

Law of Desig^n Patents 3 

History of the Brown Invention 7 

Plaintiff's Patented Device 14 

Defendant's Device 15 

Rnle of Law for Testing' Improvement of Design Patents. . 16 

Question of Improvement 22 

(a) Evidence of Sense of Sight 22 

(b) Fact Evidence in the Case 24 

(c) Prior Litigation 31 

Review of Lower Conrt's Decision 32 

(a) Extent of Design Patents 33 

(b) Flat Flange v. Round Flange 37 

(c) Arrangement of Heater Element 38 

(d) Ornamental Features 42 

(e) Narrow Construction 44 

An Additional Thought 46 

Widespread Use 48 

( a) Nichrome "Wire 50 

(b) Advertising' and Salesmanship 51 

(c) Social and Housing Conditions 53 

Was There a Mistrial 54 



No. 3616 



United States Circuit Court ot Appeals 



For the Ninth Circuit 



Majestic Electric Development Company, 

Appellant,^ 

vs. 

Westinghouse Electric & Manufacturing 
Company, 

Appellee. 



APPELLANT'S OPENING BRIEF. 

[Design Patent 51,043, Electric Heater Casing.] 



Statement of Facts. 

This is an appeal from a final decree dismissing- a 
bill of complaint. The suit was based on design patent, 
No. 51,043, granted on July 17, 1917, to Edmund N. 
Brown, assignor to the Majestic Electric Development 
Company. The invention is entitled '* Design for an 
Electric Heater Casing", and relates to the portable 
electric heaters now widely used throughout the world, 
in whicli the heat generated by an electric element is 

( 1 ) The Majestic Electric Development Co. will for brevity be desig- 
nated aa plaintiir ajul the Westinghouse Electric & Mfg. Co. as defendant. 



reflected from a copper reflector on the object to be 
heated, thereby heating the object by direct impinge- 
ment of heat rays, as in case of solar heat, instead of 
by heating the surrounding air. 

The suit was tried in the District Court for \\\v North- 
ern District of California before Honorable Frank S. 
Dietrich, District Judge of Idaho, acting under and 
pursuant to a designation duly made to that effect 
by the Senior Circuit Judge. The trial was completed 
on September 1, 1920, and thereupon Judge Dietrich 
returned to his home in Idaho without rendering a 
decision. Afterwards he prepared a written opinion 
while in Idaho, and transmitted it to the clerk of the 
court, the same being filed with the clerk on the 4th of 
October, 1920. On the same day the District Court 
(Honorable Maurice T. Dooling presiding) made and 
entered an order in the minutes to the effect that in 
accordance with the opinion referred to, the suit should 
be dismissed and a decree entered accordingly (Rec. 
19). Afterwards, on November 1, 1920, in accordance 
with said minute order, the District Court through 
Honorable Robert S. Bean, United States District Judge 
of Oregon presiding, signed the decree dismissing the 
bill (Rec. 36), and it is from this decree that the appeal 
is taken. 

We think that Judge Dietrich's opinion is based on 
an erroneous conception of the law of design patents. 
Therefore, it will be necessary for us, before arguing 
the facts of this case, to outline the law of design 
patents as to its fundamental principles, after which 



3 



a comparison of Judge Dietrich's opinion therewith will 
show the error we complain of. 

The Law of Design Patents. 

There is a broad distinction between mechanical 
patents and design patents. In the former function 
is all important, and external appearance of no moment. 
There the fundamental inquiry is, what does the 
mechanism do, what function does it perform, not what 
it looks like in appearance to the eye of an observer. 
Hence beauty of appearance is not important. But 
in the case of a design patent function is of no moment 
and the appearance of the article is all important. 
The design is tested solely by its appearance to the eye. 

The leading case is Gorham v. White, 14 Wall. 511, 
524, where it is said in the syllabus: 

"And the thing invented or produced, for which a 
patent is given, is that which gives a peculiar or distiyic- 
tive appearance to the manufacture or article to which it is 
applied. It is the appearance to the eye that constitutes 
mainly if not entirely, the contribution to the public which 
the law deems worthy of recompense, and identity of ap- 
pearance or sameness in effect upon the eye, is the main 
test of substantial identity of design." (Itahcs ours.) 

This court closely followed the Gorham decision in 
the case of Grelle v. City of Eugene, 221 Fed. 68. 

In view of what has been said, the correct definition 
of a design can be easily formulated, but we know of 
no better one than that given by Mr. Robinson in Sec- 
tion 200 of his work on patents, which reads as fol- 
lows : 

"A design is an instrument created by the imposition 
upon a physical substanco of some peculiar shape or orua- 



mentation which produces a particular impression upon 
the human eye, and through the eye upon the mind. Its 
creation involves a change in the substance itself, and not 
merely in the mode of presenting it for sale; and affects, 
not its abstract qualities, nor those on which its practical 
utility depends, but those only which determine its appear- 
ance to the sight." 

Judge Nixon, when speaking of design patents in the 

case of Theberath v. Harmless Co., 15 Fed. 250, says: 

"They differ from patents for inventions or discoveries 
in this respect, that they have reference to appearance 
rather than utility." 

We have referred to this fundamental doctrine be- 
cause, in our opinion, the learned Judge of the lower 
court disregarded it in his decision and applied to our 
design patent the rigid rules of law applicable only 
to mechanical patents in matters respecting utility and 
function. That matter will be discussed later. 

The law under which design patents are granted 

is Section 4929 of the Eevised Statutes, which was 

passed in 1902.- It reads as follows : 

"Sec. 4929. Any person who has invented any new. 
original, and ornamental design for an article of manu- 
facture, not kno^ni or used by others in this country be- 
fore his invention thereof, and not patented or described 
in any printed publication in this or any foreign country 
before his invention thereof, or more than two years prior 
to his application, and not in public use or on sale in this 
country for more than two years prior to his application, 
unless the same is proved to have been abandoned, may, 
upon payment of the fees required by law and other due 

(2) The first Dosion Patent law of the United States was passed in 1S42. 
but was repealed hy the Act of 1861, and that in turn was repealed by 
the Act of 1870. Finally the Act of 1002 was passed. 



proceedings had, the same as in cases of inventions or dis- 
coveries covered by section forty-eight hundred and eighty- 
six, obtain a patent therefor." 

According to this enactment the design, to be patent- 
able, must be new, original and ornamental. The words 
new and original need no comment, as their meaning 
is sufficiently plain. The remaining term, ornamental, 
needs a word of explanation. 

This term does not mean artistic, as will be seen 
from the fact that when Section 4929 was originally 
proposed in Congress, it contained the words ''new, 
original, and artistic", but the word ornamental was 
substituted for artistic (H. R. No. 1661, 57th Cong. 
1st Session). This word simply means pleasing in 
appearance. It is that characteristic which gives to an 
article a pleasing appearance, and thereby enhances 
its saleable value and enlarges the public demand there- 
for. This is the accepted rule, and no clearer exposi- 
tion thereof can be found than Judge Coxe's opinion 
in Untermeyer v. Freund, 37 Fed. Rep. 342. 

This pleasing appearance of an article may result 
from surface ornamentation and decoration. But the 
article may be entirely devoid of surface ornamenta- 
tion or decoration, and in such case the pleasing 
appearance may reside in the shape or configuration of 
the article, or by the arrangement of the parts, or 
balanced effect of the several features as a whole, 
imparting the idea of gracefulness, strength, or liar- 
monv. 



An instructive illustration is found in the ease of 
Ashley v. latum, 181 Fed. 840, and the same case on 
appeal in 186 Fed. 339.^ In that case the patent was 
for an inkstand having a certain contour and propor- 
tion of parts, but without any surface ornamentation. 
It was severely simple in contour, but graceful in pro- 
portion of parts. 

Another apt illustration is found in the case of 
Pelouze Scale Co. v. American Cutlery Co., 102 Fed. 
916, where the design was wholly devoid of ornamenta- 
tion, and the underlying concept was the idea of grace- 
fulness and strength. 

These views find an illustration in the ancient Greek 
architecture. The Doric column was severely simple 
and devoid of surface ornamentation, while the Corin- 
thian and Ionic columns were highly ornate. Yet no 
one will deny to the Doric column the attribute of 
beauty. In fact the Parthenon, which utilized the Doric 
column, is considered to be the most beautiful s])eci- 
men of architecture ever devised by the ingenuity of 
man. Its beauty resides primarily in its simplicity 
of outline carrying with it the idea of harmony, solidity, 
and strength. 

We have submitt(Mi these considerations in limine 
because the opinion of the lower court seems to be 
based on the theory that a design patent is grantable 
only for surface ornamentation and adornment, which 
is an erroneous idea. We shall take u]) the matter 
later more in detail. 

(3) On appeal the decision of the lower court was reversed on the 
ground of non-infringement, but the validity of the patent was not dis- 
turbed. 



History of the Brown Invention. 

In 1914 the Majestic Electric Development Company 
was incorporated for the purpose of exploiting a port- 
able electric heater. Edmund N. Brown and Milton H. 
Shoenberg were the two active parties in that cor- 
poration, and the company essayed to ])ut on the mar- 
ket portable electric heaters made under a mechanical 
patent, which had been issued to Shoenberg on Sep- 
tember 1, 1914, as No. 1,109,551 (Defendant's Ex- 
hibit I). The business was an experimental one at the 
start, Mr. Brown saying that it was "in a period of 
evolution", and they were experimenting all the time 
to see what was the best (Rec. 102). The relevancy of 
this will be appreciated when it is remembered that 
up to that time no successful portable electric heater 
had been placed on the market. Several efforts in 
that line had been made by others, notably one by the 
Westinghouse Electric & Manufacturing Company; 
but all those efforts proved unsuccessful and were 
practically abandoned. The credit is due to Brown 
and his coadjutors for producing and placing upon the 
market the first portable electric heater which proved 
a permanent success, and that heater is covered by the 
patent in suit. 

Thi' vaiious evolutionary steps taken by Brown and 
his company will be instructive. The first heater they 
essayed to put on the market in 1914 was of the 
l)endant type, designated by the plaintiff's trade name 
"No. 1". The reflector was of small dimensions, made 
of nickel, and the shape was like a pie-plate. It was 
adai)tod to be hung from a lighting fixture in tlie 



8 



ceiling or other point of snsi)ension, not to be moved 
about on the floor (Rec. 97). One of the devices was 
introduced in evidence and marked "Plaintiff's Ex- 
hibit 6". This device was purely experimental. It 
proved unsuccessful and was soon abandoned. 

Shortly afterwards the shape of the reflector of this 
first device was changed from a pie plate to that of 
a shallow dish or soup plate. It likewise was made of 
nickel and intended to be hung from a point of suspen- 
sion as in the case of the first device. One of the devices 
was put in evidence by defendant and marked ''Defend- 
ant's Exhibit A" (Rec. 98). This likewise proved to be a 
failure and was abandoned. 

The next heater ]»ut on the market by plaintitT was 
one known by their trade name "No. 2". It con- 
sisted of a small nickel reflector of a flat dish shape 
mounted on a fluted column fastened in a base plate 
and adapted to be moved about from place to place 
in a room. It is represented by defendant's Exhibit 
B and was abandoned (Rec. 98). 

About the same time another device was put on the 
market by plaintiff in which the reflector was similar 
to that of "No. 2", but was so arranged that it could 
be adjusted up and down on a vertical rod, and at the 
top of this rod was a glass knob adapted to be used 
as a handle for moving the device from place to place 
in a room. This device is represented by plaintiff's 
trade name "No. 3", and one of the devices is in 
evidence as "Defendant's Exhibit D". It likewise 
was abandoned (Rec. 98). 



Thus we see that plaintiff made three distinct efforts 
to produce a successful device, designated as No. 1, 
No. 2 and No. 3, and they all proved ineffective and 
were abandoned. 

The next effort of plaintiff is represented by a series 
of devices known by the plaintiff's trade names "lb", 
*'2b", and ''3b". They all had a small bell-shaped 
nickel reflector, differing radically from the reflectors of 
No. 1, No. 2, and No. 3 and roughly resembling a bell 
(Rec. 98-9). They were gotten up with the idea of 
being improvements in appearance upon the dish- 
shaped reflector devices which had preceded it and had 
been abandoned. 

The device "lb" was of the pendant type, adapted 
to be suspended from a fixed point. The device "2b" 
corresponded to the original No. 2, except for the 
change in the shape of the reflector, while "3b" was 
the same as "2b" except for the addition of a second 
element. In other words, "lb" was to take the place 
of No. 1, "2b" was to take the place of No. 2, and 
"3b" the place of No. 3. These heaters were put on 
the market in the fall of 1915, but they proved to be 
unsuccessful and were soon abandoned (Rec. 99). 

During that time the plaintiff had also gotten up 
another heater resembling in appearance an oil stove, 
but that also was abandoned. It cuts no figure in this 
case, except to show another of the numerous unsuc- 
cessful experiments of plaintiff put forth in search for 
a successful heater. 



10 



The next heaters put on tlie market by plaintiff were 
known by their trade names "No. 4", "No. 5" and 
"No. 6"; but they were of the box type form, and 
cut no figure in this ease either one way or another. 
They show the general appearance of a fire place or 
grate, somewhat similar to the old style gas heaters 
with asbestos backing (Rec, 99). 

At this stage of the game the heater covered by 
the patent in suit was devised. The exact date of the 
invention is not given in the evidence, but it does appear 
that as early as April 4, 1916 (Rec. 40), plaintiff made 
and produced a sample of this heater and gave to it the 
name "No. 7", by which name it will be hereafter re- 
ferred to. The exemplar of the device in evidence is 
marked "Plaintiff's Exhibit No. 2" (Rec. 40). It 
proved to be a success from the start, and thereupon all 
the prior heaters were permanently abandoned, and 
No. 7 proved to be the successful device for which 
Brown had been striving since 1914. It was the culmina- 
tion of his experiments (Rec. 99-100). In this con- 
nection Brown says at pages 99-100 of the record : 

"Our object in getting out so many styles of these 
heaters was that I knew I did not have the one that I 
wanted until I got the No. 7. I was striving until I hit 
on the No. 7. I did not have the one that I thought was 
the proper heater, I tested that matter out by putting 
them on the market and before the trade and selling them, 
and in this chain of evolution I finally reached the No. 7 
heater, and I found that out as I put them out to the 
trade. The others were abandoned all excepting Nos. 4, 5 
and 6 (box type heaters) which we are selling today, but 
that is a different type of heater. After our No. 7 came 
on the market we did not put out any other style or 
change the design." 



11 



With this sample heater of April 4, 1916, in hand, 
Brown went East in that month for the purpose of 
securing bids for its manufacture on a large scale 
(Rec. 40). Uq visited persons in Canada, New York, 
and Philadelphia, showed the sample heater to them, 
and got quotations on the manufacturing cost (Id). He 
was absent on this trip several months and returned 
to San Francisco in August, 1916 (Rec. 41). At that 
time he concluded to riianufacture in San Francisco and 
immediately entered into a contract with the Boesch 
Lamp Company for the manufacture of the heater in 
quantities (Rec. 41). Dies, patterns, and other para- 
phernalia were prepared by the Boesch Lamp Company 
on a large scale and the manufacture of the No. 7 
heater was begun in the fall of 1916 (Hiller, pp. 56-7, 
Record). 

The first sale was made in October, 1916, to Hol- 
brook, Merrill & Stetson and Harper & Reynolds at 
Los Angeles, totalling 500 — 250 to each of these firms 
(Rec. 40). The heater gave instant satisfaction (Id.). 
During the remainder of the year 1916 (about two 
months) plaintiff sold from 7000 to 8000 of the heaters, 
sending them throughout the entire United States (Rec. 
41). The demand increased, and during the years 
1917, 1918, 1919, and up to August, 1920 (the time of 
this trial), plaintiff sold from 350,000 to 400,000 (Rec. 
42). The selling price at first was $7.50 each, but at 
the time of the trial had increased to $11.00. 

A factory for their manufacture was started at 
Philadelphia to supply the eastern demand (Rec. 41), 
and an office was opened in Kansas City (Rec. 42) to 



12 



accommodate the middle-west territory, tlie parent fac- 
tory being at San Francisco. From its inception in 
1916, the business has increased with ''leaps and 
bounds" (Rec. 100) until now it has reached enormous 
proportions, and what was once an infant industry is 
now a large and successful business extending not only 
throughout every part of the United States, but into 
China, Japan, New Zealand, Australia, Spain, France, 
Great Britain, Italy, Denmark and the South American 
countries (Rec. 42). 

It is pertinent at this point to remark that the 
various forms of heaters attempted to be marketed 
by the plaintiff prior to the advent of No. 7 were 
experimental being ])ut on the market in an effort to 
ascertain what was most satisfactory, and they were all 
abandoned as unsuccessful experiments immediately upon 
the advent of the No. 7 heater in October, 1916. Since 
then no substantial changes have been made in the 
No. 7 heater, and it is in substantially the same form 
now as it was in October, 1916, the only addition made 
being a hinge in the standard for varying the angle of 
the heat rays. That feature is covered by a separate 
patent to the plaintiff. 

After the success of the No. 7 heaters had been 
demonstrated plaintiff applied for its patent on May 
28, 1917, and the same was granted on July 17, 1917, 
for a term of seven years (Rec. Patent Exhibit 1). 

It further appears that in the summer of 1917 the 
Hotpoint Electric Heating Company in Southern Cali- 
fornia put upon the market an infringing heater under 



13 



the narao of the "Hedlite" lieater. It was a portable 
electric heater having a copper reflector mounted on a 
standard supported in a base, with an electric element 
in the concave of the reflector, and was provided with a 
wire guard or cage on the front. As soon as this 
heater appeared on the market, plaintiff began two 
actions for infringement at San Francisco, one being 
against the Holabird Electric Co., a dealer, and the 
other against the Hotpoint Co. and its dealer, Hale 
Brothers, Inc. These actions were begun in September 
and October, 1917. Trials were had in June, 1919, and 
verdicts rendered in favor of the plaintiff, upon which 
judgments were entered. Writs of error were sued out, 
but before hearing in this court the controversy was 
compromised and licenses given (Rec. 42 and Judg- 
ment Rolls in those cases). 

During the pendency of that litigation the Hotpoint 
Electric Company so!d out to the Edison Electric 
Appliance Co., which said company assumed defense 
of the cases, and a compromise was effected whereby 
the litigation was terminated. 

During the interim other companies began to sell 
what we claim to be infringements, and among them 
was the Westinghouse Electric & Mfg. Co., the defend- 
ant herein. This company put its heater on the market 
sometime during 1918 or 1919, and in July of 1919 
formal infringement notice was sent to them (Rec. 
44-5). The notice being disregarded, the present suit 
was commenced on November 1, 1919, Trial was had 
in August, 1920, resulting in a decree of dismissal. 
From thnt decroo this a])peal is ])rosecuted. 



14 



Plaintiff's Patented 'Device. 

This heater, known by the trade-name "No. 7", com- 
prises a substantial circular base usually colored a 
dark brown, a vertical standard mounted in the center 
of the base, a highly polished, concave, copper reflector 
mounted at the apex of the standard, an electric ele- 
ment mounted within the concave of the reflector trans- 
versely of its axis, a flat annular flange extending 
around the outer edge of the reflector, a wire guard or 
cage arched over the front of the reflector, and a handle 
at the back of the device for removal from place to place 
in a room. In addition to the above features there is 
a supplemental back attached to the rear of the re- 
flector, providing a dead air space, but this feature is 
of no importance in the present case as it neither 
adds to nor detracts from the appearance of the device. 
In fact it is concealed from view. 

This assemblage of elements into a unitary struc- 
ture produces an article having a graceful and pleasing 
appearance, imparting at the same time an impression 
of harmony, symmetry, and beauty. In fine, it is a 
highly ornamental piece of furniture for the drawing 
room, bed room, or dining room. When lit up by the 
electric current, the copper bowl resembles a ball of 
fire. It arrests attention immediately as being orna- 
mental as well as useful. That it is proper subject 
matter for a design patent cannot be denied, for it is 
a "new, original, and ornamental design for an article 
of manufacture" (R. S. 4929). 

That it required the exercise of the inx'entive faculty 
for its production cannot be denied. The prior unsuc- 



15 



cessful and abandoned experiments made by plaintiff 
with the small nickel reflectors of other shapes, forms, 
contours, and appearance, together with the instan- 
taneous and wide-spread success of the patented device 
when put on the market, and the fact that other large 
manufacturers took advantage of this and placed simi- 
lar devices on the market are persuasive evidences 
of invention. Indeed, these facts were so potent that 
the learned judge of the lower court did not rule that 
the patent was invalid, but based his decision on the 
conclusion that it was not infringed by the defend- 
ant's structure. 

The opinion of the lower court says : 

"The first design, the one with the wide annular flange 
(No. 51,043) is not thought to be infringed by the defend- 
ant's devices. They are neither reproductions nor color- 
able imitations." 

We start, therefore, with the premise that this patent 
is valid, and the sole inquiry is the question of infringe- 
ment. 

Defendant's Device. 
The defendant's structure is a portable electric heater 
intended for identically the same purpose as the plain 
tiff's. It has a substantial circular base of dark 
color, in the center of which is mounted an upright 
standard. This standard, however, is forked at its 
apex so as to produce a trunnion joint, whereby the 
reflector can be tilted at different angles. This joint, 
however, is concealed from view when one stands in 
front of the device, so that the general appearance of 
the article fioni the front is in no wise affected there- 



16 



by. It also contains a higlily polislied concave copper 
reflector having a turned over edge or round flange 
around the outer edge, and an electric heating unit 
arranged within the bowl of the reflector, but longitudi- 
nally instead of transversely, a wire cage or guard 
arched over the face of the reflector, and a handle at 
the back of the reflector for moving it from place to 
place. It is illustrated by plaintiff's Exhibit No. 5. 

It will be seen from the foregoing description that 
practically the only differences from plaintiff's device 
are (1) the arrangement of the heating element longi- 
tudinally instead of transversely, (2) the substitution 
of a turned over or round flange for the flat flange 
around the edge of the reflector. 

We submit that these two modifications do not so 
alter the appearance as to prevent the article from 
having substantial similarity to that of the plaintiff. 
That is the question for decision. 

Before proceeding further with the question of in- 
fringement, it may not be out of place to refer generally 
to the test of infringement applicable to a design 
patent. 

Rule of Law for Testing Infringement of a Design Patent. 
We need go no further than to refer to the leading 
case of Gorham v. White, 14 Wall. 511, where the court 
says at the bottom of page 526 et seq.: 

"We are now prepared to inquire what is the true test 
of identity in design. Plainly it must be sameness of ap- 
pearance, and mere differences of lines in the drawing or 
sketch, a greater or smaller number of lines, or slight vari- 



17 



anees in configuration, if insufficient to change the effect 
upon the eye, will not destroy the substantial identity. An 
engraving which has many lines may present to the eye 
the same picture, and to the mind the same idea or con- 
ception as another with much fewer lines. The design, 
however, would be the same. So a pattern for a carpet, or 
a print may be made up of wreaths of flowers arranged in 
a particular manner. Another carpet may have similar 
wreaths arranged in a like manner, so that none but verj' 
acute observers could detect a difference. Yet in the 
wreaths upon one there may be fewer flowers and the 
wreaths may be placed at wider distances from each other. 
Surely in such a case the designs are alike. The same con- 
ception was in the mind of the designer, and to that con- 
ception he gave expression. 

"If, then, identity of appearance, or, as expressed in 
McCrea v. Holdsworth, sameness of effect upon the eye, is 
the main test of substantial identity of design, the only 
remaining question upon this part of the case is, whether 
it is essential that the appearance should be the same to 
the eye of an expert. The court below was of the opinion 
that the test of a patent for a design is not the eye of an 
ordinary observer. The learned judge thought there could 
be no infringement unless there was 'substantial identity' 
'in view of the observation of a person versed in designs in 
the particular trade in question; of a person engaged in 
the manufacture or sale of articles containing such de- 
signs — of a person accustomed to compare such designs one 
with another, and who sees and examines the articles con- 
taining them side by side.' There must, he thought, be a 
comparison of the features which make up the two designs. 
With this we cannot concur; such a test would destroy all 
the protection which the Act of Congress intended to give. 
There could never be piracy of a patented design, for 
human ingenuity has never yet produced a design, in all 
its details, exactly like another, so like, that an expert 
could not distinguish them. No counterfeit bank note is 
so identical in appearance with the true that an experi- 
enced artist cannot discern a difference. It is said that 
an engraver distinguishes impressions made by the same 
plnle. Experts. t1ien>fore. are not the per^-ons to be dc- 



18 



coived. Much less than tliat which would be substantial 
identity in their eyes would be undistinguishable in the 
eyes of men generally, of observers of ordinary acuteness, 
bringing to the examination of the article upon which the 
design has been placed that degree of observation which 
men of ordinary intelligence give. It is persons of the 
latter class who are the principal purchasers of the articles 
to which designs have given novel appearances, and if they 
are misled, and induced to purchase what is not the article 
they supposed it to be, * * * the patentees are in- 
jured, and that advantage of a market which the patent 
was granted to secure is destroyed. The purpose of the 
law must be effected if possible; but plainly it cannot be 
if, while the general appearance of the design is preserved, 
minor differences of detail in the manner in which the ap- 
pearance is produced, observable by experts, but not 
noticed by ordinary observers, by those who buy and use. 
are sufficient to relieve an imitating design from condem- 
nation as an infringement. 

"We hold, therefore, that if, in the eye of an ordinary 
observer, giving such- attention as a purchaser visually 
gives, two desig^is are substantially the same, if the resem- 
blance is such, as to deceive such an observer, inducing Mm to 
purchase one supposing it to be the other, the first one 
patented is infringed by the other." (Italics ours.) 

This rule was applied by this court in the case of 

Grelle v. City of Eugene, 221 Fed. 68, where the court, 

at page 71, says: 

"The leading case upon the subject of design patents is 
Gorham v. White, 14 Wall. 511. * * * The rule was 
there laid down that the true test of identity of design was 
the sameness of appearance ; that mere difference of out- 
line in the drawing or sketch, a greater or smaller number 
of lines, or slight variations in configuration, if insufficient 
to change the effect upon the eye, will not destroy the sub- 
stantial identity. That an engraving which has many 
lines may present to the eye the same picture, and to the 
mind the same idea or conception, as another with much 
fewer lines. TTiat it is not essential to identity of design 



19 



that the appearance should be the same to the eye of an 
expert. If, in the eye of an ordinary observer, giving 
such attention as a purchaser usually gives, two designs 
are substantially the same — if the resemblance is such as 
to deceive such an observer, and sutficient to induce him 
to purchase one, supposing it to be the other — the one first 
patented is infringed by the other. This rule has been 
uniformly followed in cases involving design patents." 

And this court then cites ten cases as authorities. 
We may add that since that decision, which was in 
February, 1915, man}' more cases to the same effect 
have been decided, one of the latest being Geo. Borg- 
feldt d Co. V. Weiss, 265 Fed. R. 268 (decided March 
19, 1920). 

This rule is plain and simple. It cannot be mis- 
understood or misi^itorprotod. It holds that substan- 
tial siuiHarity in appearance to the eye of an ordinary 
observer is all that is necessary to establish infringe- 
ment. It is not necessary that the thing patented 
should be co])ied in every particular. If the offend- 
ing article has the same general appearance to the eye 
of an ordinary observer, and to such person appears 
to bo sul)Ftantially similar to the patented design, 
that is enough. If the resemblance is such as to deceive 
the purchaser and induce him to buy the article under 
the impression that he was buying the patented article, 
there is infringement. To put it in slightly different 
language, the true test is substantial sameness of 
appearance to the eye of an ordinary observer, bring- 
ing to the examination of the article that degree of 
observation which men of ordinary infcUigence usimlly 
give. 



20 



It is no test to place the two articles side by side 
and note the differences. Such a test would be too 
severe on the validity of the patent. The true way 
is to take an ordinary person who was already familiar 
with the patented design and who had never seen 
the alleged infringing structure, and ascertain what im- 
pression would be made on his mind upon first seeing 
the infringing device in the absence of the patented 
device. In other words, having in mind the appear- 
ance of the patented device, would such a person 
upon seeing for the first time the infringing device in 
the absence of the patented device conclude that it was 
the patented device? 

"Although two designs are easily distinguishable when 
placed side by side, if they are so nearly alike that an 
ordinary purchaser, giving such attention as is usually 
given, would be deceived, infringement is established." 
Symons on Pats, for Designs, p. 63, citing Friedherger v. 
Chapin, 151 Fed. R. 264. 

"This decision^ is important in that it points out that 
the test of infringement is not properly made by placing 
the patented and alleged infringing device side by side; 
such a test is too severe on the validity of the patent." 
Symons on Pots, for Design, p. 68 (bottom). 

In Graff v. Webster, 195 Fed. 522, Judge Coxe said: 

"Having seen the complainant's design in a show case 
or shop window, the ordinary buyer would be very likely 
to mistake the defendants' design for it, if seen in similar 
environment. This is the real test of infringement of de- 
sign patents. If the ordinary buyer, having seen one of 
complainant's dishe.s and wishing to procure one like it, 
would be induced to buy one of the defendants' dishes in- 

(4) Referring to Perrv v. Rtarratt, 3 Bann & Arcl 489; s. o. 19 Fed. 
Cas. 295. 



21 



stead, it is enough. That he would be so deceived is plain, 
not only from the testimony that persons were actually de- 
ceived, but also from an examination of the dishes them- 
selves. Their general appearance is so similar that a 
minute and careful inspection is required to distinguish 
the differences." 

This rule is repeated and affirmed by the Court of 
Appeals of the Second Circuit in the case of George 
Borgfeldt & Co. v. Weiss, 265 Fed. 268, decided March 
19, 1920, and reported August, 1920. That case in- 
volved a design for a new doll invented by Miss 
Pfeffer of San Jose, and known to the public generally 
as "Splashme" dolls. A cut of the design appears at 
page 269 of the report, which shows a doll having a 
certain posture, with a bathing cap on its head pro- 
vided with a flaring bow, and the feet of the doll are 
bare. A picture of the defendant's doll is shown at 
page 270 of the report. It has no cap of any kind; the 
hair on its head is painted; the posture of the arms 
and logs are slightly varied, and it has painted slippers 
on its feet. It was called by the trade-name "Duckme". 
The lower court thought that these differences ob- 
viated infringement; but the Court of Appeals thought 
differently and held that notwithstanding these differ- 
ences the general appearance of the doll as a whole 
was so similar to that of the plaintiff as to constitute 
infringement, lii other words, a person familiar with 
plaintiff" 's doll and desiring to i)urchase another, if 
shown the defendant's doll, would conclude that it was 
the plaintiff's doll, notwithstanding the absence of the 
cap, the presence of the painted hair on the head and 
painted slippers on the feet. Tie would remember the 



to 



22 



general appearaiK^e and posture of the doll, but he 
might not remember the presence of the cap on the 
head or the absence of the slippers on the feet. The 
general appearance as a whole would be the thin 
fixed in his memorj^ We think this decision is abso 
lutolv conclusive of the case at bar. 



Question of Infringement. 

The sole question to be determined by this court is 
that of infringement. Does the Westinghouse heater, 
as represented b}^ plaintiff's Exhibit 5, so closely re- 
semble the plaintiff's patented design in appearance 
as to deceive a person of ordinary intelligence and in- 
duce him to think that the Westinghouse heater is a 
Brown patented heater? Or, to put it in a little differ- 
ent language, is the similarity of appearance between 
the heaters such that a Westinghouse heater can be 
passed off as and for a Brown heater upon an ordinary 
purchaser? This is a question of fact and must be 
answered by the testimony contained in the record. 

1. In the first place, the erideuce of ones own sense 
of sif?ht is snfticient to show infringement. 

At the time that Brown's No. 7 was put on the 
market there was no other electric portable heater on 
the market of such distinctive appearance as to be con- 
fused therewith. The Westinghouse Company had at- 
tempted to market a device known as the Cozy Glow 
heater, represented by their Geiger patent No. 1,194,- 
168 and the model Exhibit M. But the appearance of 
that heater is so radically different from ours that it 
may be dismissed from consideration. 



23 



The small nickel -plated devices attempted to be 
marketed by. the Majestic Company prior to No. 7 are 
so clearly distinguishable in appearance from No. 7 as 
to be ineffective for any purpose of the appellee. 

In fine, heater No. 7 has a distinctive and character- 
istic appearance different from anything which pre- 
ceded it, and it immediately became known as the 
product of the Majestic Electric Development Com- 
pany. This must be true because the Majestic Com- 
pany alone dealt in the article, and there was no other 
article on the market so nearly resembling it as to be 
taken therefor. It became identified in the mind of the 
public with the Majestic Company, so that whenever 
any person saw exposed for sale a portable electric 
heater having the elements of No. 7, with a polished 
copper reflector glowing like a ball of fire, such person 
would immediately conclude that it was a Majestic 
heater No. 7. 

In this connection it is to be noted that the pur- 
chasers of such articles are those of ordinary intelli- 
gence, house-wives, servants, clerks, messenger boys, 
and persons in the ordinary branches of trade, having 
but little if any knowledge of electrical laws. If such 
person, knowing that the copper bowl reflector, mounted 
on a portable stand and having an arched wire guard 
in front, was the product of the Majestic Company, 
because that was the only company having such an 
article on the market at all, should l)a])])en to see in 
a disyilay window of a store for the first time a Westing- 
house heater, he would in all probability conclude that 
the same was a ^Injoslic hentev No. 7. The dominant 



24 



outstanding cliaracteristics of the Majestic heater No. 7 
are so striking and attractive that the result above indi- 
cated would probably follow. This is particularly 
true when the heater is lit up, as is frequently the case 
when it is on display in the shops.^ 

We ask your honors to place yourselves in this posi- 
tion—supposing that you were well acquainted with 
the Majestic heater, but with no other heater of the 
same type, and should see for the first time a Westing- 
house heater displayed in a store window, would you 
not instantly suppose that it was a Majestic heater 
No. 7? Is not the general similarity in appearance 
sufficient to induce that conclusion? Undoubtedly if 
you were to place the two heaters side by side and 
make a critical comparison thereof, you would note dif- 
ferences, but that is not the proper test. The proper 
test is, assuming acquaintance with the patented design 
but not with the alleged infringing device, would an 
ordinary casual examination of the alleged infringing 
device in and by itself, in the absence of the patented 
design, be sufficient to induce an ordinary person to 
believe that it was the patented device and induce liim 
to take it for the patented device? That is the funda- 
mental question for this court to decide. 

2. But the fact eyidence in this case appears to 
US conclusive. 

Mes. Henry Labatt, who may be taken as a person 
of ordinary intelligence, was called as a witness for the 

(5) It has been held that, in the case of lamp shades, it is proper to 
consider their appearance when lighted up as in actual use. Macbeth v. 
Rosenbaum, 199 Fed. R. 154. 



25 



plaintiff (Rec. 49-56). She was a liousewife, residing in 
San Francisco, and for a long time had been familiar 
with the Majestic No. 7 heater but had not seen a 
Westinghouse. Accompanied by a friend she was walk- 
ing along Sutter Street and saw a heater, which after- 
wards proved to be a Westinghouse, displayed in front 
of a store (The Liberty Electric Co.). 

When she first looked at it she took it for a Majestic 
heater and passed on. After going a few steps she 
went back to the window and made a closer examina- 
tion. She still thought it was a Majestic heater, but 
by a close examination she discovered the name 
''Westinghouse". When she saw that the heating- 
element was arranged lengthwise instead of crosswise, 
she merely thought to herself that Mr. Brown had 
changed the position of the element. She did not for 
a moment suppose that the heater was made by some- 
one else, and it was not until by a close examination 
she found the name of the Westinghouse Electric Mfg. 
Co. that she concluded that the heater was not made by 
the Majestic Company. 

The point to be observed here is that the change in 
the position of the heater element from crosswise to 
lengthwise did not prevent the witness from being 
deceived, and she drew the conclusion most naturally 
to be drawn therefrom, to wit, that the heater was the 
Majestic heater, but for some reason or other it was 
thought advisable to change the position of the ele- 
ment. She said : 

''Well, I just thought that it was Mr. Brown's heater. 
I had no nihor thoimht bnt that that was Mr. Brown's 



26 



heater and that he had changed the element of the heater. 
That is what impressed me as I passed by the stove." 
(Rec. 55.) 

Again she says at page 51 : 

"I went back and looked at it and examined it, and I 
still had the thought of Mr. Brown changing the element, 
I still thought it was a Majestic heater. I was convinced 
until I saw the name that it was a Majestic heater. ' ' 

Again at page 52 : 

"I took a good look at the heater, and still thought, 
until I saw the name, that it was Mr. Brown's heater." 

And at page 53: 

"And the model of the stove is so similar to the Majes- 
tic, the Avhole structure of the stove is so much like the 
Majestic." 

We think this testimony is (Conclusive, because it 
shows a case of actual deception of a person of ordi- 
nary intelligence. Mrs. Labatt's testimony appears 
between pages 49 and 56 of the Record, and we ask 
that it be read in its entirety. 

But this was not all. The witness J. R. Hiller 
likewise gave testimony substantiating our contention 
(Rec. 56-63). He was the manager of the Boesch Lamp 
Co., manufacturer of plaintiff's heaters and was thor- 
oughly familiar with the Brown heater, having manu- 
factured them by the thousands. At page 57 of the 
Record he says: 

"I have seen the Westinghouse heater such as is shown 
by Exhibit 5, with the Westinghouse name and trade 
mark on it, and I know of occasions where there has been 
confusion created in the market by the similarity of that 
heater to Mr. Brown's No. 7." 



27 



Continuing his testimony he saj's tliat he had never 

seen one of these Westinghouse heaters until he went 

into a store on Mission Street operated by Mr. Went- 

woRTH, who stated that he had just bought one of 

them (meaning tlie Majestic) and it was upstairs 

(Rec. 59) : 

"* * * and he mentioned that he just purchased a 
heater, one of our heaters" (Rec. 61). 

Thereafter the two men went upstairs where the 

heater was, and Mr. Hiller saw that it was not a 

Majestic, but a Westinghouse, and that was the first 

time Hiller had ever seen a Westinghouse heater, and 

he says (Rec. 59) : 

"what passed through my mind at the time was that 
it was a new imitation of the heater we were putting out". 

On cross-examination he said that Wentworth told 
him that *'he had one of our heaters" (Rec. 60), and 
on page 62 of the Record we find the following testi- 
mony by Mr. Hiller: 

"Q. He might have said, 'I have just purchased one 
of these heaters such as you make', might he not? 

A. Had he said that I would have forgotten the inci- 
dent ; it would have gone entirely out of my mind, because 
I know that people are purchasing those heaters here, 
there, and everywhere; but he said 'one of your heaters'. 
It was forcibly drawn to my attention that he must have 
been misled. That fact could not be changed. It was not 
my business where he purchased his heater and I had no 
right to question him about it and I did not. 

Q. Well, whatever he said he conveyed to you the im- 
pression that in his mind he had purchased one of the 
heaters turned out by your estnblishmcnt? 

A. That was what was conveved to me at tlie lime." 



28 



From this it is apparent that Wentworth had been 
deceived into buying a Westinghouse heater as and 
for a Majestic heater. 

Subsequently Wentworth was called as a witness by the 
defendant and substantially confirmed the fact of his de- 
ception. His testimony will be found between pages 93 
and 97 of the Record. It appears therefrom that he had 
been using three Majestic heaters No. 7 for quite a time, 
and having occasion to use another one, he gave orders to 
a clerk to go out and purchase another heater. The 
clerk did so and brought back a heater and set it up 
in Mr. Wentworth 's office. He (Wentworth) did not 
examine it closely and had been using the heater 
for a month or something like that, evidently under 
the impression that it was a Majestic heater, when 
Mr, Hiller called on him, as testified to by Hiller, 
and he learned for the first time that this fourth 
heater was not a Majestic, but a Westinghouse. At 
page 95, after saying he had sent a clerk to buy another 
heater, he says: 

"It was a Westinghouse heater that came. I have a 
recollection as to when I observed that it was a Westing- 
house heater, at the time the talk^ was brought up. * * * 
When the talk^ came up, it was called to my attention 
that it was not a Majestic heater such as was manufac- 
tured by the party. "'^ 

And at page 96: 

"But somebody ultimately called my attention to the 
fact that it was different from the other heaters and that 
person was Mr. Hiller. I should judge that was four or 

(6) The talk referred to was the conversation with Hiller. 

(7) The party referred to was Hiller. 



29 



fivp or six months ago. I cannot tell exactly. At that 
time I had been using the heater probably a month or 
something like that." 

We think this testimony is convincing. Here was 
a man of more than ordinary intelligence, a dealer in 
electrical devices, who was familiar with the Majestic 
heater but not the Westinghouse. He was using three 
Majestic heaters, and wanted another one, and sent 
out a messenger who purchased what he (Wentworth) 
supposed was another Majestic heater, but which in 
fact was a Westinghouse. He used that Westinghouse 
heater for over a month, and when Mr. Hiller called 
on him he remarked in casual conversation that he 
had just bought "one of your heaters", referring to 
the recently purchased Westinghouse heater. This 
shows that Wentworth had been using the Westing- 
house heater for a month or more under the impres- 
sion that it was a Majestic heater. 

Mr. Hiller also stated that several times damaged 
Westinghouse heaters were brought into his place 
of business for repair, and that evidently the people 
who brought them thought that they had been manu- 
factured by tlie Boesch Lam]i Company, the manu- 
factui-er of llu^ Majestic (Rec. 59-60). While this is 
not direct, it is indirect evidence that the people who 
had ])in'('lias(Ml tlie Westinghouse heaters thought they 
were purchasing Majestic heaters. But in any event 
it shows confusion in tlie market caused by the 
Westinghouse heater. 

Mr. Rilloi- also stated that on one occasion at Sacra- 
mento, where lie liad gone to take estimates for work 



30 



of some kind at an aero])lane factory, the manager, Mr. 

Jordan, brought out a couple of heaters which were 

;damaged, and asked Mr. Hiller if he could fix them 

up. saying, 

"Maybe you can fix up those two heaters of yours in 
there for me" (Rec. 58). 

After examining the heaters Hiller told Jordan that 
they were not Majestic heaters, and Mr, Jordan seemed 
somewhat astonished and said, 

"It looks very much like it" (Rec. 58). 

It is true that these two heaters were not Westing- 
house heaters. They were Hotpoint heaters; but the 
Hotpoint heaters had substantially the same general 
appearance as the Westinghouse heater in that they 
utilized a copper bowl reflector having a rounded flange 
instead of a flat flange. They are the heaters which 
were held to be an infringement of the Majestic heaters 
in the case of Majestic Electric Development Coynpany 
V. Holahird Electrical Company. 

We think that the testimony of Labatt, Hiller and 
Wentworth is convincing to the effect that the Westing- 
house heater so nearly resembles the Majestic heater 
No. 7 in appearance that it not only can be, but has 
actually been, taken and passed off as and for the 
Majestic heater No. 7. That is the test of infringement. 
There was no evidence to contradict these three wit- 
nesses. It stands unchallenged. We submit that cases 
must be decided upon the evidence submitted and that 
the decision in this case is directly contrary to the evi- 
dence. The loiver court simply ignored this evidence. 



31 



3. The prior litigation also sustains our contention. 

The first infringing device to appear on the market 
was that of the Hotpoint Electric Manufacturing Com- 
pany, and plaintiff promptly brought suit against the 
Holabird Electrical Company, the district agent of the 
Hotpoint at San Francisco, for infringement. The de- 
vice therein involved is represented by Plaintiff's Ex- 
hibit 3. It will be seen therefrom that it has a copper 
bowl reflector and a rounded flange instead of a flat 
flange around the edge. It is smaller in size than the 
Westinghouse, but very much resembles the Westing- 
house in appearance. If the Hotpoint device is an 
infringement, then the Westinghouse device is likewise 
an infringement. The Holabird case was tried before 
a jury of twelve men. They were men of ordinary 
intelligence, and they held that infringement had been 
made out. The judge who presided at the trial (Judge 
Trippet) declined to set aside the verdict, thereby hold- 
ing, at least inferentially, that the verdict of the jury 
was correct. There we have the deliberate views of 
thirteen men [a jury of twelve and the presiding judge], 
deciding that in their opinion the Hotpoint copper bowl 
reflector having a round instead of a flat flange, is an 
infringement. While this decision cannot be claimed as 
res adjudicata, nevertheless it should have been fol- 
lowed on the doctrine of stare decisis. 

As the matter now stands, one company (the Hot- 
point) marketing in the Northern District of California, 
a heater having a copper bowl with a round instead of 
n flat flnncre is nn infringer, while nnotlier com]iany 



32 



(the Westingliouse), nianufacturing in the same district 
substantially the same kind of a device is not an in- 
fringer. In other words, there is one rule of law for 
Hotpoint and a different rule of law for Westinghouse. 
And this too in the same district, to wit, the Northern 
District of California. Is it possible that the law on 
a certain subject can bo one thing for one person and 
a different thing for another person at the same time 
and in the same jurisdiction'? 

In view of this situation and of the additional fact 
that there was evidence of actual deception from three 
witnesses, we think that the proper administration of 
justice would have been to decree infringement and 
leave to this court the ultimate decision on that question. 

In view of the apparent simplicity of the case, accord- 
ing to our o]nnion, it will be instructive to ascertain 
the precise ground on which the case was decided. 
Therefore, we invite the court's attention to 

A Review of the Lower Court's Decision. 
The case was tried in conjunction with a case between 
the same parties on Brown's mechanical patent. No. 
1,245,084, of October 30, 1917, and Brown's separate 
and second design patent, No, 51,253, of September 11, 
1917, not involved on this appeal. As stated by the 
court, these cases were tried consecutively, the first 
being the present case. The opinion is an omnibus one 
dealing with all three of said specified patents. The 
first part of it is devoted to the mechanical patent, and 
the latter part to the two design patents conjointly. 
That portion referring to the second design patent (No. 



33 



51,253) is not material in the present case and will- be 
discussed in a separate appeal which we have taken 
from the decision involving this second design patent, 
the said case being No. 3618 of this court. A copy of 
that portion of the decision relating to the design 
patent in suit, is hereto annexed as an appendix for 
the purpose of convenient reference. We have pursued 
this course because the second design patent (No. 51,- 
253) was held by the lower court to be invalid, and 
therefore must be treated diiferently from the patent in 
suit, whereas the patent in suit (No. 51,043) was, infer- 
entially at least, held to be valid but not infringed. 

Remarks on Extent of Design Patents. 

In the first part of the decision, it is said : 

"There could be, and of course is, no claim for size, 
color, or material, nor, as I understand, does the patent 
extend to the supportinpf standard or pedestal, which is 
of the common telephone type. The patented designs, 
therefore, relate to the reflector and the protective devices, 
viewed, of course, in connection with the attendant heater 
element." 

There is a fundamental error contained in this quota- 
tion, showing that the learned judge had misconceived 
the scope of the patent. It is not correct to say that 
this patented design does not extend to the supporting 
standard or pedestal and relates solely to the reflector 
and the protective devices viewed in connection with 
the heater element. It extends to the entire assemblage 
of elements producing a distinctive appearance as a 
whole. One cannot segregate from that assemblage the 
pedestal or standard or arched wii-e guard, or any other 



34 



part and say that they are no part of the combination and 
that the claim must be limited solely to the residue or 
remaining parts. The device is sold as a whole, and the 
entire assemblage must be viewed together as such in 
ascertaining the impression imparted to the eye thereby. 
It is the entire assemblage of elements, not a limited part 
thereof, which produces the impression. 

When one looks at the heater, a complete picture 
thereof in its entirety is reflected on the retina of the 
eye as upon a mirror, and that picture, through the 
optic nerve, produces the impression on the mind. Mani- 
festly it is impossible to blot out any portion of the 
picture. One standing in front of a mirror sees his 
entire image in the glass. He cannot disregard a half 
of the image and say he sees only the remaining half. 

In Jammes v. Carr-Lotvry Glass Co., 132 Fed. 828, 

which involved a design patent for a bottle, the court 

said: 

"The whole is so connected as to form one design for 
an ornamental bottle as a bottle, and this is what the de- 
sign is for. This court is of the opinion that it was not 
necassary to commingle the fluted neck with the ornamental 
base. They are connected and go together as one whole, 
and neither would be complete without the other. To 
commingle the fluted neck or its lines with the ornamental 
base would destroy the efl'ect and beauty of the Avhole. 
In a design for a bottle, each part has its appropriate 
place and location, and in this case the general effect upon 
the eye of the whole is to be considered, and as all the 
parts are so connected as to form one ivhole, it is suffi- 
cient." (Italics ours.) 

In the case of Boldt v. Turner, 199 Fed. 142, which 
also covered a design for a bottle, the court said: 



35 



"Undoubtodly appellant is entitled to have its boltle 
considered as a whole — a unitarj^ body. Whether or not 
the device of a design patent satisfies the requirements of 
the statute is a matter to be determined from the impres- 
sion it makes upon the mind through the eye." 

In Grajf v. Webster, 195 Fed. 522, the court said: 

"It is the design a.s a wJioJe, and not the segregated 
scrolls, leaves, flowers and forms which are united to pro- 
duce the general effect which must be considered. The 
situation in this respect is analogous to machines made up 
of a combination of old elements. The machine produces 
a new result, the design a new impression upon the eye. 
To refuse patentability to a design because the separate 
elements are old, would be tantamount to denying origi- 
nality to 'The Lion of Lucerne', becaiise other sculptors 
before Thorwaldson had carved lions from stone. It would 
relegate 'The Angelus' to obscurity because other artists 
before Millet had painted peasants at work in the harvest 
field." (Italics ours.) 

In Pelouze Scale d Mfg. Co. v. American Cutlery 
Co., 102 Fed. Rep. 916, it is said: 

' ' Design, in view of the patent law. is that characteristic 
of a physical substance which, by means of lines, images, 
configuration and the like, taken as a whole, makes an 
impression through the eye upon the mind of the observer. 
The essence of a design resides not in the elements indi- 
vidually, nor in their method of arrangement, but in their 
tovt ensemble, in that indefinable whole that awakens 
some sensation in the observer's mind." (Italics ours.) 

And this court in Grelle v. City of Eugene, followed 
the same rule and held that it was sameness of appear- 
ance to the ey(> wliich determined the identity of de- 
signs. 

This rule clearly refers to the sameness of appear- 
ance of the article to which Ihe design is applied as 



36 



a whole. It does not refer to sameness of appearance 
of a part of the article or to a portion of the individual 
elements forming the combination. It seems clear, 
therefore, that the learned judge of the lower court was 
in error in eliminating from consideration the supporting 
standard or pedestal or arched wire guard or any other 
part or element of the patented design and limiting his 
consideration to a comparison of defendant's reflector 
with the plaintiff's reflector. We insist that in ascertain- 
ing whether defendant's structure has the same appear- 
ance as that of plaintiff we must look to the structure as a 
whole, as an assemblage of elements constituting a whole, 
and cannot segregate or omit any one or more of the ele- 
ments of the combination and confine our attention to 
what is left. The learned judge of the lower court dis- 
missed from consideration all parts or elements of the 
plaintiff's assemblage save and except the reflector in 
connection with the attendant heater element, and then 
deduced the conclusion that the defendant's reflector 
with a longitudinal arrangement of heater element pre- 
sented a different appearance from the plaintiff's re- 
flector M'ith a transversely arranged heater element. He 
should have compared the defendant's heater as a 
whole, including all of its various elements, with the 
plaintiff's heater as a whole and all of its elements, and 
then inquired whether the impression conveyed to the 
mind of an ordinary observer was substantially the 
same in both cases, whether one device could be taken 
for or passed off as the other. And in that connection 
he would naturally inquire whether a heater with the 
longitudinal arrangement of elements would produce a 



37 



different impression on the eye from a heater with the 
transverse element. We have already seen from the 
testimony of three witnesses that the impression would 
be the same and that persons were actually deceived. 

Distingmshing Features. 
The learned judge then goes on to specify what he 
styles 'important distinguishing features" of the two 
devices, which are as follows: 

(1) The flat flange around the edge of the plaintiff's 
reflector is said to be different from the round flange 
of the defendant's reflector and these devices are said 
to be "wholly dissimilar" as affects appearance. 

(2) So likewise, he contends, is the longitudina] ar- 
rangement of the heater element in one and the trans- 
verse arrangement in the other. 

(3) The casings of both the plaintiff and the defend- 
ant, it is asserted, "are entirely devoid of purely orna- 
mental features, either of form or drapery", and are 
"nude utilities". 

(4) Unless the plaintiff's patent is limited to the 
precise form illustrated in the drawings, meaning the 
broad flat flange and the transverse arrangement of ele- 
ment, it is said to be anticipated or devoid of invention. 

We sliall consider these four points briefly. 

Flat Flange v. Round Flange. 
As to tlie first of these distinctions, the flat flange 
around the reflector, we insist that it is not such "a 
conspicuous differentiating feature" of the plaintiff's 



38 



design as to negative infringement by a device having 
the round flange of the defendant. Tlie crucial question 
here is whether the substitution of the round flange for 
the flat flange produces such difference of appearance 
in the whole article as to justify a person of ordinary 
intelligence, when looking at it for the first time, to 
conclude that it is not the plaintiff's design. We sub- 
mit that this question must be answered in the negative, 
and in support of that we point to the fact that the 
evidence shows that it did not have that effect in ordi- 
nary practice. Mrs. Labatt was deceived. Mr. Went- 
worth likewise was deceived. Mr. Hiller testifies that 
frequently owners of Westinghouse heaters having the 
round flange brought them to him for repair tliinking 
that they were the Majestic heaters. 

And still further, a jury and a judge in the case 
against the Holabird Electrical Company decided that 
the Hotpoint device, which had a round flange substan- 
tially similar to that of Westinghouse, produced the 
same impression on the eye of an ordinary observer 
as the flat flange device of the plaintiff and was there- 
fore an infringement. 

If the evidence in the case is to govern, then it must 
be held that the difference in the form of the flange is 
not such "a conspicuous differentiating feature", as 
will prevent deception. 

Arrangement of Heater Element. 

As to the second contention that the longitudinal 
arrangement of the heater element is so different from 
the transverse arrangement as to produce a "wholly 



39 



dissimilar appearance" in the article itself, the same 
remarks apply as in the case of the flat flange. People 
were actually deceived, as a matter of fact, by Westing- 
house heaters containing the longitudinal arrangement. 
Mrs. Labatt says that she was deceived notwithstanding 
the ditferent arrangement, and even when she noted the 
different arrangement the conclusion which she arrived 
at was that the Westinghouse heater, which she saw 
for the first time, was a Brown heater, but that Mr. 
Brown had changed the arrangement of the element. 
She was not undeceived until by a critical examination 
she discovered the name Westinghouse on the heater as 
the manufacturer. We cannot conceive how there could 
be any stronger evidence than this. 

And apparently Mr. Wentworth was deceived every 
day for over a month into thinking that a Westinghouse 
heater with the longitudinal arrangement of the element 
was a Majestic heater, and he was an electrical man 
engaged in selling electric motors. Of course, if he had 
placed the two heaters side by side and critically ex- 
amined them, he, being an electrical dealer, would have 
detected differences and would also have found the 
name of the Westinghouse Comjiany on the Westing- 
house heater as the manufacturer; but, as we have 
already stated, that would not have been a correct test. 
There is no denial of the Wentwovth episode, and it 
stands as a fact proven in the case. 

On this point a most singular error is found in the 
opinion of the learned judge, where he says that during 
the trial, whenever it became necessary for him to 
quickly identify the defendant's design, his eye involun- 



40 



tarily sought the heater element as the most distinguish- 
ing mark. This, we think, proves our contention. For 
several days he had been critically examining the two 
heaters, and he had thereby learned the fact that in the 
plaintiff's the element was arranged transversely and 
in the defendant's longitudinally. With this fact firmly 
fixed in his mind, he would naturally distinguish the 
rival heaters by the arrangement of the elements, be- 
cause that was the shortest and most convenient way of 
doing it. If one of the heaters had been provided witTi 
a red ribbon and the other with a blue ribbon his argu- 
ment would have been no stronger. Apparently there 
seems to have been nothing else in his mind to distin- 
guish the heaters, which at least shows that in his opin- 
ion the heaters were similar in appearance except for 
the arrangement of the element. Of course, if a person 
were told tliat ]:)laintiff 's heater is characterized by a 
transverse arrangement of element, and the defendant's 
heater by a longitudinal arrangement, and that fact be- 
came firmly fixed in his mind, he naturally would dis- 
tinguish the heaters accordingly. The same result would 
follow if the heaters were distinguished bj^ red and 
blue riblions. But take the case of a person who was 
familiar with plaintiff's transverse arrangement of 
heater element and had never seen or heard of the 
Westinghouse heater with its longitudinal arrangement, 
and should for the first time see such a heater in the 
absence of the plaintiff's heater, would the Westing- 
house heater with its longitudinal arrangement of ele- 
ment convey to his mind a distinctly different ap- 
pearance from what he recollected was the appearance 



41 



of the plaintiff's heater? We answer the question in 
the negative. Such person may not have remembered 
the exact arrangement of the element in plaintiff's 
heater. He would remember, however, that there was 
a heater element there arranged in some way which 
produced the glow, and it would be immaterial to him 
whether it was arranged transversely or longitudinally. 
Both arrangements produce identically the same effect 
and there was nothing distinctively characteristic in 
the transverse arrangement which would carry a perma- 
nent picture thereof in his mind as distinguishable 
from a longitudinal arrangement. When he saw the 
Westinghouse heater for the first time he would see 
a heater producing by means of an element in a 
reflector the same effect as the Brown heater, and not 
having the Brow^n heater before him, but relying only 
on his recollection of it, he would naturally conclude 
that the heater he was looking at was a Brown heater, 
because the Brown heater was characterized by an ele- 
ment producing a glow. It was the glowing element 
itself which attracted attention, not the angle of inclina- 
tion of such element. If by chance he should remember 
distinctly that in the Brown heater the element was 
arranged transversely, whereas in the heater he was 
examiTiing the element was arranged longitudinally, 
while all the remaining parts of the heater were the 
same, then th(^ natural conclusion would be that Mr. 
BroAvn had changed the inclination of his element, and 
that was exactly ivhai happened to Mrs. Lahatt. She 
saw the Westinghouse heater with the longitudinal ele- 
ment and ('oncln(l(Ml iinmedintely, from her recollection 



42 



of the appearance of the Bi-own heater, that it was a 
Brown heater and that Mr. Brown had merely varied 
the inclination of the element. She was deceived, and 
it was not until she made a critical examination of the 
implement and found the name of the Westinghouse 
Company that she concluded it was not a Brown heater. 
This is imdisputed evidence in the case. It must be 
taken at its face value. 

But furthermore, the patent is entitled "Design for 
an Electric Heater Casing", and the specification and 
claim so designate the invention. It would seem from 
this that the heater element is no part of the design, but 
that the design is a casing to be used in connection with 
any kind of a heater element however that element is 
arranged. 

Purely Ornamental Features. 

As to the third contention of the learned judge that 
the casings of both the plaintiff and defendant "are 
entirely devoid of purely ornamental features, either 
of form or drapery; they are nude utilities", and the 
further statement that "they are bare mechanisms, no 
parts or lines of which can be dispensed Math or substan- 
tially altered without impairing their utility", if by 
this is meant that the heater is not patentable as a 
design, we must entirely disagree. Such a doctrine 
would be destructive of the whole system of design 
patents. An article may be devoid of purely ornamental 
features ; it may have no drapery, and yet may be the 
subject matter of a design patent. It is not necessary 
that there should bo surface ornamentation or drapery 



43 



or adornment as distinguished from nude utility to sus- 
tain a design patent. Contour, configuration, form, pro- 
portion of parts, and balancing of elements into a 
symmetrical whole are sufficient to sustain a design 
patent. Indeed, the learned judge admits that these 
designs are not without "comeliness", and that by 
reason of their "simplicity and symmetry and the 
glow", they may be pleasing to the eye. If so, the re- 
quirements of the law as to design patents are complied 
with. Such an article is entitled to protection under 
the law of designs. 

The learned judge has misconceived the law on this 
subject. He seems to think that there must be surface 
ornamentation or adornment or drapery or artistic 
excellence separate and apart from what he calls "nude 
utilities" in order to support a design patent. This is 
not the law. Contour, form, configuration, simplicity 
and symmetry of parts may and frequently do constitute 
beauty, or at least esthetic excellence. It is true that 
surface ornamentation, adornment, drapery and purely 
ornamental features may be made the subject matter 
of a design patent, whether the articles to which they 
are attached be useful or not in the utilitarian sense 
of the term. But they are not the only patentable de- 
vices within the purview of the law. Contour, configura- 
tion, simi^licity, symmetry, producing on the mind a 
pleasing appearance, when applied to a utilitarian 
article of commerce, is within the purview of the law. 
Thus, design patents have been granted for chairs, 
washers, lam]) shades, bedsteads, lamps, badges, stoves, 
harness trimmings, saddles, spoons, casings for disin- 



44 

feeling apparatus, grass hooks, brooches, necksearfs, 
bottle stoppers, sign plates, bicycle saddles, reflectors, 
lace trimmings, hose supporters, hat bands, monuments, 
inkstands and many other devices {Boldt v. Turner, 199 
Fed. R. 142). 

Such is the article now before the court. It is a 
highly useful article from a utilitarian point of view, 
and at the same time it is of graceful and comely ap- 
pearance because of its simplicity and symmetry of parts 
which produce a pleasing effect. In fine, it is ornamental 
as well as useful. 

Narrow Construction of Patent. 
As to the last contention of the learned judge, that 
unless limited to the precise form illustrated in the 
drawings, plaintiff's design is anticipated by prior 
patents or devoid of invention in view of the prior 
art, we have merely to say that here he has applied to 
a design patent a rigid rule of construction applicable 
only to mechanical patents. No design patent under- 
takes to cover anything more than what is shown in 
the drawing. The claim itself is merely a claim for the 
ornamental design as shown. It is the general appear- 
ance of the article which is covered by the patent. But 
when we come to the matter of infringement of such 
a claim, the question is whether the alleged infringing 
article has the same general appearance or such similar 
appearance as to cause deception. It may be different 
in details; it may omit one element; or it may add an- 
other; but if the general appearance is the same, then 
there is infringement. 



45 



''Many designs while differing in detail may present to 
the ordinary observer the same appearance. Sameness of 
appearance is identity of design." 

Bolte V. Knight, 180 Fed. R. 414. 

Yon may not, as in the case of a mechanical patent, 
say that the omission of one element destroys the com- 
bination and thereby avoids infringement. The omission 
of one element in a design may not change the general 
appearance. The general appearance may be the same 
notwithstanding such omission. Otherwise the law of 
design patents would be of no efficacy at all. And so 
likewise the addition of an element may not change the 
general appearance. It is the substantial sameness of 
appearance which determines the question of infringe- 
ment. 

In the case of a mechanical patent for a combination, 
the omission of a single element, however insignificant, 
breaks the combination and avoids infringement. Not 
so, however, in case of a design patent. This distinction 
has been ignored by the learned judge, and we would 
say that his opinion is founded on this fundamental 
error. He has brought to the consideration of a design 
patent a rigid rule of law applicable only to mechanical 
patents. If his decision is allowed to stand in this case, 
it will practically destroy the law of design patents. 

We again submit that the recent case of George Borg- 
feldt <& Co. V. Weiss, 265 Fed. 268, is conclusive of the 
case at bar. There the plaintiff's doll had a cap on its 
head, with a flaring bow, whereas the defendant's doll 
had no cap at all. Tlie hair of the plaintiff's doll was 
not |);iiiit('(l .-nul wns poncoalod from view by the cap, 



46 



whereas the defendant's doll had painted hair and was 
open to view. The posture of the arms and legs of the 
two dolls slightly varied. The feet of the plaintiff's 
doll were bare, vvhereas the feet of the defendant's 
doll were covered with painted slippers. In other words, 
defendant had omitted certain elements of the plaintiff's 
combination and had also added other elements not 
found in the plaintiff's combination. These differences 
were much greater than the differences between Brown's 
heater and the Westinghouse heater. As we have al- 
ready seen, the only differences worthy of note are a 
flat flange and the transverse element in Brown, and a 
round flange and longitudinal element in Westinghouse. 
Do these differences establish a different appearance of 
the article as a whole? The testimony of three witnesses 
answers this question in the negative. 

If, as decided in the Borgfeldt case, the absence of a 
cap on the doll's head, together with the imposition of 
painted hair on the head, and the presence of painted 
slippers on the feet were not sufficient to change, in the 
mind of a purchaser, his recollection of the general ap- 
pearance of a doll with a cap on its head and no slip- 
loers on its feet, then it is a reasonable conclusion that 
a heater having a round flange and longitudinal element 
would not be sufficient to change, in the mind of a pur- 
chaser, his recollection of the general appearance of a 
heater with flat flange and transverse heater. Any way, 
such is the evidence in the case. 

An Additional Thoug"ht. 

Supplementing what we have just said on this point, 
we call attention to another thought. Design patents 



47 



in many cases relate to matters which are comparatively 
trivial, and sometimes to objects which have no utili- 
tarian feature, but are intended only to give pleasure 
through the sense of sight. Consequently, the law looks 
with much greater leniency upon such patents than it 
does upon patents for mechanical devices, and many of 
the harsh rigid rules applicable to mechanical patents 
are not applicable to design patents. In the case of 
designs, it seems incongruous to speak of a thing, which 
is characterized merely by its looks, as being an aggre- 
gation, or the mere product of mechanical skill, or devoid 
of invention in view of the prior art. The object of the 
law is to encourage the production of trivial things 
which give pleasure through the sense of sight. Judge 
Coxe, who has probably had as wide an experience with 
design patents as any other judge on the bench, used 
the following language in the case of Untermeyer v. 
Freund, 37 Fed. 345: 

"It is impossible to read the literature upon this sub- 
ject without being convinced that the courts, thousfh 
applyincf the same rules, have looked with greater 
leniency upon design patents than patents for other in- 
ventions. From the nature of the case it must be so. A 
design patent necessarily must relate to subject matter 
comparatively trivial. The object of the law is to en- 
courage those who have industry and genius sufficient to 
originate objects which give pleasure through the sense 
of sight." 

And similar views were announced by Judge Butler in 

the case of Smith v. Stewart, 55 Fed. 482. AVo quote 

from the opinion as follows : 

"It would ])e absurd to say that the designs covered by 
these patents, generally, exhibit the exercise of 'inventive 



48 



genius,' as the term is commonly applied to mechanical 
inventions. * * * Some of the rnles applied to mechani- 
cal patents are wholly inapplicable to those for designs. 
As said by the supreme court in Gorham v. White: 'To 
speak of the invention as a combination * * * or to 
treat it as such is to overlook its peculiarities'. Such de- 
signs generally, if not uniformly, contain nothing new ex- 
cept the appearance to the eye, by arrangement of previ- 
ously existing material, such as lines, scrolls, flowers, 
leaves, birds, and the like. The combination, where several 
separate objects are employed, need not be, and cannot be, 
such as this term signifies when applied to machinery — 
'the parts co-acting to produce a new and useful result' 
in the sense there contemplated. The object sought in a 
design is a new effect upon the eye alone — a new appear- 
ance; and the several parts need not have any other con- 
nection than is necessary to accomplish this result. * * * 
All the statute, as commonly interpreted, requires is the 
production of a new and pleasing design, which may add 
value to the object for which it is intended. The invention 
consists in the conception and production of this, however 
simple it may be." 

We submit that the learned judge of the lower court 
disregarded these considerations when passing on the 
patent in suit. We now ask this court to apply them 
on this appeal. If they are applied, we feel confident 
that infringement must be found, and a reversal decreed 
accordingly. 

Widespread Use. 

We claim that under the decision of this court in 
Morton v. Llewellyn, 164 Fed. 693, following the rule of 
law established by the Supreme Court in Krementz v. 
Cottle, 148 U. S. 556, due consideration must be given 
to the fact of widespread and extended use of the 
Brown invention. The several nickel plated devices of 
different sha)i(^s, forms nnd a]ipearance which preceded 



49 



Brown's No. 7 heater, were experimental in character 
and soon abandoned. But Brown's No. 7 heater imme- 
diately caught the fancy of the public and went into 
widespread and extensive use. During the last two 
months of 1916 from 7000 to 8000 of them were sold, 
and the demand therefor increased by "leaps and 
bounds" (Rec. 100). During the following years of 
1917, 1918, 1919 and 1920 approximately 400,000 of 
them were sold (Rec. 42). These sales extended not 
only over the entire United States but over practically 
all the countries of the world (Id.), so that it may be 
safely said that there is no part of the civilized world 
which these heaters have not occupied. It must be re- 
membered also that at the time of the advent of this 
heater, there was no other successful and satisfactory 
portable electric heater on the market, although there 
was a want for the same. Plaintiff had tried to fill 
that want by its small nickel plated heaters which 
proved unsuccessful. In addition thereto, the Westing- 
house Co. had attempted to market what was known as 
the Cozy Oilow heater, made under the Geiger patent, 
No. 1,194,168 and represented by the model "Defend- 
ant's Exhibit M". It employed a copper reflector of 
corrugated form resembling in sha]ie and contour a 
clam shell, and two large electric light bulbs of the 
ordinary kind "located within the circumference of the 
reflector. That heater likewise was a failure and has 
been jiractically abandoned. It serves a useful purpose 
in tliis case, however, as showing the desire on the part 
of the Westinghouse Com])any to place a portable elec- 
tric bente?' on tin* iiini'ket nnd their failure to obtain 



50 



tlie desired result. After the failure of this heater 
to meet the wants of the public in that line and the 
success of the plaintiff, the Westinghouse Company 
adopted its present heater in the latter part of 1918 or 
first part of 1919, which is charged by us to be an 
infringement. 

Now, what we complain of in this connection, is that 
the learned judge of the lower court failed to give effect 
to those pregnant and suggestive facts. He apparently 
recognized that some excuse was due for failure to give 
them effect, and in that behalf he made several sug- 
gestions. 

In the first place, he attributes success of the heater 
to nichrome wire. He says, for four or five years imme- 
diately preceding the Brown patents there had come to 
be an unusual and widespread interest in the matter of 
electrical heating, and that the invention of nichrome 
wire solved the problem of a dependable and efficient 
element, but the right to its use was involved in litiga- 
tion which was not finally concluded until about the time 
of the Brown patents. This nichrome wire is covered 
by what is known as the Marsh patent. Wliile no direct 
evidence was given by defendant to show the time when 
the validity of that patent was determined, yet by re- 
ferring to the Federal Eeporter we ca^n establish the 
date. 

The case of Hoskins Manufacturing Co. v. General 
Electric Company, 212 Fed. 422, involved said patent, 
and the decision of the lower court therein establishing 
its validity w^as rendered on November 10, 1913, which 



51 



is three years before the Brown heater No. 7 appeared 
on the market. 

A reargument of that case was had and another deci- 
sion affirming the first one was rendered on April 15, 
1914, which was two years and six months prior to the 
advent of Brown's No. 7 heater. 

It appears from the case of General Electric Company 
V. Hoskins Manufacturing Company, 224 Fed. 464, that 
the decision of the lower court on the Marsh patent was 
affirmed on May 20, 1915, which is one year and five 
months prior to the advent of Brown's heater No. 7. 

It will thus appear that the learned judge of the 
lower court was in error when he stated that the litiga- 
tion over this Marsh patent wire 'Svas not finally con- 
cluded until about the time of the Brown patents". The 
nichrome wire had been in use for three years before 
the advent of Brown's heater No. 7, and yet no success- 
ful heater had appeared up to that time. 

And still further, it appears from the testimony of 
Brown (Rec. 97), that other types of wire answering 
the same purpose as the Marsh were on the market, 
notably a type of wire known as the ''Exeello", and 
another as "Calido". 

The learned judge of the lower court also surmised 
that heaters of this type began to he put on the market 
in increasing numbers ''doubtless by means of advertis- 
ing and the arts of salesmanship". There is no evi- 
dence in tlu^ record to sustain that surmise. That the 
plaintiff did do extensive advertising may be admitted; 
but it (Iocs not follow thorcfroni thnt it was the cause 



52 



of plaintiff's success with its No. 7 heater. No amount 
of advertising can make an article successful unless the 
article itself is one which commands success. Plaintiff 
had extensively advertised its small nickel plated 
heaters, as evidenced by its exhibit at the Panama Pacific 
Exposition in 1915, yet they proved a failure because they 
were not efficient in use or attractive in appearance. 
The public refused to take them, and they were sup- 
planted by the No. 7 heater, which has retained its 
popularity all over the world up to the present day. 
Therefore, we assert that the surmise of the learned 
judge, and it is a mere surmise unsupported by evidence, 
that '* advertising and the arts of salesmanship" may 
be accepted as an explanation of the success of the 
Brown heater No. 7, cannot be sustained. Cases must 
be tried on the evidence submitted and not on surmise 
or conjecture. 

It is also suggested in the opinion of the learned judge 
that while plainti/f's No. 7 heater "ivas in some degree 
more efficient than its earlier devices and was more at- 
tractive in appearance", nevertheless its attractiveness 
tvas ''due not so much to slight changes in form as to 
increase in size and more particularly a substitution of 
the tvarm copper boivl with suitable trim in the place 
of the nickel type of heater". This is likewise merely a 
surmise. But if it has any meaning at all, it is that the 
success of the No. 7 was due to its pleasing appearance, 
which the opinion characterizes as "comeliness", added 
to its "simplicity and symmetry and the glow". But 
this is in direct support of our argument and destroys 
the theory of the decision. We are contending that 



53 



tho success of No. 7 is due in a large measure to its 
pleasing appearance, and the testimony of Brown sus- 
tains us in that contention. What matters it therefore 
if the pleasing appearance was due to "substitution of 
the warm copper bowl with suitable trim in the place 
of the nickel type of heater"! Any change or modifica- 
tion which produces a new and pleasing appearance is 
protected under the law. 

It is also suggested in the opinion that : 

"in the changes of social and housing conditions and in 
the rapidly growing tendency to use electrical energy for 
divers purposes in the home may doubtless he found con- 
tributing causes for the increased demand''. 

This likewise is a mere surmise unsupported by evi- 
dence in the case, and again we assert that law suits 
should be decided on the evidence produced and not on 
surmise and conjecture. But whether the surmise be 
correct or not, it in no degree weakens our argument, 
which is that tlu^ attractive appearance of this device 
was the principal cause for its great popularity, and it 
is of no moment what were the social conditions which 
gave rise to the demand for such a device. There may 
have been changes in "social and housing conditions"; 
there may have been a "rapidly growing tendency to 
use electrical energ}^ for divers purposes in the home"; 
indeed, tli('r(> may have been a multitude of industrial 
conditions calling for a heater of this kind— in fine, an 
urgent demand for such a heater. Tn such posture of 
affairs the man who, in response to the public demand, 
produces the hentcr wanted is entitled to the highest 



54 



credit, and if tliat heater goes into widespread and ex- 
tended use all over the world, credit therefor, due to its 
inventor is not minimized by the social conditions which 
created the necessity for such a device. We submit that 
the opinion of the lower court does plaintiff a grave 
injustice and deprives it of the benefit of that which the 
law says it is entitled to. 

Was there a Mistrial? 

In conclusion there is a matter which we desire to call 

to the court's attention and which be submit without 

argument. It is this. The case was tried before Hon. 

Frank S. Dietrich, District Judge of Idaho, sitting in 

the place and stead of the resident judge of the Northern 

District of California, in pursuance of an order of the 

Senior Circuit Judge of the Ninth Circuit. That order 

appears at page 18 of the Record, and it authorizes 

Judge Dietrich 

"to hold the District Court of the United States for the 
Northern District of California d^mng the months of 
August and September, 1920, and to have and exercise 
within said District the same powers that are vested in 
the Judges thereof". 

We have taken the liberty of underscoring the most 
essential parts of said order. In pursuance thereof. 
Judge Dietrich tried the case during the month of 
September, 1920, and took it under advisement. He 
then returned to Idaho, where he wrote an opinion which 
was transmitted to the court at San Francisco and filed 
by the clerk on October 4, 1920. On the same day Judge 
Maurice T. Dooling was presiding in the District Court 



55 



for the Northern District of (California, and in pnrsn- 
ance of the written opinion which had been sent by 
Judge Dietrich, ordered that a decree be entered dis- 
missing the bill. Afterwards on November 1, 1920, 
when the Hon. R. S. Bean, District Judge of Oregon, 
was sitting in the District Court for the Northern Dis- 
trict of California, a decree signed b}^ Judge Bean 
dismissing the bill was entered in accordance with the 
order entered by Judge Dooling on October 4, 1920. 

The question at once arises, is such a decree valid? 

Judge Dietrich was appointed to hold court in the 
Northern District of California under provision of Sec- 
tion 14 of the Judicial Code, which provides that a Cir- 
cuit Judge may in certain cases designate and appoint 
a judge of another district in the same circuit to have 
and exercise within the district first named the same 
powers that are vested in the judge thereof. It is to be 
observed, however, that the designated judge is to have 
and exercise judicial powers only "within the district" 
for which he is appointed. And it is to be further 
observed that according to the order of appointment 
Judge Dietrich was authorized to exercise those judicial 
powers only "during the months of August and Septem- 
ber, 1920". The facts are that the term of Judge 
Dietrich's appointment expired before his opinion was 
filed, and said opinion was rendered by him while he 
was not williin said district. Three questions arise: 

(1) II (id he the pmrer to act in the case at all ivhile 
he was iv Idaho and not within the Northern District of 
California? 



56 



(2) Had he the power to act in the matter after the 
expiration of the term for which he was designated to 
hold court in the Northern District of California^ 

(3) Can another Judge, who did not try the case, sign 
the decree? 

If either of these questions be answered in the nega- 
tive, then there was a mistrial, and the decree woukl 
have to be reversed irrespective of the merits, and a 
new trial ordered. We submit these questions to the 
court for answer. They should be determined definitely 
in the interest of proper practice. It has not been un- 
usual for a judge, who has been designated to hold 
court in the Northern District of California for a speci- 
fied time, to return to his home after the expiration of 
that time and decide cases which were submitted to him 
during the designated time. In fine, it has been cus- 
tomary to follow the course pursued by Judge Dietrich 
in the present case, and were it a mere matter of con- 
venience no question would be raised. But this is a 
question of power under a statute prescribing certain 
specific conditions under which a judge of one district 
may try and decide cases in another district. It must 
be conceded that Judge Dietrich would have had no au- 
thority to try this case in the Northern District of Cali- 
fornia in the absence of the designation required by the 
Judicial Code. If that is true, the question arises 
whether or not he has any authority under which a 
decree can be entered in the Northern District of Cali- 
fornia after the expiration of the time in which he was 



57 



designated to act as judge. In other words, it is not a 
case of expediency or convenience, but one of power. 

Dated, San Francisco, 
February 21, 1921. 

Respectfully submitted, 

John H. Miller, 
Attorney for Appellant. 



(APPENDIX FOLLOWS.) 



•xipuaddy 



APPENDIX. 



That Part of the Opinion of the Lower Court Relating to 

Design Patent No. 51,043 (Rec. 29 et seq.). 

DESIGN FATEMS. 

One of tliese patents covers a casing of the precise 
form illustrated in the mechanical patent just consid- 
ered, and the other a casing similar in form, exclusive 
of the wide annular flange. There could be, and of 
course is, no claim for size, color or material, nor, as 
I understand, does the patent extend to the supporting 
standard or pedestal, which is of the common telephone 
type. The patented designs, therefore, relate to the 
reflector and the protective devices, viewed, of course, 
in connection with the attendant heater element. 

The first design, the one with the wide annular flange 
(No. 51,043), is not thought to be infringed by the de- 
fendant's devices. They are neither reproductions nor 
colorable imitations. True, there are points of resem- 
blance; so there are also points of resemblance between 
these devices and the common telephone and electric 
fan. In all reflectors, whether for headlights or heaters, 
there are similarities of appearance. So common is a 
concavo-convex reflector that the word reflector alone 
immediately suggests such a device. But taking the 
heaters as a whole and excluding from consideration 
slight differences of detail, there are two important 
differentiating features: Whatever may be said in 
support of the vi(^w that the turned-over edges of the 
defendant's reflcctoi-s are the functional equivalents of 



11 



the broad annular flange in the plaintiff's heater, 
clearly in so far as affects appearance they are wholly 
dissimilar, and the broad flange is a conspicuous differ- 
entiating feature of the plaintiff's design. So of the 
heater element. As shown by the testimony of one of 
the plaintiff's witnesses, who first observed the Westing- 
house heater upon passing a show-window where it was 
displayed, this is an outstanding feature in the appear- 
ance of the device, — the attention is arrested by it; and 
the incident so testified to is in accord with my own 
experience during the course of the trial. When it was 
necessary quickly to identify the plaintiff's device, 
grouped as it frequently was with many others in the 
courtroom, my eyes involuntarily sought the element as 
the most conspicuous distinguishipg mark. If, there- 
fore, we consider the entire assemblage — the reflector, 
the protective members, and the element — as the design, 
there is substantial dissimilarity in appearance. 

But in the second place, in so far as they are alike, 
the plaintiff's casings, as well as those of the defend- 
ants, are entirely devoid of purely ornamental features, 
either of form or drapery; they are nude utilities. 
That, of course, is not to say that they are without 
comeliness. By reason of their simplicity and sym- 
metry and the "glow", they may be pleasing to the 
eye; but the point is that they are bare mechanisms, 
no parts of lines of which can be dispensed with or 
substantially altered without impairing their utility, and 
one cannot, under cover of a design patent, debar others 
from employing the mechanical means necessary to give 
effect to a knoAvn nnd useful mechanical principle, how- 



ever pleasing to the eye such requisite mechanism 
may be. 

In the third place, unless limited to the precise form 
illustrated in the drawing, the plaintiff's design is anti- 
cipated in prior patents, to some of which reference has 
already been made, and, in view of the prior art, is 
without invention. * * * 

As bearing upon the question of invention in either 
the mechanical or the design patents, or both, plaintiff 
puts great stress upon the fact that following the 
placing on the market of its No. 7 heater (the device 
with the broad annular flange), there was an increased 
demand and it soon went into general use, but while 
the fact is to be recognized as having weight, I have 
not deemed it sufficient, under all of the circumstances, 
to overcome the considerations hereinbefore stated. 
From the record it is manifest that in the period of 
four or five years immediately preceding the Brown pat- 
ents there had come to be an unusual and widespread 
interest in the matter of electric heating. The invention 
of nichrome wire solved the problem of a dependable 
and efficient element, but the right to its use was in- 
volved in litigation, which was not finally concluded 
until a])()ut the time of the Brown patents. With this 
question out of the way, heaters began to be put on the 
market in increasing numbers, and doubtless by means 
of advertising and the arts of the salesmanship, the 
desire for such heaters was greatly stimulated. In this 
work the plaintiff was active, but undoubtedly it was 
to some extent also the beneficiary of the activities of its 
competitors. Tt may l)e conceded that its No. 7 heater 



IV 

was in some degree more efficient than its earlier de- 
vices, and was more attractive in appearance, but, as 
already j)ointed out, its attractiveness was due not so 
much to slight changes in form as to increase in size 
and more particularly a substitution of the warm copper 
bowl with suitable trim in the place of the nickel ty])e 
of heater. Furtliermore, in the changes of social and 
housing conditions and in the rapidly growing tendency 
to use electrical energy for divers purposes in the 
home, may doubtless be found contributing causes for 
the increased demand. But whatever may be the full 
explanation, such popularity as heater No. 7 may have 
had and may now have cannot reasonal^ly be attributed 
merely to the slight change in the coTitour of the re- 
flector or th(> addition of the 1>road annular flange, or 
to both of these changes. 

It is urged that in a measure the present design suits 
are ruled by the judgments recently procured by the 
plaintiff in this court against other parties, in actions 
at law for infringement of the same ]>atents. The causes 
were tried with a jury, resulting in nominal verdicts 
for the plaintiff, and while they were pending upon writ 
of error in the Circuit Court of Appeals the parties 
made some adjustment, the nature of which is not dis- 
closed, and accordingly, by agreement, the writs were 
dismissed. Just what effect should be given to the 
judgments under such circumstances is not entirely 
clear. It is. of course, not contended that they con- 
stitute a judicial estoppel. The judge who presided 
at the trial, it is true, must have entertained the view 
that the evidence was sufficient to go to the jury, but 



there is nothing in the records to indicate what his 
conclusion would have been had he been called upon 
independently to decide the entire issue. I find no 
difficulty in accepting his views of the law as set forth 
in his charge; but while it is to be conceded that uni- 
formity of decision in the same tribunal is highly de- 
sirable, and to that end, in the case of a doubtful issue, 
one judicial agency may with propriety defer to a 
precedent established by another of the same dignity, 
I am unable to say that here I entertain such doubt as 
would warrant me in subordinating my own judgment 
to that of the jury in the other cases, even if it be as- 
sumed that the evidence is substantially the same. 

There being no controversy touching such general 
principles of patent law as are involved, I have thought 
it unnecessary to add to the length of the opinion by 
stating them. Nor would it serve any useful purpose to 
review the cited cases. Altogether, they are of course, 
helpful, but no single one can be regarded as a con- 
trolling or even highly persuasive precedent upon the 
real issue, which is comparatively narrow, and more 
largely one of fact than of law. 

For the reasons stated, the bills must be dismissed, 
and such will be the decree in each case, with costs. 

(Endorsed) : Filed October 4, 1920. 

Walter B. Maling, Clerk. 



No. 3616 ^ 



IN THE 



United States Circuit Court of Appeals 



For the Ninth Circuit 



Majestic Electric Development Company 
(a corporation), 

Appellant, 



vs. 



Westinghouse Electeic & Manufacturing 
Company (a corporation), 

Appellee. 



BRIEF FOR APPELLEE. 



Wesley G. Carr, 
David L. Levy, 
Walter Shelton, 
Solicitors for Appellee. 



PXBNATr-WlLSB PBINTINO CO. 



INDEX 

Page 

Subject Matter 1 

Requisites of a Design Patent 2 

General Prior Art 11 

Prior Patents, Publications and Devices 13 

Alleged Failure and Abandonment of Early Devices. ... 25 

No Exclusive Right Because of Commercial Activity .... 26 

Right to Use Nickel-Chromium Wire 29 

No Infringement 30 

Infringement Test 35 

Prior Litigation 39 

Plaintiff's Position Uncertain as to Scope of Patent in 

Suit 39 

Infringement Dependent Upon Validity and Scope 40 

Conclusion 43 

Suggested Mistrial 44 



No. 3616 



United States Circuit Court ot Appeals 

For the Ninth Circuit 



Majestic Electric Development Company 

(a corporation), 

Appellant, 
vs. 

Westinghouse Electric & Manufacturing 
Company (a corporation), 

Appellee. 



BRIEF FOR APPELLEE. 



This is an appeal in a patent infringement suit in 
which the appellant was the plaintiff in the lower court. 

For convenience, the parties will be referred to here 
as the plaintiff and the defendant. 



SUBJECT MATTER. 

The basis of this suit is design letters patent No. 
51,043, granted to the plaintiff-appellant upon an appli- 
cation filed by Edmund N. Brown and purporting to 
cover a design for an electric heater casing. 



The device shown and claimed in the patent in suit is 
that which constitutes the subject-matter of the Brown 
utility patent No. 1,245,084, infringement of claim 1 
of which is alleged in a companion suit, between the 
same parties, bearing No. 3617 in this Court, and em- 
bodies, as essential elements, a heating unit, a concavo- 
convex reflector, a wire guard or cage, a supy^orting 
stand and a reflector casing having a protective flange; 
all having such structural characteristics and co-opera- 
tive relations as are dictated hy functional considera- 
tions. 

Judge Dietrich held, principally, that design patent 
No. 51043 was not infringed by defendant's device, but, 
in so doing, he expressed grave doubt as to the propriety 
of the grant of the patent, in view of the fact that the 
structure shown was, in his opinion, devoid of purely 
ornamental features. This position is in full accord with 
the law and authorities, as will be shown by the follow- 
ing review of decisions. 



REQUISITES OF A DESIGN PATENT. 

Section 4929 of the Revised Statutes of the United 
States, under the provisions of which design patents 
are granted, provides that a patent may be granted to 
anyone who has invented a new, original and ornamental 
design for an article of manufacture. It follows, as a 
matter of course, that any design for an article of manu- 
facture which lacks any one of the elements specified in 
the Statute is unpatentable. In other words, the design 
must embody invention. This is not only a requirement 



of the Statute bnt it has been emphasized by the Courts 
in construing many design patents, for example, 

"The law applicable to design patents does not 
materially differ from that in cases of mechanical 
patents, and all the regulations and provisions which 
apply to the obtaining or protection of patents for 
inventions or discoveries * * * shall apply to 
patents for designs. * * * Tq entitle a party 
to the benefit of the act, in either case, there must 
be originality, and the exercise of the inventive 
faculty. In the one, there must be novelty and 
utility; in the other originality and beauty. Mere 
mechanical skill is insufficient. There must be some- 
thing akin to genius — an effort of the brain as well 
as the hand." (Smith et al. vs. Whitman Saddle 
Company, 148 U. S. 675.) 

*'The same general principles of construction ex- 
tend to both. To entitle a party to the benefit of the 
act, in either case there must be originality and the 
exercise of the inventive faculty. In the one, there 
must be novelty and utility ; in the other, originality 
and beauty. Mere mechanical skill is insufficient. 
There must be something akin to genius — an effort 
of the brain as well as the hand." (Frank North- 
rnp et al. vs. Samuel Adams, 2 Banning & Arden 
567.) 

"The difference in the curve at the bottom is 
mio wliich would suggest itself to any workman and 
does not involve that exercise of the inventive genius 
which is as necessary to support a design patent as 
a mechanical patent." (Westinghouse Electric S 
Manufacturing Com pan jf v. Triumph Electric Com- 
pany, 97 Fed. Rep. 99.) 

"It is, of course, extremely difficult to clearly 
mark the line at which symmetry and attractiveness 
cease to be mere matters of good taste and become 
tonched with a spark of inventive genius. Indeed, 



a glance at the decisions which have sustained de- 
sign patents seems to suggest that there may be 
often more inventive genius displayed by the court 
in finding invention in design patents than the in- 
ventor disclosed in placing it there. However, the 
statute means something, and when this is compre- 
hended it is the duty of the courts to give it effect. ' ' 

"Neither that decision (Smith et al. vs. Whitman 
Saddle Company, 148 U. S. 675) nor the statute 
have, however, been modified as to the significance 
of the term invention', used in both, and it may 
be assumed that, notwithstanding the construction 
which appellant claims the courts have later placed 
upon them, that term has not become meaningless, 
and must yet be deemed the main feature to be 
taken into consideration in determining the validity 
of a design patent." {Charles Boldt Co. v. Turner 
Bros. Co., 199 F. R. 139.) 

''The question in the case at bar is not whether 
a design patent can be sustained, although each sci)a- 
rate element in the design may be old, but it is 
whether what has been done in assembling the old 
elements in the new designs rose in these particular 
cases to the level of invention. * * * To sustain 
a design patent the design must involve something 
more than mere mechanical skill. There must be in- 
vention." {Steffens et al. v. Steiner et al., 232 F. 
R., Page 862.) 

''Mere change in construction, displaying no 
originality and no added beauty, cannot be the sub- 
ject of a design patent." {R. E. Dietz Co. v. Burr 
& Starkweather Co., 243 F. R., Page 592.) 
"the test for invention is to be considered the same 
for designs as for mechanical patents; i. e., was the 
new combination within the range of the ordinary 
routine designer?" {Strause Gas and Iron Co. v. 
William M. Crane Co., 235 F. R. Page 126.) 



See also Foster v. Crossin et ah, 44 F. E. 62, Perry 
vs. Hoskins, 111 F. R. 1002 and Charles Boldt Co. vs. 
Nivison-Weiskopf Co., 194 F. R. 871. 

Furthermore, the presence of invention is not in and 
of itself sufficient because one may have invented what 
he believes to be a new design and, so far as his knowl- 
edge, at the time of exercising his inventive ability, is 
concerned, he believes himself to be an original inventor ; 
but, if it subsequently appears that the samlfe design 
was previously disclosed in patents or printed publica- 
tions or embodied in devices publicly sold and used, the 
Statute requirements of novelty and originality are 
lacking. 

Furthermore, a design may be a product of invention, 
may be new and may be original but, if it is not orna- 
mental, it lacks one of the important characteristics 
made necessary by the Statute. This requirement of the 
Statute has also been emphasized repeatedly by the 
Courts and, in this connection, attention is invited speci- 
fically to the following rulings: 

"The statute (Rev. St. 4929 (IT. S. Comp. St. 
1901, p. 3398), as amended bv Act May 9, 1902, c. 
783, 32 Stat. 193 (U. S. Comp. St. Supp. 1911, p. 
1457) ), authorizes the issue of such a patent under 
certain conditions to 'any person who has invented 
any new, original and ornamental design for an 
article of manufacture'. Hence, it appears that a 
valid design patent demands, as has uniformly been 
held, an exercise of the inventive faculty the same as 
a mechanical patent. The design, however, thus 
invented must be not only new and original, but 
ornamental. Tt must exhibit something which np- 
peals to the aesthetic faculty of the observer. Rowe 
V. Blodgett 8: Clnpp Co. 112 Fed. 61, 50 C. C. A. 



120; Williams Calk Co. v. Kemmerer, 14r3 Fed. 928, 
76 C. C. A. 466. A valid design patent does not 
necessarily result from photographing a manufac- 
tured article and filing a reproduction of such photo- 
graph properly certified in the patent office." {Rose 
Mfg. Co. V. E. A. Whitehonse Mfg. Co. et al. 201 F. 
E. 926.) 

"It is a reasonable conclusion that a device, in 
order to justify the granting of a design patent, 
must be such as to satisfy a person of ordinary 
judgment and good eyesight that it is ornamental, 
entirely independent of the character of the article 
to which it is applied. It is not enough that it 
should present in an unobtrusive form some utility 
that might otherwise be clothed in less endurable 
garb. It must disclose inventive genius — a creation 
which transcends the mere attractiveness almost 
universally availed of by dealers in every line of 
trade. That every symmetrical article should be 
made the subject of a design patent seems uncon- 
scionable. Patent monopolies are granted for the 
purpose of encouraging men of genius to place their 
mental powers at the service of the public without 
sacrifice. If every one who makes a graceful adap- 
tation of a utility to the purposes for which it is 
endured at all can secure a monopoly thereby, one 
may soon be afraid to twist a wire or whittle a 
stick, lest he infringe." {Bolte S Weyer Co. v. 
Knight Light Co., 180 Fed. Rep. Page 412.) 

"A design patent is addressed to the eye, and 
is to be judged by its ability to please. Rowe v. 
Blodgett'S Clapp Co. (C. C.) 103 Fed. 873. There 
may he no objection to the article to which it relates 
being useful as tvell as ornamental, hut the attempt 
to patent a mechanical function, under cover of a 
design, is a perversion of the privilege given by the 
statute. Rowe v. Blodgett & Clapp Co., 112 Fed. 
61, 50 C. C. A. 120; Marvel Co. v. Pearl (C. C.) 114 



Fed. 946; Eaton v. Lewis (C. C.) 115 Fed. 635." 
{Weisgerber v. Clowney, 131 Fed. Rep. 477.) (Italics 
ours.) 

"To successfully establish the validity of the de- 
sign patent, and to entitle the inventor to protec- 
tion, he must establish a result obtained, which 
indicates, not only that the design is new, but that 
it is beautiful and attractive. It must involve some- 
thing more than mere mechanical skill. There 
must be invention of design. The District Judge 
concluded that the screwdriver is beautiful and 
attractive, and he says, even ornamental. We can- 
not, however, agree that the appellee's structure, 
made pursuant to this patent, has such a pleasing 
effect imparted to the eye, as to create beauty or 
attractiveness, or to make it ornamental. It pro- 
vides for a new utility. Design patents refer to 
appearance. Their object is to encourage works 
of art and decorations which appeal to the aesthetic 
emotions — to the beautiful. We do not think that 
the device constructed by the appellee has a subject 
matter for such beauty and attractiveness as is 
contemplated by the statutes which permit the 
patent office to grant design patents, and conclude 
that the learned District Judge erroneously sus- 
tained the Patent" {E. D. Smith S Co. vs'. Peck, 
Stow S Wilcox Co. 262 F. R. 415.) 

In view of the above decisions, we contend that the 
design patent constituting the subject matter of this 
suit is invalid because every element of the device 
embodying the design is there for a useful or functional 
purpose, and the elements are so shaped and arranged 
as to insure a maximum degree of utility for the struc- 
ture as a whole. The evidence in the case is conclusive 
on this point, but, if anything additional were needed, 
the teachings of the utility patent No. 1,245,084 granted 
to the same inventor and constituting the subject matter 



8 



of the companion suit No. 3617 is amply sufficient to 
meet this requirement. 

The patentability of a design for article of manu- 
facture should be dependent, provided the design is new, 
upon whether the change in, or addition to, previously 
existing designs carries with it an improved or a differ- 
ent function, or, or. the other hand, whether change in, 
or addition to, previously existing designs changes the 
appearance in an ornamental fashion without changing 
or destroying the function previously performed. For 
example, such articles as china plates, cups, saucers, 
forks and spoons, silver, glass and china pitchers, 
tumblers, bowls, platters, etc. are susceptible of a con- 
siderable variety of patentable designs, as regards both 
form and surface ornamentation, but, in the majority of 
cases, such changes in form or surface ornamentation 
do not add to or detract from the functional possibilities, 
inasmuch as the articles are utilizable as tableware in 
the same manner and to hold articles of food and drink 
with the same efficiency, whether the design is of one 
type or kind or another. 

In the present case, every element of the heater serves 
a specific function and such elements are all combined 
to co-operate in the performance of a joint function, 
and to remove or materially alter any one of the ele- 
ments takes away just so much of the function which 
was previously performed and, to this extent, makes 
the device of less utility. 

We do not contend that a utility device may not em- 
body a patentable design, but, in the case of the patent 



in suit, there is no purely ornamental feature, and the 
form of the device, as a whole, and that of its individual 
elements are such as are dictated, not by decorative or 
ornamental considerations, but for utility reasons. 

It is not contended here that the patented design is 
devoid of ornamental quality, in the sense that it is 
repulsive in appearance, but it is contended that the 
device is not sold and is not used as an ornament. 
The purchaser selects and purchases the device solely 
because of what it will do. (See testimony of the wit- 
ness Wentworth, page 95 of the record, to the effect 
that, in purchasing a heater, he was seeking heat only.) 
In other words, the device is purely a device of utility 
and all of its parts function, both collectively and in- 
dividually, as utility elements. (See Weisgerber v. 
Clowney, supra, and Roberts v. Bennett, 136 F. R. 193.) 

It was presumably intended by the framers of Section 
4929 to provide for the granting of patents upon designs 
for articles of manufacture that are useful but, in order 
that such designs may be patentable, they must impart 
something more to the articles of manufacture which 
embody them or to which they are affixed than mere 
functional qualities or characteristics. 

The purchaser of a rug, a carpet, a roll of wall paper 
or a lighting fixture unquestionably purchases it be- 
cause it has utility and is needed to perform a useful 
function but the particular article purchased is usually 
selected because the design which it bears appeals to the 
purchaser as ornameutal. 



10 



The design is something additional to and, in a 
sense, apart from the functional qualities. For example, 
two rugs or two carpets may be of uniform quality, so 
far as their floor-covering function and resistance to 
wear are concerned, but the purchaser selects the rug ol 
the carpet having the design which appeals to him as 
the more ornamental. The same is true of wall ]iapers, 
lighting fixtures, etc. 

While the purchaser of an electric heater may not be 
entirely indifferent to its appearance, it is not selected 
and purchased because of its ornamental characteristics. 

It would be a person of extraordinary taste who would 
select and purchase a heater like that shown in the 
patent in suit solely because of its decorative value. 

The facts in the case at bar are ver}^ nearly on all 

fours with those of Ferd Messmer Mfg. Co. v. Albert 

Pick S Co. et al, 251 F. E. 894, in that a utility patent 

and a design patent covering a single structure Avere 

in suit, and the feature of the patented device for which 

novelty was claimed was embodied therein because of its 

functional utility. With reference to the design patent, 

the court said: 

"So far as the question of double patenting is 
concerned, we do not think it can arise in this case, 
for the reason that we are of the opinion that the 
design patent is not valid. The bulge in the 
patented glass cannot be said to be ornamental 
within the meaning of section 4929 of the Revised 
Statutes (Comp. St. 1916, 9475). There is nothiTiir 
in the bulge of the patented glass which would 
appeal to the esthetic emotions or to our idea of the 
beautiful. While the bulge may be new and useful, 
we cannot say that it has added anything to decora- 
tive art." 



11 



Counsel for plaintiff construes a certain statement 
made by Judge Dietrich in his opinion to mean that the 
design of an article of manufacture, in order to be 
patentable, must embody surface ornamentation. The 
court made no such ruling. What the Judge said was 
that the devices ''are entirely devoid of purely orna- 
mental features, either of form or drapery". The term 
"drapery" may perhaps be construed to mean what 
counsel for plaintiff alleges, but the word "form" has 
quite a different meaning and merely indicates that 
Judge Dietrich had in mind the recognized scope of 
Section 4929 as extending to designs for articles of 
manufacture which have ornamental novelty of form 
or configuration as well as ornamental novelty of sur- 
face ornamentation. There was clearly no misconception 
of the law in the ruling made by Judge Dietrich. 

We contend further that the design patent in suit is 
invalid for lack of novelty on account of the prior state 
of the art. Before taking up the specific prior-art 
devices, a general review of the art may be profitable. 



GENERAL PKIOK ART. 

The art of generating radiant energy and reflecting 
it in a beam of rays having some approximation to parel- 
lelism is very old, it being a matter of common knowl- 
edge that searchlights, railway-locomotive headlights 
and automobile headlights have for many years utilized 
this principle of beam reflection to project radiant 
energy along a single^ path or u]ion a single person or 



12 

object or upon a relatively small group of persons or 
objects. 

The general art of generation and projection of 
radiant energy is further exemplified by so-called flood- 
lighting which consists in projecting a beam of reflected 
light upon an object or a relatively small space which 
is to be illuminated, and this branch of the art, which 
has been practiced for a considerable number of years, 
culminated in the extraordinarily successful illumina- 
tion of the buildings of the Panama-Pacific Exposition 
in San Francisco in 1915. 

Although the rofloetion of radiant energy- in the rela- 
tions and by the means just mentioned was practiced 
for the purpose of illumination, the laws of operation 
were the same as those governing and controlling the 
radiation and projection of energy rays for the purpose 
of heating a circumscribed space or a definite object and, 
as stated by defendant's witness, Beam, the commercial 
production of light without the attendant production of 
heat has never been accomplished, (pp. 71 and 72 Rec.) 

The projection of reflected radiant energy in a beam 
for the illumination of an object or a defined space by 
a searchlight; a similar illumination of a defined and 
limited path by a locomotive or automobile headlight, 
and the projection of reflected energy rays in a beam 
to heat a person or an object are all etfected by com- 
bustion or by electrical resistance and a concavo-con- 
vex reflector. Devices pertaining to the particular 
branch of the art represented by the patent in suit are 
characterized by portability, which obviously demands 



13 



devicos of compact form and light weight in order that 
they may be moved from place to place in an office 
or a room of a residence and may be readily trans- 
ported from one office to another or from one room 
or residence to another and be so designed and con- 
structed as to be utilizable in electrical systems of dis- 
tribution the primary purpose of which is illumina- 
tion. 

By reason of the necessity for portability and utili- 
zation by connection to electric-lamp sockets, these 
devices necessarily embody, as heating units, electrical 
conductors of high resistance and concavo-convex re- 
flectors located adjacent to the heating units to reflect 
the heat rays in a single direction, and preferably em- 
body protective wire guards of some convenient form 
to prevent accidental contact with the heating units. 

Electrical heaters having the essential elements and 
characteristics just mentioned are disclosed in defend- 
ant's exhibits .E, F, G, H, I, 1, 2, 4, 5, 6, 7, 8, 
9, 10, 11, 12 and British patent 19,971 of 1913, and 
are exemplified in defendant's exhibits A, B, C, D 
and M. 

We now request consideration of these exhibits, as 
embodying elements and principles above set forth and 
also such additional features as are shown in the 
patent in suit. 



PRIOR PATENTS, PUBLICATIONS AND DEVICES. 

The Morse patent No. 881,017, granted March 3, 
1908 (defendant's exhibit F), discloses a concavo-con- 



14 



vox reflector, a heating unit supported in operative 
relation to the reflector, a pad or rim on the edge of the 
reflector and a protective cage in the form of a screen 
of coarse wire mesh or similar construction. 

It is apparent that the Morse patent, although dis- 
closing no supporting stand and embodying a heating 
element enclosed in a vacuum instead of being ex- 
posed to the air, discloses a structure which serves 
to refute any claim made by the plaintiff to the effect 
that the patented design is something broadly new in 
the art, or that there was anything new in the idea of 
projecting a lieam of heat. 

The heater shown in the Geiger patent No. 1194168 
(defendant's exhibit G), and represented by defend- 
ant's exhibit M, embodies a concavo-convex reflector, 
two heating units so located with reference to 
the reflector that the heat generated by them is re- 
flected in one direction only. In other words, the Gei- 
ger device, of which large numbers wete marketed by 
the defendant, in the days before nickel-chronium or 
other oxidization-resisting wire was available, is a 
portable electric heater having a i^olished reflector to 
project the generated heat in a single direction to heat 
a single object or person, or a small group of objects 
or persons, and, in addition, is strikingly ornamental. 

A radiant electric heater, called the ''Ferranti Fire" 
is described in defendant's exhibit No. 1, a portion of 
the description being as follows: 

"A circular bowl of polished copper which con- 
centrates and reflects the heat rays. Like the Bas- 
tian heater, the greater part of the energy is given 



15 



out as convected heat, but there is considerable ra- 
diant energy, and owing to the reflecting properties 
of the bowl this can be distinctly felt at a distance 
of many feet. It has much the appearance of a 
red-hot fire, hence its name, and its effect is much 
the same." 

The heating unit is described as 

"A closely wound spiral disk of nichrome or similar 
tape, interleaved with mica (a modified variety of 
the old Ferranti winding), and held in close con- 
tact with a circular plate of quartz glass six inches 
in diameter." 

This device, therefore, comprises a concavo-convex 
reflector and a heating unit which bears a relation to the 
reflector which corresponds substantially to the rela- 
tion of the heating unit to the reflector of the patent 
in suit. 

It is further stated that *'It would be an obvious im- 
provement to protect the disk by a suitable form of 
guard". 

The Ferranti Fire is described also in defendant's 
exhibit No. 2, a portion of the description being as fol- 
lows: 

"A new style of electric heater has lately been 
introduced in which a circular plate of quartz glass 
is caused to glow at a bright red by contact with 
a spiral resistance unit in front of which it is 
clamped. By means of a bowl-shaped copper re- 
flector surrounding the heating surface, and carried 
on trunnions, the lieat rays can be focnssed in any 
desired direction." 

and, further, 

"It would be a simple matter to ])rotect the 
heated disc by the use of a guard of expanded 



16 



metal or a wire netting with large mesh. Neither 
method need detract from the appearance of the 
heater nor reduce its efficiency, and both could be 
made detachable so that the disc could be used for 
water boiling as at present. The guard could be 
clipped round the flange which surrounds the quartz 
disc, or it could be secured to the outer edge of the 
copper reflecting hoivL" (Italics ours.) 

Defendant's exhibit No. 4 illustrates and describes 
the Ferranti Fire. Attention is specifically directed to 
a portion of the descriptive matter as follows: 

''It will be seen that the heating element is 
mounted in the centre of a polished brass or cop- 
per reflector, which, being supported on bearings, is 
capable of rotation through 180 degrees." 

and, further, 

"An ornamental ring, seen in Fig. 184 covers the 
joint between the element and the reflector, and 
secures a wire guard when necessary." 

In defendant's exhibit No. 11 appears a further de- 
scription of the Ferranti Electric Fires in which ref- 
erence is made to the large reflecting bowl, the color 
scheme of which gives an appearance of warmth, etc. 

In defendant's exhibit No. 12 is illustrated an ex- 
ample of the Ferranti Electric Fire, as to which no 
specific mention is necessary except to call attention 
to the smaller figures of the cut. 

Defendant's exhibit No. 3 embodies a cut of a device 
for generating and reflecting radiant energy that is 
primarily intended for lighting purposes. The device 
embodies, however, a concavo-convex reflector having 
a rim or bead around its edge to which is attached a 



17 



wire protective cage corresponding substantially to 
that of the patent in suit and having a heat and light- 
generating unit located in front of the reflector. 

Defendant's exhibits Nos. 5 and 7 illustrate and de- 
scribe a so-called *'Calor" electric fire comprising an 
electric heating unit and a reflector of bowl-shape 
which has a flat peripheral flange projecting from its 
edge. 

Attention is particularly directed to the cut of ex- 
hibit No. 7 designated as Fig. 3 — Pedestal Type 
''Calor Fire", especially as illustrating a device that 
embodies an electric heating unit, a concavo-convex re- 
flector having an annular member extending outwardly 
from its margin and a supporting stand of the desk 
telephone type. 

Defendant's exhibit No. 6 illustrates and describes a 
so-called *'Redglo" fire embodying an electrical heat- 
ing unit, and a bowl-shaped reflector having a sup- 
porting stand and a peripheral flange extending out- 
wardly from the edge of the curved portion of the re- 
flector. 

Defendant's exhibits Nos. 8 and 9 and British pat- 
ent No. 19,971 of 1913 illustrate and describe a radiant 
or beam heater manufactured by Simplex Conduits, 
Limited, of London, and designated as the "Plexsim" 
electric fire. 

It will be noted that the Plexsim heater is illustrated 
and described definitely and distinctly as a beam heater 
in whioh the heat is generated by a cylindrical coil of 



18 



wire and is reflected from a polished copper surface 
in approximately straight lines, as a beam. 

In defendant's exliibit No. 10 is illustrated and 
described an electric heater called ''The 'D. G.' Bowl 
Electric Fire" and comprising a heating unit and a 
reflecting copper bowl having a relatively wide flat 
marginal rim and a wire cage for preventing acci- 
dental contact with the heating unit. In the descrip- 
tive portion of the exhibit appears this statement : 

"Around the circular element is a bowl reflec- 
tor of solid copper, accidental contact with the 
glowing coils being prevented by a light grid of 
stout wire." 

Defendant's exhibit 14 discloses a device the reflec- 
tor and supporting stand of which closely resemble 
the reflector and stand of the patent in suit. Although 
the device shown in this exhibit is not a heater and has 
no casing provided with a marginal flange, it is in- 
tended to reflect energy rays. 

The device illustrated in each of Figs. 14 and 17 
of defendant's exhibit 15 embodies light and heat-gene- 
rating units, a concavo-convex reflector and a protective 
cage the ends of the wires of which are fastened to the 
rim of the reflector. 

Defendant's exhibit No. 16 contains a cut of one of 
plaintiff's No. 2 heaters, defendant's exhibit B being 
one of these heaters. 

The Shoenberg patent (defendant's exhibit I), under 
which plaintiff operates, comprises a concavo-convex 
reflector, a heating unit of the same type and form as 



19 



that of the patent in suit and supported as nearly at 
the focus of the reflector as is the unit of the patent 
in suit; the reflector is supported within, and spaced 
from, a protective casing which has a projecting flange 
or rim, and guard wires are provided the ends of 
which are attached to the flange or rim of the protec- 
tive casing (Fig. 10). 

With reference to the reflector, the specification of the 
Shoenberg patent states (p. 1, lines 48 to 53) : 

"The reflector consists preferably of a highly 
polished metal shell 1, which is somewhat hemi- 
spherical or dome-shaped and serves to reflect the 
heat waves received from the heater and direct 
them outwardly from its inner concave surface." 

The specification states further (p. 2, lines 9 to 17) : 

''The coil of the heating element is made of 
bare wire of high resistance which becomes very 
hot and I therefore provide guard wires 14, which 
cross and have their ends secured in apertures in 
the rim of the reflector. These guard wires serve 
not only to prevent any inconvenience by accidental 
contact with the hot wires, but also to protect the 
heater unit from injury." 

There is no escape from the conclusion that the 
Shoenberg patent discloses every element of the patent 
in suit, combined and operating in the same manner 
and to perform substantially the same functions, the 
only differences being that the reflector of the Shoen- 
berg patent is not exactly reproduced in the patent 
in suit, and the peripheral rims or flanges of the pro- 
tective casings are not exact duplicates. Nevertheless, 
the reflector of the Shoenberg patent is concavo-convex, 



20 



the heating unit is supported in the same relation to 
the reflector as in the patent in suit, the rim or flange 
extends outwardly from the margin of the reflector 
and the ends of the guard wires of the protective 
cage are attached to the rim or flange of the casing, 
as will be seen by reference to Fig. 10 of the drawings 
of the patent. 

In Fig. 2 of the drawings of the Shoenberg patent, 
the reflector is shown as provided with a flange or an- 
nular member having the same location and general 
relations as the flange of the patent in suit except that 
the forwardly-projecting portion or rim is wider than 
the portion projecting laterally, whereas, in the patent 
in suit, the laterally-projecting portion is materially 
wider than the forwardly-projecting portion at its 
outer edge. 

The protective cage of the patent in suit obviously 
differs from that of the Shoenberg patent in compris- 
ing a relatively large number of arched guard wires, 
but plaintiff is barred from any benefit in this regard 
because exactly this form of protective cage is em- 
bodied in each of its prior heaters 1, 2, 2B and 3, rep- 
resented by defendant's exhibits A, B, C, D and E. 

If any patentable novelty attaches to the protective 
device of the patent in suit, which defendant does not 
admit, it must reside in the specific form .and dimen- 
sions of the annular flange or rim inasmuch as the 
protective casing is found in the Warner patent No. 
1,120,003 and a protective pad or rim 2 is disclosed in 
the Morse patent No. 881,017. 



21 



It would be a more than liberal grant of credit as 
an inventor to accord to the patentee Brown the right 
to exclude others from the use of a protective annular 
flange, in view of the structure of the Morse patent 
and that of the Shoenberg patent, that of the ^'Calor" 
fire device illustrated in defendant's exhibits 5 and 
7 and that of the "Eedglo" device illustrated in de- 
fendant's exhibit 6. 

It will be noted that plaintiff's earlier heaters, rep- 
resented by defendant's exhibits A, B, C, D and E, em- 
body elements the same in number, form and location 
as those shown and described in the patent in suit, 
namely, a supporting base and standard, a concavo- 
convex reflector, an electrical-resistance coil of tubular 
form, mounted upon an insulating tube and disposed 
transversely to the axis of the reflector and in front 
of it and a wire guard or cage disposed in front of 
the heater and reflector for the purpose of protecting 
the user or anyone in proximity to the device from 
becoming burned by contact with the heater element 
or with the heated reflecting surface. 

It will ))e noted further that the Warner patent No. 
1,120,003, a copy of which constitutes defendant's ex- 
hibit H, discloses a radiant electric heater embodying 
a concavo-convex reflector, a heating unit and a pro- 
tective wire cage, all supported upon a stand of the 
familiar desk-telephone type. 

Although the reflector of the Plexsim device dis- 
closed in defendant's exhibits 8 and 9 and in British 
patent No. 19,071 of 1913 is not shown as provided with 



22 



an annular flange, the structure has all of the other 
elements of the patent in suit ^id, in the illustration 
of exhibit No. 9, the protective cage is similar to, 
though not exactly like, that of the patent in suit. 

Defendant's exhibit J was made in conformity to 
the illustration of exhibit No. 9 except that its re- 
flector was parabolically curved and provided with a 
smooth reflecting surface, in acordance with the dis- 
closure of British patent No. 19,971 of 1913, a certi- 
fied copy of which is in evidence. 

It will be noted that, in lines 20 and 21 of page 2 of 
the specification of the British patent No. 19,971, it 
is stated that the reflector may be "the frustum of a 
cone, or of parabolic configuration" and that in lines 
25 to 29, page 3, it is stated 

"We have found that a diameter at the large 
end approximately equal to the depth of the cone 
gives good results, but the cone angle may be 
greater or less than that so indicated, or the re- 
flector may be, in longitudinal section, in whole or 
in part of parabolic or the like contour, accord- 
ing to the form desired for the emergent beam of 
rays. ' ' 

Judge Dietrich made reference to Kempton British 
patent No. 12,320 of 1848 as disclosing a parabolic re- 
flector for heating purposes, gas jets being disposed in 
proper relation to such reflector in order that the heat 
produced by the burning gas might be thrown forward 
in a beam. 

Counsel for plaintiff objects to any consideration 
of the British patent just mentioned because it was not 



23 



formally offered in evidence in any of the three cases 
now on appeal in this court. This objection by counsel 
for plaintiff is purely technical, inasmuch as the three 
suits against the Westinghouse Electric & Manufactur- 
ing Company and a suit against Holbrook, Merrill & 
Stetson were tried consecutively and were all argued 
together. 

Inasmuch as Judge Dietrich prepared a single opin- 
ion for the four cases just mentioned, he naturally 
and properly made use of the exhibits without at- 
tempting to differentiate as to the specific cases in 
which they may have been formally offered in evidence. 
By so doing, he made the Kempton British patent a 
part of the instant case and this court cannot properly 
ignore it, provided it is deemed of material value, any 
more than it can ignore a matter of such common 
knowledge as to be properly subject to judicial no- 
tice, even though not represented by any exhibit or 
testimony or specifically presented by counsel for con- 
sideration of the court. In any event, this patent is 
neither vital nor essential to a decision on the validity 
or scope of the patent in suit. 

Counsel for plaintiff alleges in his brief that the 
judge of the lower court ruled that the patent in suit is 
valid. This, we deny. The judge found there was no 
infringement and, therefore, apparently held that it 
would be a superfluous matter, and one with which he 
had no concern, to go further and rule specifically that 
the patent was invalid because of anticipation. 



24 



In view of the prior Majestic devices (exemplified 
by defendant's exhibits B, C and D), the illustrations 
and descriptions of the Ferranti, Redglo, Calor and 
Plexsim devices (shown and described in defendant's 
exhibits Nos. 1, 2, 4, 5, 6, 7, 8, 9, 11 and 12), the Morse 
patent (defendant's exhibit F) ; the Warner patent (de- 
fendant's exhibit H) ; the Shoenberg patent (defend- 
ant's exhibit I), and the Porter patent (defendant's 
exhibit N), the design of the patent in suit embodies 
no novel element. 

It is true that no one of the defendant's exhibits 
discloses all of the features of the patented design 
having the same co-operative relation as is there set 
forth, but the Majestic No. 2 heater (defendant's ex- 
hibit B) embodies every such element and constitutes 
a complete anticipation except for the casing and its 
broad marginal flange surrounding the reflector. There- 
fore, no one infringes or can infringe the patent in 
suit who utilizes the elements of the Majestic No. 2 
heater, in the combination and relations which they 
have in that heater, provided he omits the only added 
feature which makes the design of the patent in suit, 
in any sense, manner or degree, new; namely, the pro- 
tective casing having the broad marginal flange. 

It must be clearly borne in mind that the patent in 
suit is limited to what is there shown, and such illus- 
tration does not include any copper-colored reflector. 
So far as the reflector is concerned, it may be white, 
black, green or any other color, and still embody i\v^ 
design of the patent in suit as effectively and as surely 
as does the polished copper reflector of the No. 7 heater. 



25 



The actual features of the plaintiff's No. 7 heater 
which serve to distinguish it from the prior heaters 
(Nos. 2, 2B and 3) manufactured and sold by the 
plaintiff are: 

1. Size, which the plaintiff admits is immaterial 
and cannot affect the patentability of the de- 
sign or its infringement. 

2. The color, which is no part of the patented de- 
sign, but is the striking feature of the device 
itself, as manufactured and sold, and serves, 
more than anything else, to impress an ob- 
server giving such attention as one ordinarily 
gives to such devices. 

The relatively large reflecting bowl of burnished cop- 
per is not only pleasing in appearance, because of its 
color, but it gives to the observer a visible impression 
of warmth to supplement the heat actually imparted 
by the reflected rays of energy. 



ALLEGED FAILURE AND ABANDONMENT OF EARLY DEVICES. 

The brief for plaintiff characterizes the Majestic 
heaters 1, 2, 3, lb, 2b and 3b, four of which are ex- 
emplified in defendant's exhibits A, B, C and D and 
three of which are illustrated in the photograph of the 
Majestic Company exhibit at the Panama-Pacific Ex- 
position, constituting defendant's exhibit E, as unsuc- 
cessful experiments and as failures. There is no evi- 
dence in the record in support of such characteriza- 
tions, and, in fact, the evidence discredits and dis- 
])roves them. 



26 



The devices which were manufactured and sold ex- 
tensively over a considerable period of time and ex- 
hibited at the Panama-Pacific Exposition as commer- 
cial products were not experiments and cannot be con- 
strued to be such, and there is no item of evidence in 
the record to the effect that the devices in question 
were unsuccessful or were failures. 

The only sense in which abandonment enters into 
the case, so far as the devices in question are con- 
cerned, is in the sense that manufacture of these ear- 
lier devices was discontinued after manufacture of 
the No. 7 device was begun. 

Public sale or use of an invention forever debars 
another subsequent inventor from securing a valid 
patent thereon, and no valid patent can be issued upon 
an application filed by the original and first inventor 
more than two years after public sale or use occurs. 

It is immaterial that heaters Nos. 1, 2, 2B and 3 
were manufactured and sold by the plaintiff, instead of 
by some other party, inasmuch as the patent in suit 
covers an alleged invention made by one Edmund N. 
Brown, who had no connection with, or relation to, the 
design of the said heaters Nos. 1, 2, 2B and 3, these 
having been manufactured and sold under Shoenberg 
patent No. 1109551. 



NO EXCLUSIYE RIGHT BECAUSE OF COMMERCIAL ACTIVITY. 

The vigorous and persistent attempt by the plain- 
tiff to establish an exclusive right to the commercial 
field occupied by radiant electric heaters of the beam 



27 



type by way of evidence as to the period and extent 
of its own commercial exploitation of its No. 7 heaters 
is unwarranted because based upon the fictitious as- 
sumption that the commercial success attendant upon 
the manufacture and sale of No. 7 heaters was due 
to the novelty and efficiency of that device and the 
further fictitious assumption that competitors of the 
plaintiff entered the field because of the popularity 
achieved by the No. 7 heater. 

If any claim for patentable novelty is to be based 
upon evidence of large sales, relationship of inven- 
tion to volume of sales must rest upon something more 
tangible than conjecture. The courts are rarely will- 
ing to accept evidence of commercial popularity as evi- 
dence of invention and will never do so unless the ques- 
tion of invention is one of grave doubt. 

On this point, the Supreme Court said, in McClain 
V. Ortmayer, 141 U. S., 419 

"That the extent to which a patented device 
has gone into use is an unsafe criterion, even of its 
actual utility, is evident from the fact that the 
general introduction of manufactured articles is 
as often affected by extensive and judicious adver- 
tising, activity in putting the goods upon the mar- 
ket and large commissions to dealers, as by the 
intrinsic merit of the articles themselves. * * * 
If the generality of sales were made the test of 
patentability, it would result that a person, by se- 
curing a patent upon some trifling variation from 
previously known methods, might, by energy in 
pushing sales, or by superiority in finishing or dec- 
orating his goods, drive competitors out of the 
market, and secure a practical mono])oly without 
in fact having mnrlo the slightest contribution of 



28 



value to the useful arts. * * * While this court 
has held in a number of cases * * * that in a 
doubtful case the fact that a patented article had 
gone into general use is evidence of its utility, it 
is not conclusive even of that; much less of its 
patentable novelty. ' ' 

The Court affirmed this ruling in Ada7ns v. Bellair 
Stamping Co., 141 U. S. 539, and Duer v. Corbin Cab- 
inet Lock Co., 149 U. S. 216, and others. The District 
Courts and Circuit Courts of Appeals throughout the 
United States have made similar rulings in many re- 
ported cases, some of which have been in this Circuit, 
Klein v. City of Seattle, 11 F. R. 200; American Sales 
Book Co. et al. v. Bullivant, 111 F. R. 1^55, and Hijde v. 
Minerals Separation, Limited, et al., 214 F. R. 100, 
being notable examples. 

In view of the general recognition given by the courts 
to the principle enunciated by the Supreme Court in 
McClain v. Orimayer, supra, further citations from the 
many published opinions appear to be unnecessary. 

As a matter of fact, the commercial use of plaintiff.'s 
No. 7 heater was due to extensive advertising, both by 
the plaintiff and by its competitors, as shown by the 
testimony of the inventor, Brown, himself, in the com- 
panion case No. 3617, pages 118 and 119 of the record, 
and to the fact that the No. 7 heater was made larger 
than its predecessors, and that the reflecting bowl, be- 
ing of burnished copper, was more striking and at- 
tractive in appearance. 

In addition, the exploitation of the No. 7 heater was 
substantially coincident in point of time with the free- 



29 



ing of the plaintiff from restriction of its activities by 
the obtaining of a license under the Marsh patent on 
nickel-chromium wire, as set forth in the following par- 
agraphs : 



RIGHT TO UTILIZE NICKEL-CHROMIIM WIRE. 

The record in this case shows that wire composed 
mainly of nickel-chromium alloy is the only available 
material which can be utilized to operate at an incan- 
descent temperature in the open air without destruc- 
tion or rapid deterioration, and that this material is 
covered by a certain Marsh patent under which all 
manufacturers of electrical heating devices and ap- 
paratus are operating as licensees. 

Although the Nos. 1, 2, 2B and 3 heaters manufac- 
tured and exploited by the plaintiff prior to the pro- 
duction of its No. 7 heater embodied heating units 
which constituted infringements of the Marsh patent, 
during the period of manufacture and sale of these 
earlier heating devices, the Marsh patent was in process 
of litigation against the General Electric Company. 
Shortly after the termination of the litigation, which 
resulted in sustaining the patent, the plaintiff secured 
a license and, at about that time or very shortly there- 
after, it began the manufacture and exploitation of its 
No. 7 heaters. 

It is also of record that the defendant undertook the 
exploitation of its heater which is involved in the 
present suit as soon as it could do so after securing a 
license under the Marsh patent. 



30 



The allegation has been made that suitable material 
other than the so-called nichrome wire was available, 
and specific mention has been made of a material 
known to the trade as "Excello" wire. This allegation 
is true, so far as availability of material prior to the 
final decision in the suit based upon the Marsh patent 
is concerned, but it is without significance by reason 
of the fact that excello wire is a nickel-chromium alloy 
and is, therefore, an infringing material, (pp. 67 and 
125 Rec.) 

The fact that the plaintiff was willing to incur the 
risk incident to using nickel-chromium wire in its ear- 
lier heaters, prior to a final adjudication of the Marsh 
patent, may not properly be utilized as a basis for at- 
tack upon other manufacturers who did not care to 
incur such risk. 

The substantial coincidence, in time, of the issuance 
of licnses under the sustained Marsh patent and the 
manufacture and exploitation of radiant or beam heat- 
ers by various, manufacturers, including the increased 
exploitation by plaintiff, disposes of the contention on 
the part of the plaintiff that its No. 7 heaters estab- 
lished for it a commanding position in the field be- 
cause embodying a pioneer invention. 



NO INFRINGEMENT. 

It has been clearly and definitely shown that, not- 
withstanding the contentions on the part of the plain- 
tiff that the patent in suit is entitled to a broad inter- 
pretation of such character as is accorded to one cover- 



31 



ing a pioneer invention, the only features added by 
Brown to heaters Nos. 1, 2, 2B and 3 were a slight 
modification in the curvature of the reflector and the 
addition of a protective casing having an annular pro- 
tective flange projecting laterally from its rim. 

The supplemental protective casing is disclosed in 
the Warner patent, and a protective rim in the Morse 
patent and, also, in the Shoenberg patent. 

The defendant's structure obviously embodies a 
concavo-convex reflector, a heating unit supported in 
front of said reflector and a protective cage having 
guard wires the ends of which are attached to the mar- 
gin or rim of the reflector, but the device has no annular 
member extending outwardly from the margin of the 
reflector. 

The designers of the defendant's heater secured all 
of the essential elements incorporated in the heater 
from the prior art which was also available to Brown 
when he made the alleged invention of the patent in 
suit. 

Defendant's device is shown and described in British 
patent No. 19,971 of 1913, and in defendant's exhibit 
9, except as regards the form of the reflector and that 
of the protective cage. 

It will be noted that the supporting member of the 
defendant's device embodies a base having a frame of 
U-shape between the arms of which the reflector is 
mounted upon trunnions and that these parts corre- 
spond closely to like parts in the British patent. 



32 



It is to be noted, further, that, in the defendant's 
device, the heating unit comprises a supporting rod, 
an insulating cylinder on such rod and a coil of re- 
sistance wire disposed on the insulating cylinder, and 
that this unit is mounted in the axis of the reflector. 

Corresponding parts, which differ only as regards 
the length of the unit, are disclosed in the British 
patent. 

It is to be noted, further, that a more or less defi- 
nite relation between the length of the heating unit 
and the depth of the reflector exists and, consequently, 
inasmuch as the designers of the defendant's heater 
elected to use a reflector of the form shown in the War- 
ner patent (defendant's exhibit H), they necessarily 
utilized a heating unit the length of which conforms to 
the depth of the Warner reflector. 

The protective cage of the British patent was re- 
jected as less desirable than other forms known in the 
prior art and, consequently, substantially the form of 
that shown in the Porter patent No. 684,459 of October 
15, 1901, (defendant's exhibit N) was adopted. 

Or it may be assumed that the designers of the 
Westinghouse heater had knowledge of the specific 
cage shown in defendant's exhibit 16, which was ob- 
viously available to anyone desiring to make use of 
that specific form of protective cage. The device shown 
in exhibit No. 16 is the Majestic Company No. 2 heater, 
as exemplified in defendant's exhibit B, the design of 
which had been abandoned to the public by commer- 



33 



cial oxploitation prior to the advent of plaintiff's No. 
7 heater. • 

As has already been noted, the design of the patent 
in suit is characterized by a reflector casing of bowl- 
shape having a broad, flat, peripheral flange and sup- 
ported upon a stand of the well-known desk-telephone 
type, a cylindrical heating unit, supported in front of 
the reflector, with its major axis at right angles to the 
axis of the reflector and a protective cage of bowl-shape 
composed of wares the ends of which are attached to the 
outer edge of the annular flange with which the re- 
flector-bowl casing is provided. These several devices 
are combined to constitute an electric heater of a type 
generally well knowTi in the art. 

The design, as embodied in the plaintiff's No. 7 
heater, does not differ from that shown in the patent 
in suit except in one striking particular, namely, the 
reflecting bowl and the face of the peripheral flange 
are of burnished copper. 

Defendant's heater embodies elements the number 
and general co-operative relation of which are the same 
as in the plaintiff's heater except that its reflector has 
no peripheral flange or double casing and its heating 
unit is disposed in the longitudinal axis of the reflector 
instead of at right angles thereto. 

Another striking difference between the defendant's 
heater and that of the patent in suit, is the supporting 
stand, which comprises a base and a frame of U-shape, 
between the upper (>n(ls of which the reflector is pivot- 
allv nioini1(Ml in ordei- tliat it mav lie tilted. 



34 



Plaintiff's counsel attempts to overcome this point 
of differentiation "by stating that the pivotal mounting 
cannot be seen from the front of the heater, but, in 
doing so, he ignores the fact that Fig. 2 of the patent 
drawing is a side view showing the mounting of the 
casing on its pedestal and accentuating the structure 
from which defendant's device is distinguished by its 
own peculiar form of support. 

The defendant's heater resembles the plaintiff's 
heater only because they both embody the same num- 
ber of main elements or features having the same gen- 
eral arrangement and substantially the same color. 

All human beings, if normal, have the same number 
and general arrangement of features and, if belonging 
to the same race, they have color resemblance as well 
but they are not often mistaken one for another be- 
cause of these facts, even though the examination 
given is merely casual. 

The possibility of mistaking the one device for the 
other if not placed side by side and compared, pro- 
vided such possibility actually exists, is obviously due 
to two features, and to two features only, viz, the gen- 
eral form, which obtains because the function to be 
performed demands it, and the polished copper reflect- 
ing bowl which is not disclosed in the design patent 
in suit and, if it could ever have been covered by a 
patent, was old and in use long before the production 
of the patented design. (See defendant's exhibits 1, 
2, 4, 5, 6, 7, 8, 9, 10, 11, 12 and M and British patent 
No. 19,971 of 1918.) 



35 



INFRINGEMENT TEST. 

Counsel for plaintifT quotes, from the well-known 
Gorliam vs. White decision by the Supreme Court, the 
rule for determining infringement of a design as the 
sameness of appearance to the eye of an ordinary ob- 
server giving such attention as a purchaser usually 
gives, and, as to this rule we take no exception, but 
we do except to the application made by counsel for 
plaintiff in the present case. 

The defendant has been engaged in the manufacture 
and sale of heaters like plaintiff's exhibit No. 5 since 
the latter part of the year 1918 or the early part of 
the year 1919 and, during that period, it had unques- 
tionably sold a very large number of such heaters. 
Wliether that number be thousands, tens of thousands 
or hundreds of thousands, is not of record and is not 
material. Whatever may have been the number of 
sales, the plaintiff will undoubtedly admit that such 
number is large. Notwithstanding such large sales as 
must have occurred, the only evidence for use in ap- 
plying the Gorham vs. White rule of infringement which 
the plaintiff offers in this case is the testimony of two 
of its witnesses and that of one witness testifying un- 
der subpoena for the defendant. 

In this connection, it is pertinent to examine with 
some degree of particularity the testimony of the wit- 
nesses just mentioned. 

First. Mrs. Lebatt, a friend of Mr. Brown, Presi- 
dent of the iilaintiff company, and not a purchaser or 
a prospective ])urc]iaser, testified that, when walking 



36 



along the street slie saw a heater on exhibition which 
she assumed to be one of Mr. Brown's heaters, but 
noted that the heating element was disposed in a man- 
ner which differed from that of the element in the 
heater with which she was familiar. Upon re-examin- 
ing the device with more care, she noted upon it the 
name "Westinghouse", but, until she noticed this 
name, she assumed it to be one of Mr. Brown's heaters 
with the element changed. 

Mrs. Lebatt, although not an expert in electrical 
heating devices, was apparently familiar with Majestic 
heaters and no others, although she testified that she 
had seen a Hotpoint heater, which she did not mistake 
for a Majestic heater. It is notable that the witness did 
not mistake the Hotpoint heater for a Majestic heater, 
inasmuch as its heating element was of the same shape 
and disposed in the same manner as that of the Ma- 
jestic. 

The witness was not deceived, but, even if she had 
been, the test was not fair and reasonable because the 
inspection given to the Westinghouse device prior to 
her discovery that it bore the name Westinghouse was 
the casual glance of a passer-by on the street, instead 
of an inspection such as a purchaser usually gives. 

The witness Hiller is the manager of the Boesch 
Lamp Company, which manufactures all of the parts 
of plaintiff's heaters except the electrical parts, and, 
consequently, as a business associate of Brown and 
an expert, could competently testify only with refer- 



37 



ence to his experiences with purchasers, or those occu- 
pying similar relations to him. 

Mr. Hiller first testified to an incident with reference 
to the owner of certain electrical heaters, one G. L. 
Wentworth, who, according to Mr. Hiller, stated, that 
he had one of his ( Hiller 's) heaters upstairs, and that, 
upon inspection, the heater in question proved to be a 
Westinghouse heater. 

Mr. Wentworth, testifying for the defendant under 
subpoena, stated that the heater in question was pur- 
chased for him by a clerk who was given no instruc- 
tions as to the kind of heater to purchase, and that 
when the heater was installed and thereafter until the 
date of the incident respecting which Hiller testified, 
he had paid no attention to the heater in question and 
had no knowledge as to who manufactured it and no 
interest in its source or origin. 

The testimony of Hiller and Wentworth with refer- 
ence to the Westinghouse heater purchased and in- 
stalled for the latter and used by him has no signifi- 
cance in tliis case, because the purchaser, Wentworth, 
not only did not give "such attention as a purchaser 
usually gives", but gave no attention whatever and 
did not even examine the device. 

The witness Hiller testifies further to the effect that 
he was told by an owner of two heaters in Sacramento 
that they were out of order and, upon inspecting them, 
he, Hiller, found that they were not Majestic heaters. 
Upon further examination, he admitted that they were 



38 



Hotpoint heaters and they, therefore, have no signifi- 
cance in the instant case. 

Hiller testified further that, at intervals, heaters 
made by manufacturers other than the Majestic Com- 
pany were occasionally brought to his company for re- 
pairs. He assumed, for the purpose of this case, that 
such heaters were brought to his company under the 
supposition that they were manufactured by it. We 
submit that an assumption having at least as much 
basis to support it is that those bringing or sending 
heaters to the Boesch Lamp Company for repair did 
so because that company was known to be in a line of 
business which would naturally and properly enable it 
to make repairs upon devices of this character. 

This testimony falls far short of even indicating, 
much less establishing, such deception as proves or 
even indicates that the Westinghouse design is like that 
of the patent in suit. 

Inasmuch as proof of infringement was vital in the 
plaintiff's case and the best evidence of infringement 
is the testimony of witnesses who may be classed as 
ordinary observers giving such attention as a pur- 
chaser usually gives, it is a sad commentary on the de- 
fendant's case that, out of thousands, and probably 
hundreds of thousands, of sales of Westinghouse heat- 
ers, which plaintiff alleges infringe the patent in suit, 
it was possible for plaintiff to offer the testimony of 
only two witnesses, neither of whom was disinterested 
or — so far as the record shows — had purchased a 
Westinghouse heater or a Majestic heater or had over 



39 



contemplated making any such purchase, and is fur- 
ther forced to the extreme of relying upon the testi- 
mony of a witness testifying for the defendant and who, 
although a purchaser of a Westinghouse heater, did 
not know or care whether it was a Westinghouse 
heater or one of some other manufacture until his at- 
tention was specifically called to it some weeks or 
months after its purchase and during whic-h time it 
had been in regular daily use. 



PRIOR LITIGATION. 

Plaintiff's brief makes mention of certain prior suits 
by it against certain agents of the Hotpoint Electric 
Heating Company in which a verdict in favor of plain- 
tiff was rendered by a jury. Although a writ of error 
was sued out in each of the actions in question, the 
matter was not prosecuted to final hearing in the 
Court of Appeals and, consequently, such litigation has 
no significance in this proceeding. Even though deci- 
sions in favor of the plaintiff had been rendered by 
the Circuit Court of Appeals, such decisions would 
have had no binding effect in the instant case because 
the subject matter constituting the alleged infringe- 
ment here is materially different from that constituting 
the alleged infringement in each of the prior suits. 



PLAINTIFF'S POSITION I NCERTAIN AS TO SCOPE OF PATENT 

IN SUIT. 

Plaintiff's counsel devotes several pages of his brief 

to urging and demonstrating that the subject matter 



40 



of the patent in snit is the entire structure shown in 
the patent drawing, and then apparently seeks to es- 
tablish a different state of facts by alleging, in a sin- 
gle brief paragraph on page 42, that the heater ele- 
ment is no part of the design, this allegation being ap- 
parently based on the fact that the patent bears, as its 
title a "Design for an electric heater casing". 

Either construction is fatal to plaintiff's case. If 
the heating unit is a part of the design, defendant's 
device does not infringe. If the heating unit is not a 
part of the design, the patent is fully and clearly antici- 
pated. Furthermore, if the terms "heater casing" 
mean something less than the entire device, plaintiff 
does not tell us how much less and we cannot otherwise 
know. 



INFRINGEMENT DEPENDENT UPON VALIDITY AND SCOPE. 

Respecting the question of infringement, as we have 
already noted, that resemblance which deceives or 
tends to deceive an ordinary observer giving such at- 
tention as a purchaser usually gives, has not been 
proved, but, apart from the testimony of witnesses, the 
only resemblance between the design of the defendant's 
device and that of the patent in suit which could other- 
wise support a finding of infringement, is swept away 
by the prior art. If there were no prior art, it might 
be permissible to hold that such deviation from the 
patented design as that found in the arrangement of 
the heating unit, the omission of the broad marginal 
flange and the casing of which it constitutes a part, and 



41 



tlie different form of supporting frame, should not be 
accepted as establishing non-infringement, but before 
infringement can be found and decreed the validity of 
the patent in suit must be established. 

Assuming, without admitting, that the patent in suit 
is valid, the infringement test must be that applied in 
Kruittschnitt v. Simmons et al., 118 F. R. 851, as fol- 
lows : 

"The attention of the public is not primarily 
or necessarily called to the specific design, but to 
the bordered aluminum sign plates as a new arti- 
cle of manufacture. Consequently, when the de- 
fendant's manufactured bordered aluminum signs 
having patterns diifering so widely from the pat- 
ented design as not to infringe the same, they were 
purchased by persons who supposed they were 
getting plaintiff's design, or who, at least, failed 
to distinguish the difference between them. Coun- 
sel for plaintiff, therefore, invokes the application 
of the familiar test, — 'the eye of the ordinary ob- 
server, giving such attention as a purchaser usu- 
ally gives.' 

For the reasons already stated, this test can- 
not be applied in this case without doing violence 
to the fundamental law of infringement — that in 
order to constitute infringement there must be an 
appropriation of the novel elements of the patented 
design. Because such aluminum signs are new, 
the purchasing public may mistake defendants' 
design, which every one has a right to make, for 
the design which only the plaintiff has the right 
to make. But the defendants cannot be deprived of 
their common right. The plaintiff, then, must be 
limited in such test to configurations which appro- 
priate his design." 

In this case the facts were obviously more favorable 
for the plaintiff than are those in the case at bar, in 



42 



which the border flange of the patent in suit has not 
been either appropriated or replaced by an equivalent 
element. 

Another case of great persuasive value, if not of 
controlling importance as regards the question of in- 
fringement, is that of Grelle et al. v. City of Eugene, 
Or., et al., decided in this Circuit and reported in 221 
F. R. 68. In this case, the Court of Appeals said: 

"In the nature of things, lamp posts manufac- 
tured for use in city streets must possess many 
features in common. In general form they must 
of necessity be somewhat the same. As stated by 
one of the defendants ' experts : 

'There is not much chance for originality. The 
only chance for originality the designer has in 
designing a post is in the detail.' 
There is an additional reason why the defend- 
ants' post should not be held to be an infringe- 
ment of the Grelle patent. In the decisions which 
we have cited there were involved alleged infringe- 
ments of design patents for silverware, ornaments, 
dishes, lamp shades, and similar articles. There 
is this distinction between such cases and the case 
at bar. In those cases the object and purpose of 
the specific design was to excel in artistry and 
ornamentation. In the present case it appears 
from the record that the object of the defendants 
in adopting the design of post claimed to infringe 
the Grelle patent was a practical one." 

(See also Zidell v. Dexter, 262 F. R. 145, and 
Crane and Breed, Mfg. Co. v. Elgin Silver 
Plate Co., 268 F. R. 543.) 



43 



CONCLUSION. 

It is submitted, in conclusion, that the plaintiff-appel- 
lant has brought to this Court a cause of action which 
has no basis in equity — 

1st. Because the design of the patent in suit em- 
bodies only what was taken from a well developed prior 
art and is therefore devoid of invention. 

2nd. Because every element of the device shown in 
the patent in suit has a functional purpose and char- 
acteristic and no other and that no part of the struc- 
ture could be omitted so modified as to materially 
change the design without omitting or materially 
changing such functional characteristic, and, therefore, 
the design is not "ornamental" within the meaning of 
Section 4929, R. S. U .S. 

3rd. Because the wide marginal flange, which sur- 
rounds the reflector of the plaintiff's design and con- 
stitutes a striking and important feature of it has no 
counterpart or equivalent in defendant's design. 

4th. Because the relation of the heating unit to 
the reflector in defendant's heater differs so radically 
from that of the corresponding elements of the pat- 
ented design as to establish non-infringement, the dif- 
ference being such as to make an instant and striking 
impression upon the sight and mind of one of plaintiff's 
own witnesses. 

5th. Because the supporting member of defendant's 
heater is so strikingly different from that of plaintiff's 
heater that the most casual observer, if possessed of 
normal intelligence and power of vision, could not mis- 
take the one for the other. 



44 



6th. Because every element of defendant's design 
and the design as a whole were taken from the prior 
art and, therefore, could not have been taken from the 
plaintiff's patent unless it constituted the medium 
through which the information was transmitted. 



SUGGESTED MISTRIAL. 

Appellant suggests a mistrial and consequent in- 
validity of the decree upon three grounds: 

1. That Judge Dietrich decided the case and wrote 
his opinion while in the State of Idaho. 

2. That Judge Dietrich performed these acts on 
October 4, 1920, subsequent to the expiration of the 
period during which he was designated to hold court. 

3. That the decree was signed by Judge Bean, who 
did not decide the case. 

The first answer, applicable to all these contentions, 
is that appellant must be deemed to have waived any 
possible error and is estopped to urge error because 
of appellant's failure to raise these objections before 
the entry of the decree and because of the fact that 
counsel for appellant himself prepared the decree and 
procured Judge Bean to sign it. Upon well settled 
principles, appellant cannot complain of a proceeding 
which it has induced and for which it is responsible. 

WUpkeAj V. Nicholas, 34 S. E. 751 (W. Va.); 

City of Oakland v. Hart, 129 Cal. 98; 

Madden v. McKenzie, 144 Fed. 64 (C. C. A. 9th 
Cir.) ; 

Ellington v. State, 123 Pac. 186 (Okla.). 



45 



There are further answers to each specification of 
mistrial. 

1. There is nothing in the record to support appel- 
lant's statement that Judge Dietrich decided the case 
or took any other action while in Idaho. This is a 
gratuitous assumption on the part of appellant. 

2. The decree contradicts appellant's statement that 
the case was decided and the opinion written on Oc- 
tober 4, 1920. The decree declares: 

"and thereupon after consideration thereof it was, 
on the 4th day of September, 1920, ordered that 
the bill of complaint be dismissed with costs to 
defendant, and that a decree be signed, filed and 
entered accordingly." (Transcript, p. 36.) 

Thus, it appears on the face of the decree that Judge 
Dietrich decided that case and completed his judicial 
function in September in strict conformity to the or- 
der of designation. 

It is well settled that a recital in the decree is con- 
clusive in support of its validity. But even if we look 
elsewhere in the record we find nothing to contradict 
the recital that the case was decided on September 4, 
1920. It is true that there is in the record evidence to 
the effect that the opinion of Judge Dietrich was filed 
on October 4, 1920. This is found in the filing mark on 
the opinion (Tr. p. 35) and the recital in the clerk's 
minute order entered on the filing of the opinion. (Tr. 
p. 19.) 

There is no necessary conflict here. The record 
would merely indicate that the opinion was written 



46 



and the cause decided in September, but that the opin- 
ion was not actually filed until October 4. This does 
not militate against the conclusion that Judge Dietrich 
had completed his task in September. 

But, even assuming that there is a conflict between 
the recital in the decree that the order for dismissal 
was made in September and the recitals elsewhere in 
the record that such order was made in October, this 
conflict will be resolved so as to uphold the decree. The 
Court will not indulge in the contrary view for the 
purpose of accomplishing a reversal. 

In Western Union Tel. Co. v. Jackson, 46 S. W. 279 
(Tex.), it was held: 

"The trial court's conclusions of fact and law 
are marked filed, five days after the court ad- 
journed for the term ; and it is contended that they 
should not be considered, and error is assigiied upon 
the alleged failure of the court to file such conclu- 
sions before the court adjourned. If it be con- 
ceded that the conclusions of fact and law could not 
be properly filed after the court adjourned for the 
term, still no ground for reversal is showm. The 
concluding part of the judgment is in these words : 
"Thereupon, on the request of defendant, the court 
filed his conclusions of law and facts; and, the 
same having been done, the defendant, in open 
court, excepts." The judgment was rendered on 
the 28th day of October, 1897, which was three 
days before the court adjourned; and the solemn 
declaration made by the court, and incorporated 
in the judgment, to the effect that the conclusions 
of law and fact were then filed, should override 
and control the file mark indorsed upon the find- 
ings by the clerk." (Page 280.) 



47 



In Conrad v. Baldwin, 3 Iowa, 207, it was held: 

"The record leaves it doubtful when the defend- 
ant's answer was filed. At one time stating it to 
be on the 8th — at another, on the 16tli of April. 
Under such circumstances, we will presume it to 
have been filed on the day first named, for on this 
hypothesis, the action of the court below is clearly 
correct; and every presumption should be given in 
favor of such .action. When a record presents 
conflicting dates as to any fact in a case, being 
governed by one of which, we would find error, 
w^hile by the other, there would be no error, we 
should be guided by the one which will sustain 
the judgment below" (pp. 208-9). 

To the same effect: 

Davis V. Lezinslcy, 93 Cal. 126. 

As to the rule of presumption in favor of the validity 
of the decree, see: 

The Alaska, 35 Fed. 555; 
Weichen v. U. S., 262 Fed. 941; 
Stockslager v. U. S., 116 Fed. 590 (C. C. A. 9th 
Circ.) 

In conclusion, on this point, the order designating 
Judge Dietrich to hold court during August and Sep- 
tember conferred authority on him to decide there- 
after a cause which had been tried and submitted to 
him during the designated period. 

The validity of judicial acts performed at times and 
under conditions not covered by express authorization 
is fully considered in Shore v. Splain, 258 Fed. 150, and 
the conclusion reached in that ease is based upon prin- 
ciples of law and decisions that are controlling here. 



48 



In the case cited, Judge McMahon, a municipal court 
judge, was designated to act as judge of the police 
court pursuant to the act of Congress of February 17, 
1909. The designation authorized Judge McMahon "to 
discharge the duties of either of the judges of the po- 
lice court during their sickness, vacation or disability". 
Shore was tried and convicted by Judge McMahon. On 
the day of sentence, the two police court judges were 
in court discharging their duties. In upholding the 
sentence the Court of Appeals quotes from Fisher v. 
Puget Sound Brick Co., 76 Pac. 107 (Wash.) as fol- 
lows : 

"That the return of the regular judge would not 
oust the special judge of jurisdiction to try and 
finally dispose of any case begun before him." 

The Court of Appeals concludes : 

"Between the submission of a case and its final 
disposition weeks may intervene, and if during that 
period the justice whose place the additional jus- 
tice had taken must remain away from the court, 
although ready to act, it would greatly impede the 
dispatch of the public business here." 

In Roberts v. Wessmger, 48 S. E. 248 (S. C), a spe- 
cial judge was commissioned to hold court for an extra 
term ending November 28, 1903. The cause was heard 
and submitted to him on the last day of the term, and 
he then returned to his home where, several days later, 
he wrote the decree. He then forwarded it to the 
court for filing. On appeal it was objected that his 
jurisdiction was at an end at the expiration of the time 
mentioned in his commission. This contention was re- 
jected and the decree upheld. 



49 



3. The signing of the decree was a purely minis- 
terial act properly performed by the judge, who at the 
time was presiding in the court. It called for no ex- 
ercise of discretion and for no judicial consideration 
of the issues of fact or of law. It was a pro forma 
proceeding in which it was unnecessary for the judge 
who had tried the case to participate. 

In Montgomery v. Viers, 114 S. W. 251, it was held: 

"The entry of the judgment is the act of the 
clerk; its signature the act of the judge. But it is 
not an act involving the exercise of discretion. It 
is ministerial, and, if there appears no good rea- 
son to the contrary, the judge may be compelled 
to sign a record which in law it was his duty to 
sign unconditionally. The judgment which was 
rendered (if one was) was the act of the court. 
Its recordation having been complete, as it is al- 
leged it was, it remained only for the judge to 
sign it. Having died before signing it, the act 
loses none of its efficacy so far as it had gone; the 
matter had none the less passed into judgment. 
The suggestion that the respondent may not have 
such personal knowledare of what originally trans- 
pired as to warrant his accepting the entry as 
true is unsound. The personal recollection of the 
judge, though it may be exercised in approving 
the record orieinally, as the statute implies it 
may be, is rarely, if ever, resorted to to supply 
evidence even in aid of the record evidence in 
entering a judgment nunc pro tunc. If, then, the 
former judge could not properly have called his 
personal recollection of the matter to his aid in de- 
termining what judgment had been previously 
rendered, but would have been required to look 
nlone to the files and record of the suit, what dif- 
ference can there be that another is required to 
do the snme, no more nor less? The present offi- 
cial can exnmine the record. He can see whether 
it imports n regulnr entry, and whether it is writ- 



50 



ten by the clerk who recorded the other entries of 
the time. He can see whether the summons had 
been served in due season, or whether the record 
shows that the defendants had appeared. He may 
examine the minute book and docket of the court. 
And from all these sources of record evidence can 
determine whether the .iudgment is correctly en- 
tered, and thereupon sign it, or though not en- 
tered, to enter it now for then, thereby securing the 
plaintiff in such rights as legally accrued to him 
by its virtue but for the omission complained of 
by which the record was not formally completed." 

In Ruckman v. Decker, 27 N. J. Eq. 244, Chan- 
cellor Zabriskie filed his opinion on February 13, 
1873. A decree signed by his successor in office, and 
filed June 11, 1873, was upheld. 

See also Grhn v. Kessing, 89 Cal. 478, 489. 

Objections of the character now under discussion are 
not here presented for the first time. In Stead v. Cur- 
tis, 205 Fed. 439, the petition for rehearing raised every 
conceivable contention against the authority of Judge 
Dietrich to act as a member of this Circuit Court of 
Appeals pursuant to an order designating him to sit 
for the February, 1913, term. But the petition was 
denied without opinion. The same points were urged 
in a petition to the United States Supreme Court for 
writ of certiorari and there met the same fate. (234 U. 
S. 759.) 

Wherefore, it is submitted that the decree of the 
District Court should be affirmed. 

Dated, San Francisco, 



March 5, 1921. 



Wesley G. Carr, 
David L. Levy, 
Walter Shelton, 
Solicitors for Appellee. 



Nos. 3616, 3617 and 3618 

IN THE 

United States Circuit Court of Appeals 

For the Ninth Circuit 



Majjsstic Electric Development Company, 

Plaintiff and Appellant, 
vs. 

Westinghouse Electeic & Manueactueing 
Company, 



Defendant and Appellee. 



BRIEF ON BEHALF OF HOLBROOK, MERRILL 
& STETSON AS AMICI CURIAE. 



Nathan Heard, 
Samuel Knight, 

Knight, Boland, Hutchinson & Christin, 
Of Counsel for Holhrook, Merrill S Stetson, 
Amici Curiae. 



Pehnau-wai.sh Pbintino Co. 



Index. 

Page 

Statement of the Case 1 

A Separate Consideration of the Three Appeals is not 

Equitable 3 

The Mechanical Patent 1,245,084 and the Design Patent 

51,043 are Directed to Precisely the Same Device 4 

The Mechanical Patent 1,245,084 6 

The Beam Heater Idea 10 

The Prior Warner Heater 12 

The Prior Kempton Heater 14 

The Prior Morse Heater J5 

The Prior Ferranti Heater 16 

The Prior Calor Heater 17 

The Prior Plexsim Heater 18 

The Prior R^dglo Heater 21 

Summary as to These Prior Heaters 21 

The Prior Majestic or Shoenberg- Heater 22 

The Lighting Art 26 

A Flange versus a Bead 27 

The Attempt to Give Support to the Patents Because of 

Considerable Commercial Success 28 

The Rule of Law for Testing Infringement of a Design 

Patent 32 

Novelty and Invention are Essential to a Design Patent.. 33 

The Attempt to Confuse with the Design Features Which 

Can Form No Part Thereof 40 

The Relation of the TTenting Element to the Design 45 

The Second Design Patent No. 51.253 48 

In Conclusion 50 



Authorities Cited. 



Page 



Backstay Machine & Leather Co. v. Hamilton, 262 Fed, 

411 37 

Bolte & Weyer Co. v. Knight Light Co., 180 Fed. 412 35 

Ferd Messmer Mfg. Co. v. Albert Pick & Co. et al, 251 

Fed. 894 5 

Gorham v. White, 14 Wall. 511 32 

Grelle v. City of Eugene, 221 Fed. 68 43 

Hammond v. Stockton Works, 70 Fed. 716 33 

H. D. Smith & Co. v. Peck, Stow & Wilcox Co., 262 Fed. 

415 38 

Kruttschnitt v. Simmons, 118 Fed. 851 43 

Kruttschnitt v. Simmons, 122 Fed. 1020 43 

Myers v. Stirnheim, 97 Fed. 625 34 

Northrup v. Adams, 2 Bann. and Arden 567 34 

Roberts v. Bennett, 136 Fed. 193 39 

Rose Mfg. Co. V, Whitehouse Mfg. Co., 201 Fed. 926 36 

Rose Mfg. Co. V. Whitehouse Mfg Co., 208 Fed. 564 36 

Rowe V. Blodgett, 112 Fed. 61 48 

Soehner v. Favorite, 84 Fed. 182 44 

Zidell V. Dexter, 262 Fed. 145 44 



Nos. 3616, 3617 and 3618 

IN THE 

United States Circuit Court of Appeals 

For the Ninth Circuit 



Majestic Electric Development Company, 

Plaintiff and Appellant, 

vs. 

Westinghouse Electric & Manufacturing 
Company, 



Defendant and Appellee. 



BRIEF ON BEHALF OF HOLBROOK, MERRILL 
& STETSON AS AMICI CURIAE. 



Statement of the Case. 

The plaintiff appellant has involved in this litigation 
a mechanical patent 1,245,084, granted October 30, 1917, 
and two design patents, 51,043 granted July 17, 1917, 
and 51,253 granted September 11, 1917. 

Three separate suits were brought by the plaintiff 
against the Westinghouse Company, one on each of 
these three patents, and each suit charging the same 
device manufactured and sold by the Westinghouse 
Company as an infringment. These separate appeals 
are taken in these three cases. 



The plaintiff brought a further suit against Holbrook, 
Merrill and Stetson upon the mechanical patent 1,254,- 
084, and the design patent 51,043 involving both of 
these patents in the same suit. 

These four suits were all tried at the same time 
before Judge Dietrich, and were all decided adversely 
to the plaintiff in a single opinion entitled in all the 
four cases. 

Before the conclusion of the trial, the plaintiff filed 
a fifth suit in the same court against Holbrook, Mer- 
rill & Stetson charging infringement of the second 
design patent 51,253, the pleadings have been closed, 
a stipulation agreed to that the same evidence taken 
in the other four suits may be used in the fifth suit, 
and the trial of this fifth suit is awaiting the outcome 
of the present appeal. 

The plaintiff has taken the three appeals here before 
this court on the three cases involving the Westing- 
house device, but it has not appealed the case involv- 
ing the Holbrook, Merrill & Stetson device, which is 
known under the name Simplex, and which is of very 
similar construction to the Westinghouse device. The 
plaintiff is within its technical rights in thus separat- 
ing the appeals, and it has until April 8th next within 
which to take an appeal in the Holbrook, Merrill & 
Stetson case. 

But this strategic move on the part of plaintiff has 
obviously left the defendant Holbrook, Merrill & Stet- 
son in an embarrassing position. This court has recog- 
nized the situation by allowing Holbrook, Merrill & 



stetson to appear and be heard on these appeals as 
amici curiae. 

The substantial issues raised between the plaintiff 
and these two defendants, the Westinghouse Company 
and Holbrook, Merrill & Stetson, are substantially the 
same, although Holbrook, Merrill & Stetson have pre- 
sented additional evidence in their case, and some of 
the evidence presented by the plaintiff in the cases 
against the Westinghouse Company is not applicable 
to the case against Holbrook, Merrill & Stetson. Never- 
theless, the decision which this court will arrive at on 
these appeals in the Westinghouse cases will, in all 
probability not be determined by these differences 
and will so control the decision on an appeal in the 
cases against Holbrook, Merrill & Stetson. 



A SEPARATE CONSIDERATION OF THE THREE APPEALS IS 
NOT EQUITABLE. 

We respectfully submit that it is neither fair nor 
conducive to a correct understanding and a right 
decision of the matters in litigation between these 
parties that these three patents should be considered 
entirely separately and apart from each other. 

The plaintiff has not so considered these patents. 

(1) Til notices sent to each defendant prior to the 
litigation it charged all three patents to be infringed 
by the same device. 

(2) Til tlie suit against Holbrook, Merrill & Stetson 
the mechanical patent and one of the design patents 
were joined. 



(3) The bulk of the evidence in all four of the 
cases tried is substantially the same. 

(4) The cases were all tried at the same time in 
immediate sequence. 

(5) The cases were all argTied together as a single 
case before the lower court. 

(6) The cases were all decided in a single opinion 
by the court below. 

(7) The three cases against the Westinghouse Com- 
pany are all to be argued together before this court. 

We shall therefore present the same brief as amici 
curiae in all three of these appeals in order that the 
court may properly appreciate the relation of each 
patent to the other, and to the defendants' devices. 



THE MECHANICAL PATENT 1,245,084, AND THE DESIGN PATENT 
51,043 ARE DIRECTED TO PRECISELY THE SAME DEVICE. 

These two patents which were involved in two sepa- 
rate suits against the Westinghouse Company, and in 
a single suit against Holbrook, Merrill & Stetson are 
attempts to obtain a monopoly of precisely the same 
thing from two different standpoints. Observing the 
drawings forming a part of these patents, it will be 
seen that the same device is illustrated in both. The 
shape or configuration of the device is the same in 
each case. 

It was the object of the mechanical patent to pro- 
vide and cover certain protective features; first, the 
dead air space behind the reflector, and, second, the 



annular marginal flange around the edge of the re- 
flector. The provision of these two features was what, 
and what alone, produced the shape or configuration 
made the subject of the design patent. 

The design patent is therefore purely and simply 
nothing but a copy of the mechanical patent, and every 
element disclosed therein is there solely for functional 
purposes, with no idea of an invention in an orna- 
mental or pleasing effect. 

This point we shall further elaborate, but this fact 
fully established on the very face of the record brings 
the design patent 51,043 within the well-established 
rule so clearly stated by this court in Ferd Messmer 
Mfg. Co. V. Albert Pick & Co. et al, 251 Fed. 894. hi 
that case, as in the case at bar, both a mechanical 
patent and a design patent upon the same thing were 
involved. The device was an ordinary glass tumbler 
formed with an annular bulge slightly below the upper 
edge. The object of this bulge was to prevent break- 
age or injur}^ of the tumbler edge if the tumbler fell 
over. In that case, as has been suggested here, there 
had been commercial success, large sales of the pat- 
ented tumbler having been made at a price twenty 
per cent greater than other tumblers on the market. 
The defendant copied the construction so closely that 
its tumblers could not be distinguished from the 
plaintiff's. This court held the design patent invalid, 
saying : 

"The bulge in the patented glass cannot be said 
to be ornamental within the meaning of section 
4929 of tlio Revised Statutes (Comp. St. 1916, Sec. 



9475). There is nothing in the bulge of the pat- 
ented glass which would appeal to the esthetic 
emotions or to our idea of the beautiful. While 
the bulge may be new and useful, we cannot say 
that it has added anything to decorative art." 



i 

THE MECHANICAL PATENT, 1,245,084. 

The specification of this patent is brief; it comprises 
less than a single page. It will take but a moment's 
examination to show that this patent on its face recog- 
nizes that it discloses nothing of a primary character, 
that it discloses no fundamentally new principle, and 
that it is restricted to minor details which, but for the 
vigor and extent of this litigation, we would not hesi- 
tate to characterize as trivial. 

We note at the outset: 

(l)No claim is anywhere made in the specification 
that the device produces a "beam". 

(2) No claim is anywhere made in the specification 
that the reflector is or should be parabolic in shape. 

(3) No suggestion is anywhere made that the re- 
flector is to be made of, or coated with, copper. 

(4) No claim is anywhere made to the use of the 
necessary michrome resistance wire. 

(5) No claim is suggested as to any novelty in the 
wire guard. 

It is a most singular thing, and most significant, that 
the patent itself not only fails to assert as novel, but 
also fails even to mention, those things which the plain- 
tiff now asserts to be the controlling factors in the case. 



The patentee Brown filed his application July 10, 
1917, or about a year after, according to his own testi- 
mony; he had manufactured and placed these devices 
on the market, and yet in this patent he does not even 
mention the idea of the copper bowl, the idea of a para- 
bolic or similar reflector, or the idea of the beam-like 
j)rojection of the radiant rays of heat. 

Brown, when he filed his application, was required 
by Section 4888, R. S., to 

''explain the principle thereof, and the best mode 
in which he has contemplated applying that princi- 
ple, so as to distinguish it from other inventions; 
. and he shall particularly point out and distinctly 
claim the part, improvement, or combination which 
he claims as his invention or discovery." 

At the outset Brown pointed out that his invention 
related to a generaly old type of device, saying: 

"This invention relates to electric heaters in 
which the heat waves are generated by a resist- 
ance coil or heating unit and are then reflected 
from a highlv polished surface" (page 1, lines 
9-12). 

He next proceeded to state the object of his inven- 
tion, and, in a single paragrai)h, he stated but a single 
object, as follows: 

"One of the main purposes of my invention is 
to i)rovide an electric heater or radiator in which 
the highly heated portions are inclosed by protect- 
ing members, but one readily accessible for exami- 
nation or re])air" (page 1, lines 13-17). 

What now were these "protecting members" which 
embody the only stated ])urpose of the alleged inven- 



8 



tion? They are clearly and definitely stated in the fol- 
lowing language: 

"The air-space 5, between the reflector plate 1 
and the casing 3 prevents the latter from becom- 
ing heated. In order to prevent the outer exposed 
edge of the heater from being heated I provide 
the casing with a marginal annular flange 3a" 
(page 1, lines 60-65), 

The four claims of the patent are of the most lim- 
ited character. Claims two, three and four are de- 
voted to the most trivial details, and have been with- 
drawn from consideration on this appeal. Even claim 
one, which is the only claim now" before the court, 
does not claim both of these protective features, but 
only the "annular member extending outwardly from 
the margin of said reflector", and that in combination 
with the old wire guard, and other old features. 

During the progress of the application, the Patent 
Office Examiner inquired more particularly as to just 
what w^as this annular member, and as shown by the 
file wrapper, the applicant replied "it is the flange, 
3a, shown in the drawing", thus emphasizing the dis- 
tinctive feature of his device. 

It is unnecessary here to consider whether these two 
protective features thus made the subject of this 
patent are or are not of substantial value. The essen- 
tial point to note is that they, and they alone, consti- 
tute the sole object and purpose of the alleged inven- 
tion. 

The plaintiff in this type of heater has always used 
a spool-like heating element, extending transversely 



across the face of the reflector, and it is consequently 
obvious that with this unsymmetrical arrangement the 
heat reflected from this element on to the reflector 
must heat the reflector unevenly. It may well be, 
therefore, that the patentee conceived it desirable to 
provide these two features, first, the outer casing 
forming with the reflector the dead air space, and 
second, the annular member or flange extending out- 
wardly from the margin of the reflector. In any event, 
the invention of the patent is based on the theory that 
these two protective devices are necessary. 

This gives the reason for the mechanical patent, and 
determines the essential shape disclosed in the design 
patent. 

But tlie defendants' devices, both the Westinghouse 
device and the Simplex device of Holbrook, Merrill & 
Stetson are constructed on an entirely different theory. 
In both defendants' devices the heating element is 
arranged not transversely, but axially of the reflec- 
tor, and consequently the reflector is not unevenly 
heated. The theory in the defendants' devices is that 
no protective features, either in the nature of dead air 
space, or in the nature of an annular flange or mem- 
ber extending outwardly from the margin of the re- 
flector are necessary. 

Both of the defendants' devices correspond substan- 
tially in their final and complete shape to the reflec- 
tor element I shown in the drawings of the Brown 
patent. That is to say, if the extra casing 3 and the 
dead air space feature are removed, and if the annular 



10 



flange or member 3a is removed from the plaintiff's 
device, there is left the reflector member 1 correspond- 
ing closely in function, shape and appearance to the 
defendants' devices. 

We respectfully submit, therefore, that it is absurd 
to argue that when the two features, which constitute 
the sole object and purpose of the plaintiff's alleged 
mechanical invention, and which determine the char- 
acteristic appearance of the plaintiff's alleged design, 
are bodily removed, what is left can be an embodiment 
of either invention. And yet what is left corresponds 
to the defendants' structure in each case. 



THE BEAM HEATER IDEA. 

It is somewhat difficult to follow counsel for the 
plaintiff in his discussion of the fundamental princi- 
ple of the invention, and at the same time have any 
regard for the undisputed evidence. 

Many statements in plaintiff's brief and the cut 
appearing opposite page 12, would seem to indicate 
that the plaintiff claims that the patented heater pro- 
duces a cylindrical beam of radiant energy. Much 
is said about the use of a parabolic reflector by the 
plaintiff, and the claim is made that this heater "pro- 
duces a perfect shaft or beam of radiant energy" 
(page 12, Brief in 3617), and the prior art is 
distinguished because "they did not produce a cylin- 
drical shaft or beam of parallel rays) (page 40 idem). 
Again the same brief on page 58 appears to state that 



11 



Brown has ''a homogeneous cylindrical shaft or beam 
of parallel rays", 

K the claim is that plaintiff's device produces a 
cylindrical beam, it is utterly unwarranted. It is suffi- 
cient to refer to the testimony of Mr. Henry, plaintiff's 
own expert. On pages 114 and 115 in the record of 
No. 3617, he discusses the nature of the beam pro- 
duced by the plaintiff's heater and the Westinghouse 
heater, and concludes by saying, 

*'but in both cases you will get a decided heat 
beam 10 feet in diameter, or 10 feet wide, I will 
say at a distance of 9 feet from the unit". 

In other words, there is nothing even approximating 
a cylindrical beam produced either by the plaintiff's 
own exemplification of its patent, or by the defend- 
ants ' device. 

It is admitted and is obvious that the only possible 
way in which a cylindrical beam could be produced 
would be by the concentration of the heating element 
at the focus of a parabolic reflector, but this is physi- 
cally impossible even of close approximation. All the 
heating elements employed in these devices for many 
years have been relatively large, and have not even 
approximated a focal location. No part of the plain- 
tiff's element is or can be at the focus, and the draw- 
ing inserted in plaintiff's brief (e. g. opposite page 
12, in No. 3617) is entirely misleading. 

There was nothing whatever novel in the idea em- 
bodied in these heaters of a general localization of 
the heat l)y reflecting the rays of radiant energj^ on to 



12 



the object to be heated. This has been clone from the 
very beginning of the history of the art, and in many 
instances, with a nmch greater degree of concentra- 
tion than that employed by either the plaintiff's or 
defendants' devices. 

All that the Brown patent in suit sought to accom- 
plish was to gather up and reflect forward upon the 
object the rays of radiant energy from the heating 
element. 

We have already noted that Brown nowhere in his 
patent claims to form any particular kind of beam. 
He says nothing about it. He does not even describe 
any particular shape of reflector. In line 24 of page 
1 of the mechanical patent he calls it ''a concavo- 
convex reflector", and in the claims, he uses the same 
language, as, for example, in lines 84 and 85 of claim 
1, the only claim before this court, where he recites 
'*a concavo-convex reflector". He was thus describing 
his reflector by precisely the same language which had 
been used long before in the Warner patent for a simi- 
lar device. 



THE PRIOR WARNER HEATER. 

Warner in his patent 1,120,003, granted December 8, 
1914, described the reflector as "a reflector, b, of con- 
cavo-convex form" (page 1; lines 19-20), and in his 
claims described it as "a concavo-convex reflector 
mounted on the standard". 

The reflector of this Warner patent, exactly as in 
the patent in suit, is illustrated and described as "of 



13 



concavo-convex form". Just what its precise shape 
is, that is, whether parabolic or hemispherical, is quite 
immaterial, either from the standpoint of function or of 
appearance. The plaintiff's brief in No. 3617 in dis- 
cussing this patent at page 34, says: 

"It shows a large hemispherical bowl of con- 
cavo-convex form, which is called in the patent 
a reflector." 

We may accept this statement as true because, as 
we have noted, and as very clearly set forth in the 
same brief, the precise shape makes no difference. 
Plaintiff's counsel in the following statement on pages 
10 and 11 of the same brief evidently has in mind the 
matter of infringement. But any rule which provides 
a test for identity in the matter of infringement neces- 
sarily makes the same test applicable for identity in 
the matter of anticipation. Plaintiff's brief says: 

"The parabolic reflector is therefore the most 
perfect form for the projection of radiant energy. 
If, however, instead of having a perfect para- 
bolic reflector, we have one approximating there- 
to, such as the segment of a circle, or, po]mlarly 
speaking, a hemispherical reflector, then practi- 
cally the same result will follow as in the case of 
a parabolic reflector. The difference will be mani- 
fested only in a slightly less perfect form of the 
shaft or beam. This difference, however, is so 
slight as not to be appreciable from a utilitarian 
point of view. Hence, we may say in a popular 
sense that the results in the two cases are the 
same, at least this is true in the sense of the 
])atent law, which looks upon substantiality rather 
tlinn u|)OTi niiniito variance." 



14 



This is a substantially correct statement, and we 
may accept it. The Warner patent was cited in the 
prosecution of the Brown mechanical patent in suit 
by the Patent Office, and was one of the compelling 
reasons for the acceptance of the narrow and specific 
claims which appear in the Brown patent. Warner 
showed the extra casing with the dead air space, but 
he did not show the protective annular flange or mem- 
ber extending outwardly from the margin of the re- 
flector. Warner simply showed the small finishing 
bead or turned over edge of the reflector, which is 
employed both in the Westinghouse and the Simplex 
devices of the defendants. 

The Warner patent, like the Brown mechanical pat- 
ent in suit, says nothing about the use of copper for 
the reflector l)owl, but that was an old feature and 
was actually embodied in the Warner devices, manu- 
factured and sold under the Warner patent, a sample 
of which is in evidence as "Plaintiff's Exhibit 8". 



THE PRIOR KEMPTON HEATER. 

The substantial idea is shown in the Kempton British 
patent, No. 12,320 of 1848, where the heating element 
was a gas burner "placed in the focus of the para- 
bolic or other shaped reflector, and the heat to be re- 
flected into the apartment". The court below con- 
sidered the Holbrook, Merrill & Stetson case, along 
with the Westinghouse cases in its opinion, and said: 

"In English patent No. 12,320, Kempton claimed 
that by the use of a reflector of 'parabolic or 



15 



conical shape', located in a fireplace or in open 
space, for the purpose of throwing the heat into 
the room, gas conld be used for heating purposes as 
cheaply as coal. He shows a gas jet in the same 
relation to the reflector as here the resistance coil." 

Plaintiff's counsel complains in his brief because 
this patent was not technically offered in evidence in 
one of the Westinghouse cases. That may possibly be 
so, but it was offered in evidence in at least one of 
the cases which were all tried at the same time. We 
cannot believe that plaintiff's counsel really desires 
this court to shut its eyes to this ancient matter of 
historical interest clearly and fully disclosing tlie 
same fundamental idea applied nearly three-quarters 
of a century ago with gas as the heating element. 



THE PRIOR MORSE HEATER. 

The same fundamental idea appears in the Morse 
patent, 88,107, March 3, 1908. In this patent the heat- 
ing element was an incandescent lamp located in front 
of a hemispherical shaped reflector, and the patentee 
said, 

'^when the electric light is turned on, the heat 
developed within it is reflected downwardly by the 
shell toward the surface of the body against which 
the lower edge of the shell rests. In this way when 
the device is ])ro])erly applied the heat from the 
light is concenti-ated at the desired point" (page 
1; lines 45-51). 

The Morse i)atent also described the reflector or body 
of the device as one "which consists of a shell or hem- 



16 



isphere", so that applying the rule laid down by the 
plaintiff, and just referred to, we here have the same 
shaped reflector. Plaintiff argues that this is a thera- 
peutical device, but it is entirely inconsequential 
whether the reflected radiant energy is utilized for this 
purpose or merely for comfort. Plaintiff's counsel on 
page 19 of his brief in No. 3617, 

"But however that may be, the specification does 
not show or mention a reflector of any kind." 

Evidently the plaintiff's counsel has not read the 
patent. In the quotation just given, the word "re- 
flected" is used, and further on, beginning at line 72, 
the specification states: 

"The feature of mounting the electric lamp in 
a horizontal position within the reflector, is con- 
sidered highly advantageous, as by this arrange- 
ment, the lamp projects its heat more efficiently 
on to the surface of the body." 



THE PRIOR FERRANTI HEATER. 

Again the same fundamental idea appears in the 
Ferranti device. This is shown in a large number of 
publications, including defendants' Exhibits Nos. 1, 2, 
4, 11 and 12, and others produced in the Holbrook, 
Merrill & Stetson case. No sample of the device has 
been offered in evidence, but it is very fully illustrated 
and described, and was extensively advertised. One 
of the best illustrations of the device is in the defend- 
ants' Exhibit No. 12, "Supplement to the Electrician" 
of September 20, 1912. It will be noted therefrom that 
the reflector was similar in shape to those here involved. 



17 



Its stated diameter of 18 inches makes it correspond 
in size closely to both the defendants' devices. Various 
forms of standards or pedestals were employed, and 
the form shown in the small cut at the left hand side 
of page 1 of this exhibit is similar to that shown in 
the patents in suit. This exhibit also describes the 
use of the "removable wire guard * * * covering the 
reflector", and quoting a price therefor of 10 shillings, 
6 pence. In defendants' Exhibit No. 2, the Ferranti 
reflector is described thus, 

"By means of a boivl-shaped copper reflector 
surrounding the heating surface, and carried on 
trunnions, the heat rays can be focused in any 
desired direction." 

In the same paragraph a form of wire guard is de- 
scribed as, 

"secured to the outer edge of the copper reflecting 
bowl". 

In defendants' Exhibit No. 1, "The Electrical Times" 

for January 5, 1912, the reflector is thus described, 

"a circular howl of polished copper, which con- 
centrates and reflects the heat rays * * * there is 
considerable radiant energy, and owing to the re- 
flecting properties of the bowl, this can distinctly 
be felt at a distance of many feet. It has much 
the appearance of a red hot fire, hence its name 
and its effect is much the same." 



THE PRIOR CALOR HEATER. 

The Calor heater is another of these devices illus- 
trated and described in a number of publications, in- 



18 



eluding defendants' Exhibits Nos. 5 and 7, the ''Elec- 
trical Times" for March 6, and October 9, 1913. The 
latter publication in figure 3 shows the concavo-convex 
reflector mounted on the pedestal type of standard. 
While the reflector is not described in this particular 
form as of copper, other forms are described as having 
the reflector of "polished copper". 



THE PRIOR PLEXSIM HEATER. 

The Plexsim heater is made the subject of British 
patent No. 19,971 of 1913, and is also illustrated and 
described in a number of publications, two of which 
appear as defendants' Exhibits Nos. 8 and 9, the 
"Electrical Times" of December 4, 1913, and the "Sup- 
plement of the Electrician" of October 16, 1914, respec- 
tively. 

The plaintitf 's counsel in his brief seems to be much 
worried, and rightly so, over the disclosures with respect 
to this Plexsim heater. Many other disclosures were 
produced in the Holbrook, Merrill & Stetson case, but 
those referred to are sufficient. This device is of in- 
terest because it embodies (1) a yoke shaped pedestal 
in which the reflector swings on trunnions as in the case 
of defendants' devices; (2) the parabolic copper reflect- 
ing bowl; (3) the arched wire guard springing from 
the margin of the reflector (a flat wire mesh guard is 
also shown, but that is an alternative) ; (4) a spool-like 
heating element extending axially of the reflector as 
in the defendants' devices, and not transversely as in 
the plaintiff's device; (5) the use of the same wattage, 
namely 600, as employed by the plaintiff and defendant. 



19 



The "Electrical Times" of December 4, 1913, defend- 
ants' Exhibit No. 8, contains a diagram showing the 
beam-like action of the Plexsim heater, and the article 
describing it states : 

"The heater is of pedestal form, with cone-shaped 
reflector of polished copper, which is pivoted at the 
center, so that it can be swivelled to any angle. The 
heating element is arranged horizontally through 
the center of the reflector from the apex to the base, 
and consists of a special resistance alloy wound 
spirally over a fire clay carrier. * * * When 
on circuit the appearance is that of a glowing circle 
of fire, which produces a most cheerful effect, the 
heat rays being throivn forward in a more or less 
parallel beam in any direction, according to the 
angle at which the reflector is swivelled. * * * 
although the efficiency of the device is neither more 
nor less than that of any other electric heater in 
which the whole of the energy absorded is given out 
in useful heat, the user may receive a greater pro- 
portion of this heat owing to the concentrating and 
focu.<ing properties of the specially shopped reflector 
used." 

The British patent under which this heater was made 
repeatedly describes the copper reflector, the parabolic 
form, the beam-like reflecting action and the axially 
arranged heating element. We copy the following 
excerpts from this remarkably full disclosure: 

"the object is to provide an apparatus of conven- 
ient form in which the radiant heat issues in the 
form of a condensed beam of rays". 

"The reflector is * * * usually made of or 
lined with sheet copper, the inner surface being 
highly polished." 

"the refl(H'tor may be in whole or in part of para- 
bolic or the like contour according to the form 
desired for the emergent beam of rays". 



20 



'^We prefer to mount the reflector pivotally on a 
forked stem * * * so that the beam of rays 
can be turned to point in any direction." 
"a reflector, the section of which on a plane con- 
taining said axis, is the frustum of a cone, or of 
parabolic configuration''. 

''The reflector is so mounted * * * as to re- 
flect the emergent rays in any desired direction." 

"A. is the conical reflector, which may be made 
wholly of copper * * *. The inner surface is 
highly polished." 

''the reflector may be, in longitudinal section, in 
whole or in part of parabolic or the like contour, 
according to the form desired for the emergent 
beam of rays". 

The claims are directed to the combination of the 
"conical or parabolic reflector", with the heating ele- 
ment arranged like the defendants' devices "so as to lie 
on the axis of the said reflector". 

It is idle for the plaintiff to dispute the full, accurate 
and detailed disclosures of this Plexsim heater, and to 
discuss trivial details such as the alternative corruga- 
tions described. Tested by any rule which may be laid 
down, we have here a complete anticipation of the main 
idea of this type of heater. 

It is true that the Plexsim heater does not shoiv, and 
did not have, the two protective features of the plain- 
tiff's patent, (1) the extra casing forming the dead air 
space behind the reflector, (2) the marginal annular pro- 
tecting flange. These are the only things which the 
plaintiff sought or suggested as novel in his patent, but 
neither of these things are present in any of the defend- 
ants' devices. 



21 



THE PRIOR REDGLO HEATER. 

The Redglo heater is shown in the British patent to 
Martin, No. 2764, of 1912, which was cited by the Patent 
Office during the prosecution of the application for the 
patent in suit, and one form is advertised and described 
and illustrated in the ''Supplement to The Electrician" 
of October 3, 1913, ''Defendants' Exhibit No. 6". These 
disclosures are only of general interest, it being noted 
that the patent describes the 

"reflector of a comparatively wide angle to throw 
out the radiated heat in any desired direction", 

and points out that any style of stand or pedestal may 
be employed. 

"The radiator above described may be used, how- 
ever, with any other convenient form of support or 
stand, and this is mentioned by way of example only 
as a suitable form of support." 



SUMJ^TARY AS TO THESE PRIOR HEATERS. 

Plaintiff's counsel complains that there is no evidence 
that these various devices were sold in this country. 
But what of it. The statute makes a complete bar to 
a valid patent here the fact that the device is 

"patented or described in any printed publication 
in this or any foreign country" (Sec. 4886, R. S.). 

It is seldom that a case contains such a wealth of clear 
and definite illustration and disclosure as appears in 
these foreign patents and publications setting forth the 
Plexsim and Ferranti Electric heaters. So far as the 
fenturos common to plaintiff's and defendants' devices 



22 



are concerned, this disclosure is far more full, complete 
and accurate than is the disclosure of the Brown patent 
in suit. 



THE PKIOR MAJESTIC OR SHOENBERfi HEATER. 

The earlier Majestic or Shoenberg heaters present a 
state of the art which is sufficient alone to explain why 
it was impossible for Brown in his mechanical patent in 
suit to urge novelty for anything more than trivial de- 
tails, and in his design patent in suit, to include the 
destructive wide marginal flange. 

We are at an utter loss to understand the allegation 
of plaintiff's counsel in his brief that these earlier 
Majestic devices were "abandoned experiments". It is 
absurd to argue, in view of the record in these cases, 
that these devices were experimental. Unquestionably 
they were not so successful as money-makers for the 
plaintiff company as its present device, but the reason 
is not far to seek. 

The plaintiff did not use in any of these devices the 
glowing polished copper bowl, which is the outstanding, 
predominant and distinctive feature. This is the thing 
which catches the eye, which gives the ''pleasing appear- 
ance", and which gives a highly efficient reflection, for 
as Mr. Henry, plaintiff's expert, says: 

"Polished copper is a highly efficient surface for 
the reflection of radiant heat waves" (Record in 
3617, page 102). 

Let us make this matter perfectly certain by quoting 
Mr. Brown himself. 



23 



"Never prior to our No. 7 heater did we market 
a heater of portable type having a burnished copper 
reflector" (Record in 3617, page 125), 

and by quoting plaintiff's expert Mr. Henry, in discuss- 
ing these earlier Majestic heaters, 

''These exhibits are of nickel or of nickeled sur- 
face, and as such are not nearly as efficient in the 
reflection of the radiant heat rays" (Record in 
8617, page 100). 

But that these earlier Majestic heaters were exten- 
sively manufactured, sold and used can not be ques- 
tioned. 

These earlier heaters were made in slightly different 
forms known as No. 1, No. 2, No. .3, No. lb. No. 2b and 
No. 3b, and samples of the actual devices are in evi- 
dence. The record in No. 3617 contains the following 
stipulation at pages 76 and 77, 

''Plaintiff's counsel admitted that the early 
Majestic devices 1, 2 and 3, hereinbefore referred 
to, were made and sold more than two years prior 
to the filing of the application for the patent in 
suit, but the manufacture and sale of the other 
devices referred to as lb, 2b, and 3b were not made 
until the fall of 1915" (The latter date being prior 
to Brown's invention), 

and similar stipulations appear in the other records. 

Various circulars of the Majestic Company illustra- 
ting, describing and advertising these devices are in 
evidence. Tho "Electricnl Record" for May. 1915. 
defendants' Kxliibit No. 16, illustrates and describes one 
of them. Mr. Brown's testimony on pages 120 and 121 
in No. 3617 shows that all of these were manufactured 
and sold, and on cross-examination he testified. 



24 



''Our sales of the previous heaters, Nos. 1, 2 and 
3, and lb, 2b and 3b, were not confined to the Pacific 
Coast" (page 124, Record 3617). 

There is also in evidence, as defendants' Exhibit E. 
a large photograph showing a most remarkable display 
of these earlier Majestic heaters at the Panama Pacific 
Exposition, 2:»rior to May, 1915. 

The Shoenberg patent 1,109,551, granted September 
1, 1914, is in evidence, and was cited by the Patent Office 
in the examination of the application for the Brown 
mechanical patent. The plaintiff's present form of 
heaters bear name plates in which they purport to be 
manufactured under this patent (Record 3617, page 42). 
This patent is of particular interest in showing the form 
of pedestal, the form of heating coil, and the form of 
arched wire protecting guard universally employed by 
the plaintiff It also shows the dead air space behind the 
reflector, but this does not appear to have been used in 
the earlier heaters. 

The attempt of plaintiff's counsel in his brief to dif- 
ferentiate the form of beam produced by the earlier 
Majestic or Shoenberg heater from that produced by 
the present Majestic heater accompanied by the mis- 
leading diagrams inserted in the brief, is without force 
when the heaters themselves are examined and the 
Shoenbero' patent is read. The patent states begin- 
ning with line 48 of page 1, 

''The reflector consists preferably of a highly 
polished metal shell 1, which is somewhat hemispher- 
ical or dome-shaped, and serves to reflect the heat 
waves received from the heater and direct them out- 
wardly from its inner concave surface." 



25 



Another illustration of the Shoenberg heater, or 
earlier Majestic heater, substantially in the form known 
as the Majestic No. 3, a sample of which is in evidence 
as '* Defendants' Exhibit D", the one having a glass 
knob at the top of the standard, appears in the British 
Taylor patent 102,070 of 1916, mentioned by the court 
below in its opinion in discussing the second design 
patent 51,253 in suit. Plaintiff's counsel seems greatly 
disturbed at this reference because this patent was only 
offered in evidence in the, Holbrook, Merrill & Stetson 
case. It is quite immaterial, however, because the 
other disclosures of the prior Shoenberg or Majestic 
heater, formally in evidence in these cases, are amply 
sufficient. 

It is doubtless true that the beam produced by the 
parabolic form of plaintiff's present commercial heater — 
a form which is not specifically mentioned or claimed in 
the patents in suit — condenses in a somewhat different 
manner the reflected radiant rays than the various forms 
employed in plaintiff's earlier heaters, but the difference 
is purely one of degree, and not one of principle. We 
might even accept the incorrect diagrams of the Shoen- 
berg heater appearing in plaintiff's brief, when we bear 
in mind Mr. Henry's testimony previously quoted de- 
scribing the beam produced by plaintiff's present heater 
and the defendants' heaters, 

"but in both cases you will get a decided heat beam 
10 feet in diameter, or 10 feet wide, I will say at a 
distance of 9 feet from the unit". 

The im])ortant point to note is that none of these 
earlier Majestic heaters had the '^annular member ex- 



26 



tending outwardly from the margin of said reflector", 
which distinguishes the single claim involved of the 
Brown mechanical patent, and which characterizes the 
appearance made the subject of the first design patent 
in suit. These earlier devices employed a finishing bead 
secured by turning back the peripheral edge of the re- 
flector in much the same way as is done in the defend- 
ants ' devices. 

If we eliminate, as we must in considering either 
the question of anticipation or the question of infringe- 
ment, the matter of relative size, the color whether 
nickel or copper, it is impossible to distinguish in a 
substantial respect, either in function or appearance, 
the Majestic No. 2 earlier heater from the deff^ndants' 
heaters. 



THE LIGHTING ART. 

The lighting art is of interest because the laws govern- 
ing the reflection of light and of radiant heat are the 
same. The court below brought out this point in a 
question the presiding Judge asked of plaintiff's expert, 

"The Court. Q. I want to ask one question. 
Should I desire to experiment with these various 
devices by the use of light, as I understand you, 
the laws of light are substantially the same as the 
laws of this radiant heat energy? 

A. As regards reflection, yes. 

Q. In other words, if they would throw a beam 
of light, they would throw a beam of heat energy. 

A. Yes; in that case your light source should be 
the same size and position as the heat source" 
(Record in 3617, page 113). 



27 



Mr. Beam, beginning on page 136 of the same record 
discusses this matter at some length, but it is well 
known, and a matter of which the court may take 
judicial notice, that parabolic and similar reflectors have 
been used for many years in search lights, automobile 
head lights, and elsewhere, to reflect and project a beam 
of light and that the width and shape of the beam are 
varied as desired by the shape of the reflector. 



A FLANGE VERSUS A BEAD. 

There has been considerable discussion in the expert 
testimony in the record in these cases, in an attempt by 
plaintiff to suggest a similarity, by the use of words, be- 
tween the "annular member extending outwardly from 
the margin of said reflector" of the claim of the Brown 
mechanical patent, and the finishing bead employed 
at the edge of the reflectors of the defendants' devices. 

But we respectfully submit that all this talk is trivial. 
This court and this litigation is not concerned with 
words but with things. It is quite clear from the 
plaintiff's mechanical patent and from its first design 
patent that this "annular member" is a distinguishing 
feature of its invention, and is provided for a definite 
protective purpose clearly set forth in the mechanical 
patent. It is clear also that in the defendants' devices 
there is nothing but a strengthening bead or edge of the 
same character as employed in the Warner patent or in 
the earlier Majestic heaters. 

"We have already pointed out that if the annular 
flange or member .'"a be ])odily removed from the plain- 



28 



tiff's device, there still remains a reflector having a 
finishing bead or edge corresponding almost exactly to 
the defendants' construction. 

It makes no difference what word or term be em- 
ployed, the two things are different and are present 
for different purposes. 



THE ATTEMPT TO GIVE SUPPORT TO THE PATENTS BECAUSE 
OF CONSIDERABLE COMMERCIAL SUCCESS. 

There is no doubt but that the plaintiff's devices, 
as well as those of a large number of responsible com- 
peting concerns, have had a very considerable sale, 
especially in this section of the country, but no degree 
of commercial success can give life to an alleged in- 
vention which is not novel, can broaden the terms of 
a claim beyond the substantial scope sought and obtained 
from the Patent Office, or make an infringement that 
which a defendant has a clear right to produce. Com- 
mercial success has always been recognized by the courts 
as an extremely unsafe criterion, either of invention or 
of infringement, only to be utilized in cases of grave 
doubt. 

The extent of the plaintiff's business in these heaters 
is defined in a most nebulous manner. Brown testifies 
that up to the time of the trial, the plaintiff had sold 
in the neighborhood of 350,000 or 400,000, and that some 
had also been manufactured at Philadelphia (Record 
3617, page 40). Hiller, who did the manufacturing, 
testifies that he should judge it was between 100,000 
and 200,000 (same record, x)age 44). Shoenberg, the 
only other witness on this matter, testifies that he can- 



29 



not say as to the number sold (same record, page 43). 
This is sufficient to show the indefiniteness of the evi- 
dence. These men must have known, it was their busi- 
ness to know, and they could have informed the court 
just how many had been manufactured and sold, without 
leaving the figures between such a wide range as 100,000 
and 400,000. 

But assuming, as we may, that the sale has been 
considerable, the reason therefor is clearly disclosed 
by the record as something entirely apart from the 
embodiment in these heaters of the trivial details by 
which it is possible from any standpoint to distinguish 
these patents from the prior art. 

The plaintiff's President Brown testified at length, 
but a careful study of his testimony fails to disclose any 
reason for the commercial superiority of this later form 
of Majestic heater, except where referring to ''the 
trade", he says, 

"They made the remark, 'Now, you have got 
something that looks right.' Never prior to our 
No. 7 heater did we market a heater of portable 
type having a burnished copper reflector" (Record 
3'617, page 125). 

The court below was amply warranted in its findings 
in the paragraph of its opinion devoted to a disposal 
of this matter. 

The adoption by the plaintiff of the glowing copper 
bowl taken bodily from the prior art, and to which 
neither patent in suit makes any claim, or in fact even 
mentions, is undoubtedly the thing which gave to these 
devices popular favor, but the plaintiff can take no ad- 



30 



vantage from his feature to which it never made any 
claim, and which was the common property of all. 

The settlement of the Nichrome wire situation was 

undoubtedly another factor in the increase of plaintiff's 

business. This matter is fully discussed by Mr. Beam 

on pages 140 and 152 of the Record in 3617. It appears 

that the right to use this essential form of resistance 

wire was in litigation, and was not determined until late 

in 1915 by the decision of the Court of Appeals of the 

Seventh Circuit. We do not mean that the wire was 

not obtainable and was not being used before that 

time, but the whole matter was hanging like a cloud 

over tlie manufacturers of the country. After the 

decision sustaining the Marsh patent, almost the first 

thing that the plaintiff company did was to obtain a 

license to use this wire. Mr. Brown took a trip to the 

East in 1916 and obtained a license under the Marsh 

patent, and it was not until after the plaintiff obtained 

this license, that it began the sale of the heaters in 

question, and pushed them vigorously. The importam'e 

of this matter is further emphasized by Mr. Brown in 

his testimony giving the facts on page 42, Record 3617, 

when he states 

''The price of our No. 7 heater is determined by 
two factors; one is the license agreement with the 
Hoskins Company, the patentees of the resistance^ 
wire which we use, who place a minimum charge 
on heaters of this type, and the second is the cost of 
manufacture." 

In other words, this license is so important that it 
determines the price at which the plaintiff's heaters 
are sold. 



31 



These two things, the adoption of the distinguishing 
burnished copper bowl reflector for the first time, and' 
the obtaining of the important Hcense under the Marsh 
patent, are of themselves sufficient to accoimt for the 
increase in the plaintiff's business. 

But as pointed out by the court below, the recent de- 
mand arising particularly because of the local condi- 
tions of climate and otherwise on the Pacific Coast, 
doubtless aided the increasing sales of the plaintiff. 

But further, the record shows that almost at the same 
time the leading and most responsible electrical appar- 
atus houses of the United States began the manufacture 
and sale of this type of device. It is sufficient to refer 
to Mr. Brown's testimony on this point, on page 118 of 
the Record in 3617, giving the names of these concerns, 
the Westinghouse Company, Simplex Electric Heating 
Company, Landers, Frary & Clark, Rutenber Electric & 
Manufacturing Company, Estate Stove Company, Hot- 
point Company, Hughes Company, Edison Electric Ap- 
pliance Company, and after giving these names the 
witness said: 

''The manufacturers whose names I have just 
mentioned advertised their product pretty lively. 
The Hotpoint Company was a pretty big advertiser 
in everything. They advertised very liberally. 
They advertised in the Saturday Evening Post and 
some National Magazines; we advertised in the 
newspapers, and through circular matter, and at 
Expositions, Fairs, etc." 

It is not a source of wonder if, under these circum- 
stances, a good many of these devices were sold, and, 
as the court below stated in its opinion, 



32 



'^ doubtless by means of advertising and the arts of 
salesmanship, the desire for said heaters was greatly 
stimulated". 

We respectfully submit, however, that the court below 
was clearly right in its conclusion after discussing this 
matter, when it said, 

''But whatever may be the full explanation, such 
popularity as heater No. 7 may have had and may 
now have cannot reasonably be attributed merely 
to the slight change in the contour of the reflector 
or the addition of the broad annular flange, or to 
both of these changes." 



THE KULE OF LAW FOR TESTING INFRINGEMENT OF A 
DESIGN PATENT. 

The plaintiff's counsel in his brief has devoted a great 
deal of space to stating and re-stating the familiar 
rule laid down by the Supreme Court in Gorham v. 
White, 14 Wall. 511, as if there could be some con- 
troversy over this rule. This court has accepted this 
rule, and we know of no reason to controvert it. 

But before this rule can be applied consideration 
must be given to two very important matters which 
the plaintiff's counsel entirely overlooks. 

First, it must be determined that there is a valid 
design patent. 

Second, if there be a valid design patent, the nature 
and extent of the invention covered thereby must be 
determined. 

There can be no infringement of an invalid design 
patent. There can be no determination of infringe- 



33 



ment until we know just what the design is that is 
novel and patented. 

Both of these points are passed over by the plaintiff's 
counsel and without regarding them, he marches directly 
to a consideration of the question of infringement. 

This court has had before it and decided an unusual 
number of design patent cases, and has so fully, clearly 
and accurately stated the propositions of law which 
are controlling in the cases at bar that we would hesitate 
to re-state any of them, were it not for the nature of 
the briefs filed by the plaintiff. 



NOVELTY AND INVENTION ARE ESSENTIAL TO A DESIGN 

PATENT. 

A design patent is required by the statutes to disclose 
an ''ornamental" device, and this ornamental effect 
must not only be novel, that is, not substantially dis- 
closed by the prior art, but it must be the result of 
inventive genius. 

This proposition was clearly stated by this court a 

good many years ago in Hammond v. Stockton Works, 

70 Fed. 716, involving a design patent for a form of 

open compartment street car which may still be 

seen in San Francisco. Judge Ross speaking for the 

court said: 

*'To entitle a party to a patent for a design 
under this act, there must bo originality, and the 
exercise of the inventive faculty. This is so, be- 
cause the Statute so declares, and because it has 
been so decided by the Supreme Court." (Citing 
Smith V. Saddle Co., 148 U. S. 674, 679.) 



u 



In a little later case, Myers v. Sternheim, 97 Fed. 

625, involving a design for a lamp stove, this court 

again speaking through Judge Eoss said: 

"The exercise of the inventive faculty is just 
as essential to the validity of a design patent as 
it is to the validity of a patent for any kind of 
a mechanical device." 

We do not understand that the court controverts the 
proposition asserted by the plaintiff that there need be 
a high order of invention, nor do we controvert that 
proposition. 

The real point is that there must be invention — that 
is, the exercise of genius — in the production of the orna- 
mental effect. This is the idea of the old and often 
cited case of Northrup v. Adams, 2 Bann. and Arden 
567, where it was stated, 

"There must be something akin to genius — an- 
effort of the brain as well as of the hand. * * * 
If the effect produced be simply the aggregation 
of familiar designs, it would not be patentable. For 
example, if one should paint upon a familiar vase 
a copy of Stewart's portrait of Washington, it 
would not be patentable." 

It makes no difference whether we refer to the shape 
or configuration constituting the design as being 
"ornamental" in the language of the statute, or as "of 
pleasing appearance", in the language of plaintiff's 
brief. The idea is that the invention must reside in 
this ornamental or pleasing effect, must be the result 
of some degree of inventive genius and must be novel. 

It follows, therefore, that if the shape or configura- 
tion in question results solely from functional reasons. 



35 



that is to say, is the result solely of a functional pur- 
pose, it can not be an invention in a design. That is 
exactly the case here. All the features of the plain- 
tiff's device are provided for, and owe their shape or 
configuration to, functional purposes. This we take it 
is just what the court below holds in its opinion, where- 
in it is said, 

''But in the second place, in so far as they are 
alike, the plaintiff's casings, as well as those of 
the defendants are entirely devoid of purely orna- 
mental features, either of form or drapery; they 
are nude utilities. ' ' 

The court below did not mean that it was necessary 
that there should be surface ornamentation to produce 
a patentable design. That would be absurd. It did 
mean, however, that where, as here, the shape arose 
solely to secure a required function, then there could 
not be an invention from a design standpoint. In 
this holding the court was in full accord with thei 
authorities. 

"We have already referred to and quoted the bulged 
tumbler case, 251 Fed. 894, decided by this court on this 
very point. 

Another case is that of Bolte & Weyer Co. v. Knight 
Light Co., 180 Fed. 412, decided by the Circuit Court 
of Appeals for the Seventh Circuit. The subject matter 
in that case was not unlike that at bar, involving a 
lighting fixture with a reflector and support, pictures 
of the structures involved being shown in the re- 
port. The court affirmed the decision below, wherein 
it was said: 



36 



"It is a reasonable conclusion that a device, in 
order to justify the granting of a design patent, 
must be such as to satisfy a person of ordinary 
judgment and good eyesight that it is ornamental, 
entirely independent of the character of the article 
to which it is applied. It is not enough that it 
should present in an unobtrusive form some utility 
that might otherwise be clothed in less endurable 
garb. It must disclose inventive genius — a crea- 
tion which transcends the mere attractiveness 
almost universally availed of by dealers in every 
line of trade. That every symmetrical article 
should be made the subject of a design patent 
seems unconscionable. Patent monopolies are 
granted for the purpose of encouraging men of 
genius to place their mental powers at the service 
of the public without sacrifice. If every one Avho 
makes a graceful adaption of a utility to the pur- 
poses for which it is endured at all can secure a 
monopoly thereby, one may soon be afraid to twist 
a wire or whittle a stick, lest he infringe." 

Another case is that of Eose Mfg. Co. v. Whitehouse 
Mfg. Co. in the Circuit Court of Appeals for the Third 
Circuit, 208 Fed. 564. We quote from the opinion 
in 201 Fed. 926, which was affirmed on appeal: 

"The statute (Rev. St. Sec. 4929 (U. S. Comp. 
St. 1901, p. 3398), as amended by Act May 9, 1902, 
c. 783, 32 Stat. 193 (U. S. Comp. St. Supp. 911, 
p. 1457)), authorizes the issue of such a patent 
under certain conditions to any person who has 
invented any new, original and ornamental design 
for an article of manufacture. Hence, it appears 
that a valid design patent demands, as has uni- 
formly been held, an exercise of the inventive 
faculty the same as a mechanical patent. The 
design, however, thus invented must be not only 
new and original, but ornamental. It must ex- 
hibit something which appeals to the aesthetic 



37 



faculty of the observer. Eowe v. Blodgett & Clapp 
Co., 112 Fed. 61, 50 C. C. A. 120; Williams Calk 
Co. V. Kemmerer, 145 Fed. 928, 76 C. C. A. 466. 
A valid design patent does not necessarily result 
from photographing a manufactured article and 
filing a reproduction of such photograph properly 
certified in the patent office. The designs of the 
design patents in suit are for the most part alike. 
No. 41,389 differs, however, from No. 41,388 in hav- 
ing braces which unquestionably strengthen the 
arm, to which the number plate is attached. It 
is not only apparent that this is their function, but 
it is also established to be such by the evidence. 
Indeed, every feature of these patents is mechani- 
cal and functional, and not ornamental. Even ordi- 
nary rivet heads are made to appear as beautiful 
circles in this scheme of ornamentation. If, more- 
over, the braces or supports of patent No. 41,389 
were intended for ornamentation, they apparently 
failed in their mission, but, if otherwise, then every 
piece of mechanism can, with the aid of photog- 
raphy and the machinery of the P'atent Office, be 
readily crystallized into a design patent." 

In the recent case of Backstay Machine and Leather 
Co. V. Hamilton, 262 Fed. 411, the Circuit Court of 
Appeals for the First Circuit affirmed the decision of 
the district court on this point : 

"The question presented, so far as the validity 
of the design patent is concerned, is whether the 
patentee in his article patent having conceived of 
a welt having a base with superimposed parallel 
beads or raised portions, mechanically constructed 
to function in a given manner, which may be of 
various shapes, and beads of some shape being 
essential to the functioning of the device, can be 
said to have exercised inventive thought of a char- 
acter sufficient to warrant a design patent for a 
welt with beads or raised portions circular in cross 



38 



section. It seems to me to state the question is to 
answer it; that, having devised an article of manu- 
facture with a base having parallel beads w^hich 
may be of any suitable shape and beads of some 
shape being essential to constitute the article, it 
cannot be invention warranting a design patent 
to conclude that they should be round in cross sec- 
tion rather than some other suitable shape. 

Furthermore, the use of the beads or raised 
portions, circular in cross section in connection 
with moldings, whether superimposed upon a base 
or not, is of such long standing that I cannot on 
the evidence regard the use made of them by the 
patentee in his design as disclosing inventive 
thought. Tubular Rivet & Stud Co. v. Standard 
Finding Co., 231 Fed. 170, 173 (145 C. C. A. 358)." 

In another recent case, H. D. Smith & Co. v. Peck, 
Stow & Wilcox Co., 262 Fed. 415, the Circuit Court of 
Appeals for the Second Circuit had before it, as here, 
two patents, one a mechanical or utility patent and 
the other a design patent, disclosing the same article, 
namely, a screw driver. In holding the design patent 
invalid the court said: 

''Whether the structure involves Invention is a 
question of fact, and the determining factor is not 
whether the achievement is difficult or easy, but 
whether it has, in point of fact, 5?:ivon the world 
something of real value, that it did not have — a 
benefit conferred upon mankind." 

"The appellee has sued upon both patents in 
this action. This it may properly do. Eclipse 
Mach. Co. V. Harley-Davidson Motor Co. (D. C), 
244 Fed. 463. To successfully establish the valid- 
ity of the design patent, and to entitle the in- 
ventor to protection, he must establish a result 
obtained, which indicates, not only that the design 
is new but that it is beautiful and attractive. It 



39 



must involve something more than mere mechani- 
cal skill. There must be invention of design. The 
District Judge concluded that the screwdriver is 
beautiful and attractive, and he says, even orna- 
mental. We cannot, however, agree that the ap- 
pellee's structure, made pursuant to this patent, 
has such a pleasing effect imparted to the eye 
as to create beauty or attractiveness, or to make 
it ornamental. It provides for a new utility. De- 
sign patents refer to appearance. Their object 
is to encourage works of art and decorations which 
apF'^al to the aesthetic emotions — to the beauti- 
ful. We do not think that the device constructed 
by the appellee has a subject-matter for such 
beauty and attractiveness as is contemplated by 
the statutes, which permit the Patent Office to 
grant design patents, and conclude that the learned 
District Judge erroneously sustained this patent." 

In the case of Roberts v. Bennett, 136 Fed. 193, the 
Circuit Court of Appeals for the Second Circuit held 
invalid a design patent for a metal basket, saying: 

"The functional utility entitled the patentee 
to the mechanical patent already discussed, but 
mere functional utility did not entitle him to a 
design patent for the same article." 

Robinson in his able work on Patents puts the mat- 
ter very clearly, 

"Thus while an increase in the beauty of the 
substance is the purpose of this species of inven- 
tion, a mere increase in beauty, without an altera- 
tion in the shape or ornamentation of the sub- 
stance, does not possess the characteristics of a 
design; nor, on the other hand, does a change of 
shape or ornament intended to increase the prac- 
tical value of an instrument in the industrial arts, 
although such change augments the beauty of the 
instrument, bring it within this species of inven- 
tion." 



40 



This is the reason why color can form no part of 
the design. But color in this case is the very thing 
which gives something of beauty to these devices; 
which is there independent of function; w^hich is the 
characterizing feature of the appearance; but which 
cannot be considered either on the question of antici- 
pation or the question of infringement. There is un- 
questionably beauty in pure color. This w^as one 
of Buskin's tenets. But such ornamental character 
as is imparted to these heaters by the color of the 
reflector or the color of the pedestal is a beauty which 
cannot be monopolized under the patent laws, even 
were it original with the plaintiff, which it is not, 
or even if it were set forth in the patents in suit, which 
it is not. 

So also making the reflector bowl parabolic or 
spherical to control the distribution of the radiant 
rays, or adding a marginal flange to protect the user 
against the heated bowl, both of which things were old, 
even if they were new, could not constitute a patent- 
able design because, in the language of Eobinson, they 
are intended to increase the practical value of the 
device. 



THE ATTEMPT TO CONFUSE WITH THE DESIGN FEATURES 
WHICH CAN FORM NO PART THEREOF. 

Eobinson in his work on Patents makes this state- 
ment: 

''The image formed upon the retina may often 
differ widely from that formed in the mind — one 
being the exact representation of the object as it 



41 



really is; the other being composed of certain fea- 
tures of the object only, or of those features in 
connection with such elements as are suggested by 
the imagination or the memory." 

This is a very clear expression of a well recognized 
principle. When one's eye looks at a thing the mind 
may not carry the same impression that is made upon 
the eye. That principle underlies the consideration of 
these cases from the design standpoint. 

There is unquestionably a resemblance between all 
of these devices, just as in popular phraseology there 
is said to be a similarity in appearance between all 
colored persons. When an ordinary observer or an in- 
telligent observer, or anyone else, looks at one of the 
plaintiff's or defendants' devices we submit that the 
thing that makes the impression on the mind is the 
copper bowl. There is something striking about it. Its 
polished surface glows even when not in use, and when 
it is lit up, the effect is still more striking. It pushes 
into the background all remembrance of minor details 
of shape or configuration. 

But this color effect as we have sho^m is and can 
form no part of the design, and neither design patent 
suggests that it is a part of the design. The court be- 
low was clearly right when it said that the attractive- 
ness of the plaintiff's heater was 

''due not so much to slight changes in form as to 
increase in size, and more particularly, a substitu- 
tion of the warm copper bowl with suitable trim in 
the place of the nickel type of heater." 



42 



The plaintiff's counsel in his brief in No. 3616 argues 
that the plaintiff's heater has a distinctive and charac- 
teristic appearance, he says: 

"It became identified in the mind of the public 
with the Majestic company, so that whenever any 
person saw exposed for sale a portable electric 
heater, having the elements of No. 7, with a pol- 
ished reflector glowing like a ball of fire, such per- 
son would immediately conclude that it was a Ma- 
jestic heater No. 7" (page 23). 

This argument is repeated and the prior Majestic 
devices are belittled because "small" and "nickel- 
plated". 

It is absurd to argue in the face of the authorities 
and of the plaintiff's own design patent, that color 
forms any part of the design, and the argument is only 
made because counsel realizes that the copper colored 
glowing bowl is the vitally characteristic appearance 
factor, even although it has nothing to do with the 
issue. 

This court and other courts have made it very clear 
in the decisions which we have quoted that in consider- 
ing a design invention it must be first ascertained in 
what the invention consists. If the general shape or 
configuration of the article as a type is already old, it 
is obvious that the design must relate to details, and 
similarities arising from the common adoption of the 
generally old type of shape cut no figure. So also 
similarities arising from the use of a common color ef- 
fect can cut no figure. 



43 



One of the best cases on this point is that of Grelle 
V. City of Eugene, 221 Fed. 68, decided by this court. 
The design patent in that case related to a street lamp 
post, and cuts of the patented design and of the de- 
fendants' device appear in the report. In sustaining 
a decree for the defendant, Judge Morrow, speaking 
for the court, said: 

''In the nature of things, lamp posts manufac- 
tured for use in city streets must possess many 
features in common. In general form they must of 
necessity be somewhat the same. As stated by 
one of the defendants' experts: 

'There is not much chance for originality. The 
only chance for originality the designer has in 
designing a post is in the detail'." 

Another case in point is Kruttschnitt v. Simmons, 
118 Fed. 851, affirmed by the Circuit Court of Appeals 
for the Second Circuit on the opinion of the court be- 
low, 122 Fed. 1020. The design related to a bordered 
aluminum plate. The plaintiff was the first one to put 
on the market this kind of an aluminum plate, but 
there as here, the particular metal or color of metal 
could not form any part of the design, and the court 
said: 

"When the defendants manufactured bordered 
aluminum signs having patterns differing so widely 
from the patented design as not to infringe the 
same, they were purchased by persons who sup- 
posed they were getting plaintiff's design, or who, 
at least, failed to distinguish the difference be- 
tween them. Counsel for plaintiff, therefore, in- 
vokes the application of the familiar test — the eye 
of the ordinary observer, giving such attention as 
a purchaser usually gives." 



44 



^'For the reasons already stated, this test can- 
not be applied in this case without doing violence 
to the fundamental law of infringement, — that in 
order to constitute infringement there must be an 
appropriation of the novel elements of the patented 
design. Because such aluminum signs are new, 
the purchasing public may mistake defendants' 
design, which every one has a right to make, for 
the design which only the plaintitf has the right 
to make. But the defendants cannot be deprived 
of their common right. The plaintiff, then, must 
be limited in such test to configurations which ap- 
propriate his design." 

Again this court applied this principle in the recent 

case of Zidell v. Dexter, 262 Fed. 145, speaking thus 

through Judge Gilbert: 

''In a design invention which consists only of 
bringing together old elements with slight modifi- 
cations of form, the invention consists only in 
those modifications, and another who uses the 
same elements with his own variations of form 
does not infringe, if his design is distinguishable 
by the ordinary observer from the patented de- 
sign." 

The Circuit Court of Appeals for the Sixth Circuit 

in Soehner v. Favorite, 84 Fed. 182, put the same point 

in this language: 

"for while it must be admitted (and this is the 
contention most pressed by the complainant) that 
to the casual observer or to one who regards their 
general appearance only, there is a sameness of 
appearance, yet it is only the sameness which re- 
sults from the use by the defendant of the re- 
sources which were of right open to each — that is, 
in this case, the privilege of using an old kind of 
ornament, in its common style of application, to 
the improvement of the appearance of his stoves." 



45 



These cases enforce the principle which is determining 
here. Any resemblance that does exist between the 
plaintiff's and the defendants' devices is a resemblance 
primarily due to the general shape or configuration 
which was old and common, or is due to the brilliant 
polished reflecting bowl which is and can form no 
part of either design. 



THE RELATION OF THE HEATING ELEMENT TO THE DESIGN. 

We do not understand what position the plaintiff 
takes on this point. The heating element, that is, the 
spool-like resistance wire wound device which occu- 
pies the prominent central position in front of the re- 
flector, either constitutes a part of the design or it 
does not. So far as we are concerned, it mak^ no 
difference which position the plaintiff takes, but it 
cannot straddle, it must take one position or the other. 

Both design patents are entitled ''electric heater 
casing' ', and the plaintiff's briefs before this court 
are entitled in the same manner. The claims of both 
design patents are for 

''the ornamental design for an electric heater cas- 
ing substantially as shown". 

Neither patent contains any specification, and as this 
court said in Zidell v. Dexter, supra, where there is no 
specification in a design patent, it is impossible to tell 
what the inventor considered the prominent feature, 
and the patentee must be held substantially to the de- 
sign showTi in the drawing. Plaintiff's counsel in his 
brief in No. 3616, at page 42, says: 



46 



''But furthermore, tlie patent is entitled 'Design 
for an Electric Heater Casing', and the specifica- 
tion and claim so designate the invention. It would 
seem from this that the heater element is no part 
of the design, but that the design is a casing to 
be used in connection with any kind of a heater ele- 
ment however that element is arranged." 

On page 36 of the same brief, the same counsel com- 
plains that the court below 

"dismissed from consideration all parts or ele- 
ments of the plaintiff's assemblage save and ex- 
cept the reflector in connection with the attendant 
heater element, and then deduced the conclusion 
that the defendants' reflector with a longitudinal 
arrangement of heater element presented a differ- 
ent appearance from the plaintiff's reflector with 
a transversely arranged heater element." 

On page 11 of his brief in 3618 the same plaintiff's 
counsel attempts to discard the Warner device as an 
anticipation because of the difference in the heater ele- 
ment, which he describes as 

"its large circular metal grid work, and electric 
light bulb in the center of the bowl." 

Where does plaintiff's counsel stand? If as he 
seems to say in one place, the heating element is not 
a part of the design, then we must compare the War- 
ner patent without the heating element with the plain- 
tiff's device without the heating element. No ordinary 
observer could distinguish between these two devices 
under these conditions. 

The record in No. 3616 contains the testimony of 
Mrs. Lebatt, a personal friend of Mr. Brown, who 



47 



never purchased or owned one of these devices (page 
54), and of Mr. Hiller, who manufactured the devices 
for the plaintiff. This testimony of course has no 
bearing on the case of Holbrook, Merrill & Stetson, in- 
volving the Simplex heater, and does not appear therein. 
We fail to see, however, any significance favorable to 
the plaintiff in this testimony. If this is the best that 
plaintiff can do after selling between 100,000 and 40O,- 
000 of its heaters, that fact alone is significant. The 
thing of some materiality is that all that Mrs. Lebatt 
can emphasize is the matter of the heating element. 
That seemed to impress her as a distinguishing differ- 
ence, and throughout her brief testimony, she repeat- 
edly refers to it. There is no doubt but that the ele- 
ment, occupying as it does the center of the reflector 
toward w^hich the eye is irresistibly drawn, is a no- 
ticeable feature, and readily distinguishes the two de- 
vices. 

If the heating element is a part of the design, then 
it is a very prominent and characteristic part, and the 
difference between the plaintiff's type and the defend- 
ants' type is a distinguishing difference. 

This is what the court below correctly held: 

*'In its more conspicuous features the plaintiff's 
design also closely resembles the Warner device, 
the parabolic 'Simplex' and the 'Ferranti Fires'. 
If it be said that the element in the Warner heater 
distinguishes its general appearance, the answer 
is that, as already noted, such distinction also 
exists between the plaintiff's designs and the al- 
leged infringing devices." 



48 



THE SECOND DESIGN PATENT, No. 51,253. 

Little need be said specifically with reference to this 
patent involved in No. 3618, and in the suit against 
Holbrook, Merrill & Stetson, now awaiting trial in 
the court below. 

The record in this case, so far as the testimony is 
concerned, is made up entirely of excerpts from the 
testimony in the other two cases, and no additional 
testimony was offered by either party. 

It does not appear when and to what extent, if ever, 
the plaintiff manufactured and sold the particular 
heaters offered in evidence by plaintiff's counsel (Rec- 
ord 3618, page 37) without identifying or supporting 
testimony, and it is quite immaterial. This second de- 
sign patent, 51,253, is, we submit, clearly invalidated 
by the earlier Majestic No. 2, or Shoenberg heater, 
samples of which are in evidence, and a numTber of 
which are excellently depicted in the photograph of 
the Majestic Company's exhibit at the Panama Pacific 
Exposition, "Defendants' Exhibit E". 

This patent is but another regrettable example of 
the careless practice of the Patent Office in granting 
design patents so forcefully characterized by the Cir- 
cuit Court of Appeals for the Second Circuit in Rowe 
V. Blodgett, 112 Fed. 61, as ''not only liberal, but lax". 

In addition, we submit the obvious proposition that 
it is impossible for the single structure of heater of 
either defendant to infringe two separate and distinct 
design patents which relate to the entire device. 



49 



Each of these design patents is for the shape or con- 
figuration of the entire heater or heater casing. This 
is not the case of two design patents, each directed to 
a different feature, as, for example, one to the shape of 
the reflector, and the other to the shape of the base, 
but this is a case where a single concrete device is al- 
leged to infringe two separate and distinct design pat- 
ents, both for the entire device or casing. 

We respectfully submit that to state this proposition 
is to refute it. The axiom, ''two things equal to the 
same thing are equal to each other" applies. 

But we respectfuly submit this second design pat- 
ent is correctly and effectually disposed of by the court 
below when in its opinion it said: 

"Indeed, it is difficult to perceive upon what 
basis a claim of patentable novelty for No. 51,253, 
the design without the annular flange, can be pred- 
icated. The casing shown is simply a reflector of 
the most familiar type, old in the art, and without 
noveltj'^ either in configuration or feature. True, 
upon placing the device of this design as actually 
manufactured side by side with the heater actu- 
ally manufactured by the plaintiff under the 
Shoenborg patent, we have a substantial contrast 
in appearance, but the contrast is of material, 
color, and size, and not of form. Make both of 
the same size and finish them both in nickel or 
copper, and we have similarity instead of contrast. 
Who, without having the specific object in mind, 
would, after observing with reasonable care the 
drawing of patent 51,253, and thereupon being 
handed a photograph of the plaintiff's exposition 
exhibit, say with confidence that the device covered 
by the drawing is not shown in the photograph? 
The point is that in the absence of contrasting 
color or size there is a striking similarity in gen- 
eral ai)pearance." 



50 



IN CONCLUSIOIf. 

We have thus at some length discussed the questions 
brought before this court by the appeals in these three 
cases, in the final outcome of wliich Holbrook, Merrill 
& Stetson are vitally interested for the reasons which 
we have set forth. 

When all has been said, however, we can add little 
in substance to the carefully considered opinion of 
Judge Dietrich, dismissing the bills of complaint in 
these three cases and in the case against Holbrook, 
Merrill & Stetson. Judge Dietrich heard all the evi- 
dence and saw the witnesses, gave painstaking consid- 
eration to all of the cases, and dismissed the bills. 

We respectfully submit for the reasons fully set 
forth in the opinion of the court below, and we trust 
helpfully amplified in the foregoing brief, that the de- 
cree in each case should be affirmed, with costs to the 
appellee. 

Dated, San Francisco, 
March 5, 1921. 

Nathan Heard^ 
Samuel Knight, 

Knight, Boland, Hutchinson & Christin, 
Of Counsel for Holbrook, Merrill d Stetson, 
Amici Curiae. 



Nos. 3616, 3617, 3618 



IN THE 



United States Circuit Court of Appeals 

For the Ninth Circuit 



Majestic Electric Development Company 

(a corporation), 

Appella7it, 
vs. 

Westinghouse Electric & Manufacturing 

Company, 

Appellee. 



APPELLANT'S REPLY BRIEF. 

[Filed by leave of court granted at the oral argument.] 



John H. Miller, 

Solicitor for Appellant. 



FILED 

( 

I 



PKBNiT7-WALSH PBINTINO CO. 



Nos. 3616, 3617, 3618 

IN THE 

United States Circuit Court of Appeals 

For the Ninth Circuit 



Majestic Electric Development Company 
(a corporation), 

Appellant 
vs. 

Westinghouse Electric & Manufacturing 
Company, 

Appellee. 



APPELLANT'S REPLY BRIEF. 

[Filed by leaye of court granted at the oral argument.] 



Preliminary Objection. 

At the oral hearing appellee's counsel handed up to 
the court a portfolio containing what he said was pho- 
tostat copies of "the exhibits in the case". In that 
portfolio are what purport to be photostat copies of 
an English patent No. 12,320 to Kempton, and also an 
English patent No. 102,070 to Taylor. We protest this 
procedure because neither of said English patents was 
offered in evidence in these cases. Neither one is an 



exhibit, and appellee's counsel has no right to hand up 
to the court copies of said patents and ask this court 
to give consideration to the same when rendering its 
decision. 

We pointed out at the oral argument the injustice 
to us which would arise from such a course. If these 
English patents had been put in evidence at the trial 
we would have been entitled to meet them by counter- 
evidence, and that we surely would have done; but in- 
asmuch as they were not put in evidence, we did not 
meet them by any counter showing. We would have spe- 
cially made a counter showing in respect of the Taylor 
jrntent by carrying the date of our invention of the 
second design patent back of the date of the Taylor 
patent, and that would have nullified the effect of the 
Taylor patent; and as to the Kempton patent, we could 
have countered by showing that it related only to a 
gas stove made stationary in a fire place and did not 
relate to an electric heater at all, much less to a port- 
able electric heater of the character involved in this 
case, and that it had neither the appearance nor func- 
tion of Brown's heaters. 

The inclusion of these two patents in these cases by 
the lower court is one of the errors of which we com- 
plain. That they were both considered by Judge Die- 
trich to be of controlling effect is apparent from the 
face of his opinion.^ In that opinion (page 28 of the 
record, case 3616) it is said: 

"But aside from the Shoenberg patent, the principle is 
clearly disclosed in the earlier patents and in the prior 



art. In English patent No. 12,320, Kempton claimed that 
by the use of a reflector of 'parabolic or conical shape', 
located in a fireplace or in open space, for the purpose of 
throwing the heat into the room, gas could be used for 
heating purposes as cheaply as coal. He shows a gas jet 
in the same relation to the reflector as here the resistance 
coil." 

Also at page 29 of the same record appears the fol- 
lowing : 

"Material also are the Warner patent * * * and 
the Taylor patent of November 16, 1916 (English, No. 
102,070)." 

Also at page 32 appears the following: 

' ' Moreover the design is almost identical with that shown 
in Figure 1 of the Taylor patent above referred to 
(English patent 102,070). Substantial identity is ex- 
pressly conceded by counsel for the plaintiff, who, how- 
ever, contests the priority of the Taylor patent. It is 
true that while this patent was applied for on January 
11, 1916, it was not finally issued until November 15, 
1916. It is further true that Brown's 'invention' as 
disclosed in his mechanical patent and his design patent 
51043 (covering the annular flange) was made as early 
as April, 1916, although the patents were not applied 
for until the following year. But if there is any evi- 
dence that the design invention of 51,253 antedates the 
application, which was filed July 10, 1917, it has escaped 
my attention. It is not without significance that in the 
application for the Taylor patent, made before any of 
the Brown 'inventions', the applicant carefully limited 
her claim with the explanation that she was 'aware that 
it is not broadly new to construct an electric radiator 
witb a resistance wire wound spirally upon a tubular 
member of refractory material, such resistance element 
being mounted in front of a reflector, with a protecting 
guard in front of the element'." 



It must be apparent from the foregoing excerpts 
that the Kempton and Taylor British patents had a 
material effect upon Judge Dietrich's mind and that 
his conclusion was largely influenced thereby, notwith- 
standing the fact that neither of said English patents 
was in evidence in these cases against Westinghouse. 

And we again call the court's attention to the state- 
ment of Judge Dietrich that ''substantial identity is 
expressly conceded by counsel for plaintiff, who, how- 
ever, contests the priority of the Taylor patent". This 
is misleading. That concession was not made in the 
Westinghouse cases. It was made only in the Holbrook, 
Merrill & Stetson case in respect of our first design 
patent. No. 51,043, and then its effect was nullified in 
that case by carrying the date of Brown's invention 
back of the date of the Taylor patent. 

There was no such procedure follow^ed in the West- 
inghouse cases, nor was there any occasion for such 
procedure, and that for the simple reason that the 
English patent was not in evidence in the Westing- 
house cases. Yet the opinion of the lower court in 
respect of our second design patent, 51,253, charges 
us with having conceded its substantial identity with 
the Taylor English patent without having carried the 
date of our invention back of the English patent, and 
when we reach this court we are confronted with that 
supposititious situation with no means for meeting it. 
This is clearly an injustice to us. Every litigant is en- 
titled as of right to meet the evidence of his adversary 



by a counter-showing. Yet this privilege is denied us, 
if the English patent is to be considered. 

It is argued in appellee's brief that Judge Dietrich 
by reference made these English patents a part of the 
instant case. But this is just what we complain of. 
The learned judge of the lower court had no authority 
to make these English patents "a part of the instant 
case". We think for this error alone, if for none 
other, the decrees in these cases must be reversed. 

As further showing error in this behalf, it is to be 
noted (page 32 of the record, case 3616) that the lower 
court gave effect to the Taylor English patent as of the 
date of its application, to wit, January 11, 1916, in- 
stead of limiting it to its date of issuance, to wit, No- 
vember 16, 1916. This is a plain and palpable error. 
Under the statute, English patents are effective against 
an American patent only as of the date of the .issuance 
of the English patent and cannot be carried back to the 
date of the application. It was so held by this court 
in Perfection Disappearing Bed Co. v. Murphy Wall 
Bed Co. (262 Fed. 698, 700), following Bates v. Coe (98 
U. S. 31), and Dubois v. Kirk (158 U. S: 58). That the 
lower court erred in this behalf seems plain. 



As to Validity of the Design Patents. 

In our opening brief we did not discuss the ques- 
tion of validity of our first design patent, No. 51,043, nor 
our mechanical patent 1,245,084, because we did not 



6 



consider that question to be before this court for re- 
view. The lower court did not find those patents in- 
valid. It merely found that they were not infringed. 
We looked upon this as a holding, at least inferentially, 
that the patents were valid. Hence we refrained from 
discussing that question in our opening briefs in those 
cases. Counsel for appellee now attacks the validity of 
these patents. Hence we have obtained permission from 
the court to file this reply brief, and we entitle it in 
all three cases, discussing first the design patent and 
then the mechanical patent. 



DESIGN PATENT 51,043. 

The first ground advanced hy appellee in this hehalf 
is that every element of the design patent has a func- 
tional purpose and no other, and that no part of the 
structure can he omitted or changed without destroying 
its functional character, from which he concludes that 
the patent is invalid. In other words, it is asserted that 
the form of each element is purely functional, and that 
such form cannot be changed without destroying the 
function, from which it is insisted that the design is 
not the proper subject matter of a design patent. 

This is an erroneous conception. It may be con- 
ceded that in order to produce a heater performing the 
utilitarian function desired, it is necessary to have 
certain generic elements, viz, a support, a reflector, a 
heater element, and a protective device in front of the 
reflector. Those are the generic elements of a portable 



electric heater; but it is by no means necessary that 
those several x^arts must have the specific form dis- 
closed by the plaintiff's design. The distinction is be- 
tween the generic form and the specific form. Plain- 
tiff's design does not undertake to cover the generic 
form; it covers only the specific form. That specific 
form produces a certain appearance of pleasing aspect, 
and it is that appearance which is covered by the de- 
sign patent. Defendant has adopted our specific form, 
or a colorable imitation thereof, and that is our com- 
plaint. 

Our specific form consists of a substantial circular 
base plate, an upright standard extending from the 
center of the base plate, a concavo-convex reflector of 
parabolic or substantially parabolic contour, a cylindri- 
cal tubular heating element arranged as near the focus 
of the reflector as is possible, and a protective cage of 
arched guard wires extending from the rim of the re- 
flector and meeting at a central point in front, thereby 
producing a distinctive appearance. 

The defendant has adopted all of these forms, or 
merely colorable imitations thereof. He has adopted 
the identical form of circular base plate, even simu- 
lating tlic color. He has adopted the ujjright stand- 
ard positioned in the center of the base plate, though 
he had added thereto a U-shaped yoke at the top of the 
standard, which U-shaped yoke, however, is not seen 
from a front view of the lieator, but is concealed from 
view l)ack of the heater. 



8 



He has adopted substantially the same form of re- 
flector, the only change in that behalf being that instead 
of making it mathematically parabolic he has made it 
hemispherical; bnt this difference cannot be detected 
by the eye and the appearance of the two is identical. 

He has adopted the same form of electric heater ele- 
ment as ours arranged as near to the focus as is pos- 
sible, and has merely changed it from the horizontal 

to the longitudinal position. 

* 

And finally he has adopted the same form of protec- 
tive cage, consisting of guard wires arched over the 
front of the reflector. 

He could have adopted a different form of base plate 
and standard without impairing the functional utility 
of those devices. For instance, he could have used the 
four-legged stand and ornamental support shown in 
defendant's exhibit 8 (Plexsim Heater); or that shown 
in defendant's exhibit 12 (Ferranti Fire); or that 
shown in his own Geiger patent, defendant's exhibit Gr; 
or he could have used an ordinary tripod j or a square 
base plate; or the triangular base plate illustrated in 
one of the devices exhibited at the oral argument, or the 
differently shaped and fluted base plates of some of 
the illustrations exhibited at the oral argument; or a 
fluted Greek column as shown in the Majestic Device 
No. 2 ; or any one of the hundreds of different forms of 
base plate and supports known to the prior art in other 
connections. But instead of adopting any of these, he 
adopted the identical specific form of base plate of the 
plaintiff, even simulating the color. 



As to tlie heater element, he might have adopted 
other forms shown in the prior art, such, for instance, 
as a pyramidal form, or elliptical form, or circular 
form. But instead of so doing he adopted the same 
form as that shown by the plaintiff, to wit, the cylin- 
drical tubular form, varying from the patent only in 
the matter of its inclination. 

As to the protective wire cage, he could have adopted 
the flat wire mesh screen shown in defendant's ex- 
hibit 8 (Plexsim Heater) ; or the double curved form 
shown in defendant's exhibit 9 (Plexsim) ; or the flat 
wire forms shown in defendant's exhibit 15 (Wm. Por- 
ter Sons Co. and Benjamin Electric Co.) ; or the flat 
wire mesh screen shown in the Morse patent, defend- 
ant's exhibit F; or he could have dispensed with the 
wire cage entirely. If he had used any of these prior 
forms, he would still have preserved the functional util- 
ity of the device, though it would have presented an 
entirely different appearance. But instead of adopting 
any of these prior forms he adopted the same form of 
arched wire guard shown in the plaintiff's patent, and 
by so doing Iffe reproduced the same general appear- 
ance of the device as that shown by the plaintiff's pat- 
ent. 

It is the use of these specific forms that ive complain 
of as infringement of the design patent. 

We are not unmindful of the fact that the defend- 
ant has changed the flat flange around the rim of the 
reflector to the form of a curved flange and has changed 
the inclination of the heater element, but we insist that 



10 



these changes have not produced a change of appearance 
sufficient to avoid infringement; and in that behalf we 
rely upon the evidence in the case, to wit, the testimony 
of witnesses Labatt, Hiller, and Wentworth. 



MISAPPLICATIO> OF A RULE OF CONSTRUCTION. 

And on this particular point we again reiterate that 
both the judge of the lower court and the counsel for 
appellee in this court have applied as a rule of con- 
struction to this design patent a rule applicable only 
to the construction of a mechanical patent. That rule 
as applied to mechanical patents is that where a de- 
fendant has omitted one of the elements of the pat- 
ented combination without the substitution of a me- 
chanical equivalent, he breaks the combination and 
does not infringe. The rule is too familiar to re- 
quire the citation of authorities. But this rule is not 
applicable to design patents unless the omission of the 
element produces a different appearance of the article 
as a whole. In the case of a design patent, if omis- 
sion of one element or part produces a different ap- 
pearance of the article as a whole, then the rule ap- 
plies and there is no infringement. But if the omis- 
sion of that element does not produce a different ap- 
pearance of the article as a whole then the rule does 
not apply, and infringement follows. In other words, 
in the case of a design patent the omission of one 
element of the design does not avoid infringement 
where such omission does not change the distinctive 
appearance of the design as a whole. 



11 



In this Case the appellee says one of the elements 
of the first design patent is the flat annular flange; the 
appellee has omitted that flange; therefore, there is 
no infringement. If this rule had been applied to a 
mechanical patent, the argument would be sound; but 
it is here sought to be applied to a design patent, and 
in such case the additional question must be asked, 
does the omission of the flat flange produce a different 
appearance of the article as a whole from that of the 
patented design? If this question be answered in the 
negative, then the omission of the flat flange is imma- 
terial. Here is where the learned judge of the lower 
court made the error. He held that the omission of 
the flat flange ipso facto avoided infringement just as 
in the case of a mechanical patent. But the crucial 
question is, does the omission of the flat flange pro- 
duce a different appearance of the article as a whole? 
That the answer to this question must be in the nega- 
tive is shown by the testimony of Labatt, Hiller, and 
Wentworth. 

"Details in the matter and manner of construction of 
a desi^ patent are unimportant except insofar as they 
enter into the ordinarily observant man's conception or 
impression of the whole design. It is the picture made 
upon his mind in general, which governs, not the minor 
differences which close examination would reveal, nor 
those which might catch the scrutinizing eyes of an 
expert." 

Bolte V. Knight, 180 Fed. 415. 

"It is by no means necessary that the patented thing 
should be copied in every particular. If the infringing 
design has the same general appearance, if the variations 



12 



are slight, if to the eye of an ordinary person the two 
are substantially similar, it is enough. It is of no con- 
sequence that persons skilled in the art are able to detect 
differences. Those who have devoted time and study 
to the subject, who have spent their lives in dealing in 
articles similar to those in controversy, may see at a 
glance features which are wholly unimportant and un- 
observed by those whose pursuits are in other directions, 
and v/ho are attracted only by general appearances. If 
the resemblance is such that a purchaser would be de- 
ceived, it will not aid the infringer to show that he has 
deviated slightly from a straight line in one place and 
from a curved line in another, or that he has added or 
omitted something which an expert can discover." 

Tomkinson v. Willets, 23 Fed. 895. 

In Redtvay v. Ohio Stove Co., 38 Fed. 584, the de- 
sign was for a cooking stove embodying a collection 
of different features, and among tbem a representa- 
tion of a bird and a butterfly. These latter features 
were omitted from the defendant's ^tove. In holding 
infringement the court said, at page 584: 

"The defendant's design omits the bird and the but- 
terfly, and in other but minor details is different from 
the complainants', but the general appearance and effect 
of the two are the same, and bring the defendant's de- 
sign clearly within the rule laid down in Gorham v. 
White, cited supra. The Supreme Court say in that 
case that the acts of congress which authorize patents 
for design contemplate not so much utility as appear- 
ance, and that 'the law manifestly contemplates that 
giving certain new and original appearances to a manu- 
factured article may enhance its salable value, may en- 
large the demand for it, and may be a meritorious service 
to the public. * * * Manifestly the mode in which 
these appearances are produced has very little, if any- 
thing, to do with giving increased salableness to the 
article. It is the appearance itself, therefore, no matter 



13 



by what agency caused, that constitutes mainly, if not 
entirely, the contribution to the public which the law 
deems worthy of recompense. The appearance may be the 
result of peculiarity of configuration, or of ornament 
alone, or of both conjointly, but, in whatever way pro- 
duced, it is the new thing or product which the patent 
law regards'. Now, add to this the further considera- 
tion taken from the decision of the court in that case, 
that 'the purpose of the law must be effected, if possible; 
but plainly it cannot be if, while the general appearance 
of the design is preserved, minor differences of detail 
in the manner in which the appearance is produced, 
observable by experts, but not noticed by ordinary ob- 
servers, by those who buy and use, are sufficient to relieve 
an imitating design from condemnation as an infringe- 
ment', and we are forced to the conclusion that the omis- 
sions and changes in the design as used by the defendant 
do not relieve it from liability as an infringer, nor does 
the fact that it used its own name and the name of its 
own stove, conspicuously displayed, in connection with 
the design." 

In the case of George Borgfeldt v. Weiss, 265 Fed. 
268, the patent covered a doll having a bathing cap on 
its head. Defendant's doll omitted the cap. Here was 
a case of omission of an element. Infringement was de- 
creed. Pictures of the two dolls are shown at page 
270 of the report. If Judge Dietrich's decision is good 
law, then there would have been no infringement in the 
doll case. 



ALLEGED WANT OF INVENTION IN DESIGN PATENT 51,043. 

It is urged by appellee that the first design patent 
is void for want of invention in view of the prior art 
''because the design of the patent in suit embodies 



14 



only what was taken from a well developed prior art'* 
(Appellee's brief, p. 43). 

This means that each element of the patented design 
was taken from the prior art, one element from one 
source and another from another source, and so on. 
But this does not necessarily render the patent invalid. 
Brown was entitled to borrow all the elements from 
the prior art, and to assemble them together into a 
new collocation. If such new assemblage produces a 
new appearance, then the patent is valid, notwithstand- 
ing the fact that each individual element was old. 

At page 24 of appellee's brief, it is admitted "that 
no one of the defendant's exhibits discloses all of the 
features of the patented design having the same co- 
operative relation as is there set forth". This conces- 
sion is fatal to the appellee, because it admits that 
Brown made a new assemblage of elements. That is 
what the design statute protects, and it is idle for ap- 
pellee to argue that the patent is void because all of its 
elements individually and in different locations were 
old. Does he pretend to say that a combination of old 
elements is not patentable? It would so seem from his 
brief. 



QUESTION OF INFRINGEMENT OF DESIGN PATENTS. 

The main contention of our adversary on this point 
is that such resemblan-ee as exists between the heaters 
of plaintiff and defendant is that resemblance only 
which arises from functional characteristics. In other 



15 



words, it is contended that all portable heaters ''look 
alike" from a generic point of view. To use the exact 
words, the brief says at page 34: 

"The defendant's heater resembles the plaintiff's 
heater only because they both embody the same num- 
ber of main elements or features having the same gen- 
eral arrangement and substantially the same color." 

This argument is not sound. We are not complain- 
ing of the defendant's heater because it has "the same 
number of main elements or features having the same 
general arrangement and substantially the same color", 
that is to say, because it has the same generic ele- 
ments. What we are complaining of is that the de- 
fendant's heater embodies the same specific form of ele- 
ments, or colorable imitation thereof, covered bv the 
plaintiff's patent, thereby producing the same general 
appearance. 

Right here lies the crux of the whole controversy. 
Defendant had the right, without infringing, to use the 
same number of generic elements or features, possessed 
of the same functional characteristics as those of the 
plaintiff; but the defendant did not have the right to 
adopt the specific form of those elements covered by the 
plaintiff's patent whereby a distinctive appearance of 
the article as a whole is produced. 

To lose sight of tliis distinction is to ignore the 
fundamental character of a design patent. Strictly 
speaking, there is no such thing under the law as a 
generic patent for a design. A patent for a design is 



16 



necessarily specific, and the distinction existing be- 
tween generic and specific inventions as applied to me- 
chanical devices is unknown to the law of design pat- 
ents. This necessarily results from the fact that a 
design patent covers only the appearance of an arti- 
cle, and cannot be infringed unless that appearance is 
reproduced by the infringing structure. We repeat 
that every design patent is necessarily specific, and, 
therefore, when considering such patents the court is 
relieved from considering any of those rules of con- 
struction applicable to generic and specific claims in 
the matter of mechanical patents. Every design pat- 
ent which is without a specification covers only what is 
shown and illustrated in the drawing, or colorable im- 
itations thereof. Therefore, the question here* is not 
whether the two heaters are generically alike, nor 
whether they contain the same number of main ele- 
ments having the same general arrangement, but the 
question is whether they have the same specific fea- 
tures and produce the same general appearance to the 
eye of an ordinary observer. 



POLISHED COPPER REFLECTOR. 

It is further insisted by our adversary that the simi- 
larity of appearance between the heaters is due to the 
polished copper reflector, and that feature is the main, 
if not the only, cause of similarity in appearance. This 
is purely the opinion of appellee's counsel. It may be 
conceded that the copper reflector contributes to the 



17 



similarity. But it is not the sole contributing cause. 
The other features play an important part, and espe- 
cially is this true of the protective cage made of 
arched guard wires. That feature gives as much of a 
distinctive characteristic to the article as does the 
copper bowl. The defendant could easily have avoided 
this by adopting some other form; but instead of 
adopting some other form he adopted the specific form 
shown in the plaintiff's patent. And the same may be 
said of the circular base plate. It was not necessary 
to the functional utility of his device that he should 
have adopted these specific forms. He could have 
adopted other forms producing the same functional 
utility and at much less cost of manufacture. It is ap- 
parent to any one versed in such matters that the cost 
of the arched wire form is greater than the cost of some 
other form, such, for instance, as a flat wire screen, or 
four strands of wire disposed flatwise across the mouth 
of the reflector. Why did the defendant decline to 
adopt one of these cheaper forms, which would have 
produced the functional utility he desired, but instead 
thereof adopted the more expensive complicated and 
ornate form of arched guard wires? We insist that 
the protective cage of arched guard wires is one of the 
material contributing factors in the general appear- 
ance of the article, as much so in fact as the copper re- 
flector, and that in adopting that form, together with 
the other similar features defendant has produced a 
heater having the same general appearance as that of 
the plaintiff. 



18 



Reply to the Amicus Curiae. 

Hollbrook, Merrill & Stetson were permitted to file 
a brief as amicus curiae. On page 33 of that brief it is 
stated that a design patent must be the result of ''in- 
ventive genius". If by that term is meant anything 
more than the faculty of invention in its lowest form, 
the statement is erroneous. In support of his asser- 
tion the amicus curiae cites the language of Judge Ross 
in the case of Hammond v. Stockton Works, 70 Fed. 
716. But that language merely says that in the case of 
a design patent there must be the exercise of the "in- 
ventive faculty", and then says that this must be so 
because the statute so provides. There is certainly 
nothing in Judge Ross's opinion about "inventive 
genius." 

On the other hand, in S^nith v. Stewart, 55 Fed. 482, 

the opinion says: 

"It would seem absurd to say that the designs cov- 
ered by these patents, generally, exhibit the exercise of 
'inventive genius', as the term is commonly applied to 
mechanical inventions. ' ' 

And at page 483 of that decision it is said: 

"The invention in the majority of patented designs is 
very small and of a low order. All the statute, as com- 
monly interpreted, requires is the production of a new 
and pleasing design, which may add to the value of 
the object for which it is intended." 

And the syllabus of the case says: 

"The invention and novelty required in the case of 
design patents is very small and of low order, and differs 
from the novelty and invention required for mechanical 



19 



patents. All that the statute requires in the case of 
designs is the production of a new and pleasing design 
which may add value to the object for which it was 
intended." 

Yet in that case the court sustained the patent and 
decreed infringement. And on the question of infringe- 
ment the court said at page 483: 

"Did the defendants infringe? They copied the rug 
literally except the border * * * Tt^e common ob- 
server would not discover any difference between the 
plaintiff's and defendants' rugs, granting that the bor- 
ders are dissimilar." 

And in Untermeyer v. Freund, 37 Fed. 345, we find 
the following language: 

"It is impossible to read the literature upon this sub- 
ject without being convinced that the courts, though ap- 
plying the same rules, have looked with greater leniency 
upon design patents than patents for other inventions. 
From the nature of the case it must be so. A design 
patent necessarily must relate to subject matter com- 
paratively trivial." ^ 

And in Gorham v. White, 14 Wall. 525, the following 

language with reference to the design patent is used: 

"To speak of the invention as a combination or 
process, or to treat it as such, is to overlook its pecu- 
liarities." 

The amicus curiae also asserts that the design patent 
is invalid because its shape or configuration results from 
functional reasons and for a functional purpose, and that 
all the features of the design oive their shape or con- 
figuration to the functional purpose (pp. 33-5). This 
is a repetition of the error committed by appellee's coun- 



20 



sel and heretofore adverted to by us. We most em- 
phatically deny that ''all the features of the plaintiff's 
device are provided for and owe their shape or configu- 
ration to functional purposes (p. 35). We have already 
pointed out that the device has non-functional charac- 
teristics and that such non-functional characteristics 
produce the pleasing appearance protected by the patent. 
By this we mean that while the features of our design 
have functional utility, nevertheless the specific form 
of those features produces a patentable appearance. Our 
complaint is not that the defendant has adopted the 
generic features of our heater, but the specific features, 
and while he could have adopted other specific features 
differing from ours in form but accomplishing the same 
functional utility, nevertheless he adopted our specific 
form, or a colorable imitation thereof. 

The amicus curiae grows tremendously excited over 
the case of Ferd Messmer Mfg. Co. v. Pick d Co., 251 
Fed. 894, and seems to think it is decisive of the ques- 
tion here involved. On page 895 of the citation is 
shown a cut of the design and it consists simply and 
solely of an ordinary glass tumbler provided with a 
circular bulge or ridge around the upper part and 
formed integral with the glass of the tumbler. The 
plaintiff had two patents on that insignificant device, 
one a mechanical patent and the other a design. The 
court held the mechanical patent valid and the design 
patent invalid. That portion of the opinion holding 
the design patent invalid comprises six lines at the 
bottom of page 896, and they read as follows: 



21 



"The bulge of the patented glass cannot be said to be 
ornamental within the meaning of section 4929 of the 
Revised Statutes (Comp. St. 1916, §9475). There is 
nothing in the bulge of the patented glass which would 
appeal to the esthetic emotions or to our idea of the 
beautiful. While the bulge may be new and useful, we 
cannot say that it has added anything to decorative art." 

How the amicus curiae can take any comfort from 
this decision passes our comprehension. It is merely 
a case where the court found as a fact that a certain 
thing was not ornamental. It is of no more value in 
the present case than would be the general assertion 
that sometimes the courts have held design patents in- 
valid because they did not come within the purview of 
the statute. 

Another case specially relied upon by the amicus > 
curiae is that of Kruttschnitt v. Simmons, 118 Fed. 851, 
discussed at pages 43-4 of the brief. There the patentee 
took "plain sheets of aluminum", which of course were 
old and well known in the art, and placed around the 
edge of such sheets an ornamental border of a specific 
form consisting of a "scrolled figure suggestive of a 
distorted Greek pattern having a mottled surface and a 
rectangular inner defining border line". The defendant 
manufactured "bordered aluminum signs having pat- 
terns differing so widely from the patented design as 
not to infringe the same." In other words the patent 
covered the border around the aluminum plate, and of 
course no one could infringe that patent without using 
that border or a colorable imitation thereof. Defend- 
ant used neither the specific border nor a colorable 



22 



imitation thereof. Therefore, he did not infringe be- 
cause he had not used the thing patented. There is no 
difficulty about that case, because it was solely a ques- 
tion of fact. The patent was held valid, but not in- 
fringed. 

The case has absolutely no bearing on any issue in 
the instant case; but we are grateful to the amicus 
curiae for citing it, because it fully sustains us in the 
contention which we have heretofore made in answer to 
the brief of appellee, and that contention is that there 
can be no such thing as a generic claim in a design 
patent which has no specification, and that the only 
claim which can be had in such case is necessarily a 
specific claim. In the case cited plaintiff sought to 
extend his patent to an aluminum plate having any^ kind 
of an ornamental border. In fine, he claimed a generic 
patent for a bordered aluminum plate without reference 
to the specific form of the border. The court denied 
him this, and held that his claim was confined to the 
specific form or character of border illustrated in his 
patent and that the defendant could use an aluminum 
plate provided it had a different kind of border. This 
is our precise contention. We make no claim to generic 
features, but only to specific features, and our ground 
of complaint is that the defendant has used those specific 
features or colorable imitations thereof. 

We apprehend that the reason why the amicus curiae 
cited the aluminum sign case resides in the fact that 
the defendant's plates could be and were sold as and 
for the aluminum plates of the plaintiff. But this is 



23 



wholly beside the mark, because the defendant had not 
used plaintiff's invention at all. Defendant had not 
been sued generally for passing off his goods as those 
of the plaintiff, but he had been sued for using that 
invention. It became wholly immaterial, so far as the 
patent was concerned, whether the defendant's goods 
had been passed off as those of the plaintiff or not. 
For such a situation the law of unfair competition may 
apply, but not the law of patents. Indeed, the court held 
specifically that for the reason that the defendant had 
not infringed the patent, the familiar test of the eye of 
an ordinary observer could not be applied. Where no 
infringement exists, as a matter of fact, it is idle to 
discuss the tests of infringement where such infringe- 
ment does exist. We submit that the aluminum sign 
case has no more bearing on the instant case than the 
bulge tumbler case. 

In this connection the amicus curiae, with a singu- 
lar disregard of consistency, cites the follow^ing lan- 
guage of this court from the case of Zidell v. Dexter, 
262 Fed. 145: 

"In a design invention which consists only of bringing 
together old elements with slight modifications of form, 
the invention consists only in those modifications, and an- 
other who uses the same elements with his own variations 
of form does not infringe, if his design is distinguishable 
by the ordinary observer from the patented design". 

This is another and a positive and direct confirma- 
tion of our position. Our invention consists in bring- 
ing together old elements with such modifications of 
form as were deemed desirable or necessary for pro- 



24 



ducing a new and pleasing appearance. In tlie words 
of this court, ''the invention consists only in those mod- 
ifications". This is in accordance with the theory here- 
tofore advanced by u& that all design patents without 
a specification are necessarily specific in character. Of 
course, if another person "uses the same elements with 
his own variations of form, he does not infringe, if his 
design is distinguishable by the ordinary observer from 
the patented design". There could not be a better 
statement of the law. But where the defendant does 
not use "his own variations of form", but insists on 
using the ijlaintiff's variations of form, he comes di- 
rectly within the purview of Judge Gilbert's language, 
and is an infringer. The defendant has used our modi- 
fications of form, indeed our specific form, in several 
particulars, the principal ones of which consist in the 
base plate with its upright standard to a certain point, 
the form of reflector, the form of tubular heating ele- 
ment, and the form of wire cage over the mouth of the 
reflector. The only variations of form which he has 
introduced consist of a different inclination of the heat- 
ing element and the omission of the annular flange. But 
these variations of form, we contend, do not change 
the general appearance of the article at all, and that is 
the question to be answered by this court. 

Another point made by the amicus curiae is that 
hath the mechanical patent and the design patent are 
directed to the same device. In other words. Brown's 
heater No. 7 is protected both by a mechanical and a 
design patent. It would seem from the brief of the 



25 



amicus curiae that he challenges such procedure. While 
he does not assert directly, he seems to contend that 
an inventor cannot in any case have both a mechanical 
and a design patent for the same structure. To sus- 
tain him in that contention he cites the bulge tumbler 
case heretofore referred to. That case makes no such 
broad ruling. It does rule that in that particular 
instance the design patent was invalid, not however 
because of the existence of the mechanical patent, 
but because of the fact that the design as a design was 
not ornamental. 

It is too well settled to admit of controversy that 
there is no inhibition against taking out both a 
mechanical and a design patent for the same structure 
in some instances. The books are full of such cases, 
and if the learned counsel for the amicus curiae were 
asked the direct question, he would undoubtedly answer 
it in the same way we have answered it. 

Another point made hy the amicus curiae, on pages 
40-41 of his brief, is the assertion that the feature of 
these heaters which makes the impression on the mind is 
the copper hoivl. He argues that the copper reflector 
is the dominant feature of the article and the thing 
which gives to the article its peculiar and distinctive 
appearance. On ]iage 42 he says that the ''copper 
colored glowing bowl is a vitally characteristic ap- 
pearance factor". In fact he says that the copper 
reflector "pushes into the background all remem- 
brance of minor details of shape or configuration" 
(p. 41). 



26 



And then with strango inconsistency he refers to the 
statement of this court in Zidell v. Dexter, that in a 
design patent, where there is no specification, it is im- 
possible to tell what the inventor considered the promi- 
nent feature. 

In respect of this situation ^^'e repeat what we have 
heretofore said in another portion of this brief. It 
may be true that the copper reflector is one feature 
which contributes to tlie general appearance; but it is 
onJi/ one of such features. All the other features like- 
wise contribute to the general appearance, because it 
is the appearance of the article as a whole, which ap- 
pearance is produced by a combination of all the 
features, that is covered by the patent. Is it not 
possible for the amicus curiae to get into his head the 
indisputable fact that in case of a design patent it is 
the general appearance of the article as a whole which 
is covered by the ])at(Mit? It is impossible to pick out 
any one particular element and say that it produces 
the general appearance of the article as a whole. A 
design patent without a specification covers the general 
appearance of the article as a whole disclosed by the 
drawing, and it is idle to argue that any one particular 
feature of the drawing is the thing which produces the 
general appearance of tlte n-Jiole. Can a part be the 
whole of a thing? 

In a decision of this court in Zidell v. Dexter, 262 
Fed. 147, it is said: 

"As already sliown. wo have no means of knowing 
which, in the mind of the inventor, was the predominant 
feature of his design". 



27 

And so luM-c we say tlicrc is no way of asccriaininL^" 
whether any particular feature ol' ilu' design was con- 
sidered by tlie patentee to be tlie predominant feature, 
or, if so, Avhat was that featur-e. All w(^ know is that 
the patentee gathered too(»th(^r from tlie [)ri()i- art all of 
the several features of his design, one from one source 
and another from anotluM' source, and combined (Ikmu 
into one c()m})osite assemblage. Such a ix'rroiinance, 
says tliis court in Zidcll r. Dc.rfcr, does not disprove 
invention. 

Nor is it ai)pai'ent what, if any, |)ai'licnlar eleuKMit 
of the design strikes tiie public as the predominant 
feature. One may be attracted by the copiier refh'ctoi', 
another by the arched guard wires, or another by the 
form of the stand. By what authority, therej'ore, does 
the amicus curiae assert in his ex cathedra fashion that 
the predominant feature of tlu^ design is th(> iiolisluMl 
copper bowl, which pushes into the background all the 
other features, and is tJie feature which gives to ihe 
article as a whol(> its distinctive and .characlei'islic ap- 
pearance? The argument evinces a total misconct^p- 
tion of the theory and the natin'e of a design patent. 

Another point made by the duiicus curiae is thai it 
is impossible for the siiifjle structure of liedler of llie 
defendant to infrinffe tlie tiro separate and distinct 
design patents ivhich relate to llic entire device, flis 
argument is })ased on a mathematical formula and is in 
sid)stance as follows: If the defendant's lu^ater is 
ecpial to the first design patent and also etpial to the 
second design patent, then it follows that the first design 



28 



is equal to the second design, because of the axiom that 
two things equal to the same thing are equal to each 
other. The amicus curiae may be a profound mathe- 
matician, but we venture to suggest that we are not 
discussing a question of mathematics. To say that 
defendant's heater is an infringement of the two design 
patents is not equivalent to the mathematical state- 
ment that "one thing is equal to another", nor is 
it equivalent to saying that the tAvo designs are the 
same. Without question one structure may be an 
infringement of two patents, and that entitles the patent 
owner to sue on both patents. But it does not follow 
therefrom that the device of one of the patents in 
question is an infringement of the other patent, nor 
that the devices of the two patents are the same. The 
mathematical argument of the amicus curiae is, in our 
opinion, mere sophistry. 



THE MECHANICAL PATENT. 

Radiant Beam Principle. 
It is urged by the appellee that this patent does not 
cover the radiant beam principle, but is limited solely 
and entirely to the two protective devices consisting 
of the dead air space in the rear of the reflector and 
the flat marginal flange around the rim of the reflec- 
tor (appellee's brief, p. 8). In the brief of the 
amicus curiae the same position is taken, and at page 
8, when referring to these two protective elements, it 
is asserted 

"and they alone constitute the sole object and purpose 
of the alleged invention". 



29 



Inasmuch as claim 1 of the patent does not mention 
the dead air space, but does mention the other protec- 
tive feature consisting of the annular member around 
the rim of the reflector, the position of our adver- 
sary is that in so far as claim 1 is concerned, the 
only novelty of the combination resides in the annular 
member, which he designates as "a broad peripheral 
rim or flange 3a" (p. 8, appellee's brief). In other 
words, the position is that Brown invented nothing 
more than a flat flange extending around the rim of 
the reflector. 

This position is sought to be sustained (1) by refer- 
ence to the patent itself and (2) by reference to the 
prior art. Permit us to briefly examine the matter 
from these two standpoints. 

As to the Patent Itself. 

The specification says, beginning at line 9, page 1: 

"This invention relates to electric heaters in which the 
heat waves are generated by a resistance coil or heating 
unit and are then reflected from a highly polished sur- 
face." 

And further along in the specification, beginning at 
line 24, it is said: 

"The radiator comprises a concavo-convex reflector 1, 
having a highly polished inner surface, and which is 
secured by screws or in other suitable manner to an 
outer casing 3 mounted on a base 4. The heating unit 
consists of a resistance coil 6, wound upon a refractory 
tubular core or bobbin 7, supported in any suitable man- 
ner in spaced relation with the reflector 1, and prefer- 
ably at the focus of its curved surface." 



30 



And further along in the specification, beginning at 

line 80, it is said: 

*'It will be evident that various changes and modi- 
fications can be made without departing from my in- 
vention, ' ' 

It is not difficult to gather from these excerpts that 
the patentee had in mind the radiant beam principle. 
The location of the heating unit preferably at the focus 
of the curved reflector necessarily implies substantial 
parallelism of the heat rays. Of course it goes without 
saying that in such a structure all of the heat rays 
vs^ill not be in exact parallelism because of the fact that 
the heating unit is of substantial dimensions, and, there- 
fore, cannot be located in its entirety at the mathe- 
matical focus. But at the same time it is located 
as near the focus as is physically possible. In such 
a construction, while some of the rays will not be in 
exact parallelism, nevertheless it is a fact that the 
majority of those rays will be in parallelism. Conse- 
quently, we can say with truth, in the sense of the 
patent law, that the heat rays of this device are in sub- 
stantial parallelism. The patent law does not call for 
mathematical exactness, nor indeed for any other kind 
of exactness, but only for substantiality. The only 
thing that can be charged against Brown in this connec- 
tion is that he did not make as full and complete a 
disclosure of the radiant beam principle as his machine 
exhibits. But, as we have already stated in our opening 
brief, it was not necessary for him to disclose the 
scientific principle of his device at all. He might have 



31 



been wholly ignorant of it, or being cognizant of it, 
he might have refrained from discussing it in its full- 
ness, and in this behalf we again call attention to Eames 
V. Andreivs, 122 U. S. 55, and Diamond Rubber Co. 
V. Consolidated Tire Co., 220 U. S. 435-6. 

In the first of these cases the Supreme Court says : 

"It may be that the inventor did not know what the 
scientific principle was, or that, knowing it, he omitted 
from accident or design, to set it forth. That does not 
vitiate the patent * * * The principle referred to 
is only the why and the wherefore. That is not required 
to be set forth * * *. An inventor may be ignorant 
of the sicentific principle, or he may think he knows it 
and yet be uncertain, or he may be confident of what it 
is, and others may think differently. All this is imma- 
terial if by the specification the thing to be done is so 
set forth that it can be reproduced." 

And in the second of the cases cited the Supreme 

Court used this language: 

"A patentee may be baldly empirical, seeing nothing 
beyond his experiments and the result ; yet if he has 
added a new and valuable article to the world's util- 
ities, he is entitled to the rank and protection of an in- 
ventor. And how can it take from his merit that he 
may not know all of the forces which he has brought into 
operation? It is certainly not necessary that he under- 
stand or be able to state the scientific principles under- 
lying his invention, and it is immaterial whether he can 
stand a successful examination. * * * He must indeed 
make such disclosure and description of his invention 
that it may be put into practice. In this he must be 
clear. He mnst not put forth a puzzle for invention or 



32 



experiment to solve, but the description is sufficient if 
those skilled in the art can understand it. 

This satisfies the law, which only requires as a condi- 
tion of its protection that the world be given something 
new and that the world be taught how to use it. It is 
no concern of the world whether the principle upon which 
the new construction acts be obvious or obscure, so that 
it inheres in the new construction." 

The substance of these cases is that it was unneces- 
sary for Brown to explain the radiant beam principle 
in his specification. That principle was "only the why 
and the wherefore". All that was required of him, and 
all that is required of any patentee of a mechanical 
device, is to disclose to the world how to build the 
machine, so that it may be put into useful practice. 
That Brown's specification fulfills this requirement can- 
not be doubted. It discloses to a person skilled in the 
art how to build the machine and put it into practice, 
and that is all that the law requires. 

In support of their contention that the specification 
does not describe the radiant beam principle, our adver- 
saries cite the following clause from Brown's specifi- 
cation : 

"One of the main purposes of my invention is to pro- 
vide an electric heater or radiator in which the highly 
heated portions are inclosed by protecting members, but 
one readily accessible for examination or repair." 

And of this it is said on page 7 of the appellee's brief: 
"This is a statement of the patentee's invention", etc. 



33 



This is entirely erroneous. The statement afore- 
said is not a statement of the patentee's invention. It 
is merely a statement of one of the purposes of the 
invention. It was not necessary for Brown to have 
stated any purpose of his invention. The invention 
does not reside in its purpose. It resides in the 
mechanism itself. It is a familiar rule that a patentee 
is entitled to all the benefits and advantages to which 
his invention may be put, whether stated or not. For 
that reason the law does not require him to state the 
purpose of his invention. This is elementary. 

In General Electric Co. v. Bullock, 152 Fed. 431, 

the Court of Ajjpeals of the Sixth Circuit said: 

"In a number of opinions of this court it has been 
held that it is not necessary for the patentee to describe 
in detail all the beneficial functions which he claims will 
result from his invention. It is enough if those functions 
are evident and obviously contribute to the success of the 
invention". 

In Morgan Eng. Co. v. Alliance Co., 176 Fed. 107, 
where the court of appeals of the Sixth Circuit was 
referring to a certain purpose of the invention not men- 
tioned in the specification, it was said: 

"Even if the patentee at the time of making his ap- 
plication did not know of this advantage, or knowing 
failed distinctly to express it, he, in view of what he did 
state and show, is entitled to have his invention considered 
with reference to it. Indeed, the crane cannot be con- 
structed and operated in accordance with the plain terms 
of his description without observing and securing this 
advantage. This alone is sufficient." 



34 

Paraphrazing the language of that decision, we say 
of the Brown invention that the heater shown and 
described in the Brown patent cannot be constructed 
and operated without utilizing and securing the bene- 
fit of the radiant beam principle. Such utilization in- 
heres in the mechanical structure itself. 

And in the case of Kellogg v. Dean, 182 Fed. 998, 
the Court of Appeals of the Sixth Circuit said : 

"It is objected that the advantage of avoiding side 
tones is not mentioned in the specifications. This is true. 
But this omission was not fatal if the advantage was 
necessarily achieved through the invention." 

Here too we may say that the advantage of the 
radiant beam principle is necessarily achieved through 
and by the mechanical structure shoum in Brown's 
patent. The patent teaches the world how to build that 
structure and that is enough. The omission to men- 
tion the radiant beam principle specifically in his speci- 
fication is of no moment whatever in the eyes of the 
patent law. 

But furthermore, the statement quoted does not say 
that the protective feature is the purpose of the in- 
vention, nor the only purpose of the invention. It 
merely says that such feature is one of the main pur- 
poses of the invention. If there are any other pur- 
poses of the invention, the patentee is just as much 
entitled to them as though he had stated them in totidem 
verbis. These principles of the patent law are too well 



35 

settled to admit of question. And furthermore, we 
again call the court's attention to the following para- 
graph, beginning at line 80 of the specification : 

* "It will be evident that various ebanges and modifica- 

tions can be made without departing from my inven- 
tion." 

The position* of our adversary comes down to this, 
that when Brown specified one of the purposes of his 
invention, he thereby limited himself thereto, and is 
not entitled to any other purpose for which the device 
might be used. This is an erroneous conception of the 
patent law. 

As to the Prior Art. 

It is next asserted that by reason of the prior art 
the patent in suit is necessarily limited, so far as 
claim 1 is concerned, to the protective device consist- 
ing of the annular member around the rim of the 
reflector. In other words, it is asserted that the radiant 
beam principle was old and well known at the time of 
Brown 's invention, and all that Brown did was to utilize 
that principle in a form of mechanism containing the 
annular member. The contention is, so far as claim 1 
is concerned, that Brown invented only said annular 
member and nothing else. 

The prior art referred to consists of the Morse, the 
Geiger, the Warner, the Shoenberg and the Simplex 
patents, together with the English publications of the 
Ferranti Fires. 



36 



Of these the Morse patent is the first in point of 
time, it being dated March 3, 1908. That device has 
but little relevancy to the issue. As we have already 
pointed out, it was merely a cupping instrument used 
by physicians to concentrate heat on a particular part 
of the human body, as a substitute for the old style 
remedy of a hot brick or hot water bottle. In fact the 
specification states that it is for the same purpose as 
"a hot water bottle" (Spec, line 55). It is nothing more 
than a collector of heat. The very utmost that can be 
said of it is that it is a vague prophecy of what after- 
wards followed. It is no more pertinent to a subse- 
quent successful device embodying the radiant beam 
principle than the prophecy of Mother Shipton would 
be as affecting the flying machine of the Wright 
Brothers. Prophecies are not inventions. 



THE ART FOLLOWING MORSE. 

The subsequent history of the art supports us in this 
contention, for the matter seems to have remained 
quiescent for many years. 

The first pertinent subsequent patent was that of 
Shoenberg, dated September 1, 1914, more than six 
years after the date of the Morse patent. Then fol- 
lowed the Simplex English patent on September 4, 
1914, four days after the Shoenberg patent; then the 
Warner patent, dated December 8, 1914, a little more 



37 



than three months after Shoenberg; and finally came 
Geiger on August 8, 1916. 

It would seem, therefore, that these four men be- 
came active in this matter at very nearly the same 
time, one in San Francisco, another in England, an- 
other in Massachusetts, and another in the employ of 
the defendant at Pittsburg. 

We are not unmindful of the fact that in 1912 and 
1913 the British publications contained illustrations 
of the Ferranti Fire. But we do not consider that 
device as having a material bearing on the issue, be- 
cause it was not a radiant beam heater, but a convec- 
tion heater, used largely for cooking purposes. 

We assert that this prior art is a substantial con- 
firmation of our theory, and we assert most emphati- 
cally and without fear of successful contradiction, that 
not one of these prior devices discloses the radiant 
beam principle in a concrete and successful form. The 
utmost that can be said of them is that they disclosed 
a conception of the desirability of utilizing that principle, 
but the fact is that the mechanism they describe for that 
purpose is wholly and utterly insufficient to carry it 
out in successful practice. 



SHOENBERG. 

The Shoenberg patent, which may be considered the 
nearest approach of them all, does not project the 



38 

rays with any approach to parallelism, but scatters 
them around in all directions. The defendant's expert 
Beam states that it is the object of Brown's device 
''to project the heat from the reflector out in the 
room in the shape of a beam, as nearly solid as 
possible, without having those heat rays scatter around 
in other portions of the room, and for that reason 
they are generally designated by the trade as beam 
heaters". 

Shoenberg's heater does not project the rays in the 
shape of a beam, but allows those rays to "scatter 
around" in all portions of the room. We illustrated 
this in our opening brief by a diagram of the Shoen- 
berg heater opposite page 23. Counsel for both the 
appellee and the amicus curiae criticise that diagram 
by saying that it is incorrect and misleading in that 
the heat rays are there represented as proceeding 
from a single mathematical point. This criticism is 
wholly unjustified. That diagram illustrates ten rays, 
proceeding from ten different points on the outer sur- 
face of the heating element. It is quite true that those 
rays have been represented as being projected back- 
ward to a mathematical point in the interior of the 
heating element; but that does not mean that the heat 
rays emanate from that mathematical point. It merely 
shows that if the ten rays emanated from a single 
mathematical point, they would be reflected in exactly 



39 



the same way as they are shown to be reflected when 
emanating from the several points on the outside of 
the heater element as sho\vn in the diagram. In other 
words, the projection or continuation of those rays back 
to the mathematical point was merely for illustrative 
purposes. No one having any intellectual powers at 
all would conclude from that diagram that we intended 
to assert that the heat rays there shown emanated from 
the said mathematical point. We submit, therefore, 
that the criticism on our diagram is wholly unwar- 
ranted. Indeed the criticism is so super refined that it 
reminds us of that vexed question of the medieval 
schoolmen as to how many angels can stand on the 
point of a needle. Have our mathematical friends 
allowed themselves to stray into the subtleties of 
scholastic disquisitions and become bewildered in the 
mazes of metaphysical jargon? 

But the learned counsel for appellee has himself 
proved our contention in reference to the Shoenberg 
invention. On page 14 of his brief he has a diagram 
of the Shoenberg heater indicating the direction of 
the heat rays, in which he depicts 25 or 26 different 
heat rays, if we have counted them correctly. They 
are all shown as emanating from the outer surface of 
the heater element at different points, and wonderful 
to relate, the diagram shows that these rays "scatter 
around" with much more divergence than was shown 



40 



in our diagram. On the opposite page we reproduce 
our diagram from page 43 of our opening brief and 
appellee's diagram from page 14 of appellee's brief. 
A casual glance will show that our diagram is more 
liberal to Shoenberg than that of appellee. In appel- 
lee's diagram the rays "scatter around" more than 
in ours. This in confirmation of our contention regard- 
ing the Shoenberg heater. We feel grateful to the 
learned counsel for appellee in this behalf. 

Furthermore, the history of the Shoenberg heater, 
represented by the early Majestic devices, is strong cor- 
roborative proof of our contention. Those devices were 
inefiicient, and were abandoned immediately upon the 
advent of the Brown patented heater. 



SIMPLEX PATENT. 

The Simplex English heater stands in the same cate- 
gory as the Shoenberg. The utmost it shows is a con- 
ception of the desirability of utilizing the radiant beam 
principle. But it fails utterly to disclose a concrete 
device capable of successfully carrying that principle 
into practice. We have already argued this matter at 
length in our opening brief, and need add but little 
thereto. We venture, however, to reproduce on the 



41 
APPELLANT'S DIAGRAM— SHOENBERG HEATER 




inWt T r'OG T>I */m 4 *r LjmmmT^m.w^ .. .. if.i.-n. 



42 



opposite page a diagram illustrating the operation of 
the heat rays in the English Simplex heater. It will 
be seen therefrom that these rays ** scatter around" 
quite as nmch as in the case of the Shoenberg heater. 

We also desire to make reference in this connection 
to the defendant's exhibit 8, which is a publication of 
the English Simplex heater in the "London Electrical 
Times". It is there called the "Plexsim Fire". In the 
first diagram eight heat rays are shown as being pro- 
jected outward from the reflector in parallelism. The 
other rays, which will criss-cross each other as shown in 
our diagram, are not illustrated in the publication. In 
other words, the maker of this diagram seemed to have 
selected a small number of rays which would be in 
parallelism, and to have wholly disregarded the millions 
of other rays which would not be so projected but 
would criss-cross each other, and some of which would 
never get out of the cone at all. The majority of the 
others that would get out of the cone would "scatter 
around" in all directions. Therefore, according to 
defendants' expert Beam the Plexsim is not a radiant 
beam heater. 

But the specific point we make in reference to this 
diagram of exhibit 8 is that it is wholly misleading, if 
it is intended to show that all of the rays emanating 
from the reflector will bo in parallelism. In reference 
to this point we rely upon the testimony of plaintiff's 
expert witness, who says of this exhibit 8 at pages 
110-11 of the record in case 3617: 

"A. I certainly am. This reflector that you have 
referred me to, and particularly the diagram showing 



43 




SIMPLEX ENGLISH PATENT 

No. 19971 



44 



the arrows indicating supposititious divergent rays, I 
will say that in all probability those specific rays will be 
thrown out from that form of reflector, and that form of 
heater, but that is about all of the rays that will be 
thrown out, a very, very small percentage of the total 
heat. The rays that come from every other point on 
that long heat-generating unit will be thrown at all 
kinds of angles, every possible angle. So that the actual 
rays which will emanate from there in an axial direction 
are but such a small percentage of the total that I am 
convinced more than ever that that form of reflector 
would be inefficient for the production of a beam. There 
is no question but that the man wanted to produce a 
beam, but he did not do it in this form of reflector, or 
in that form of heater. He would have to get up pretty 
close to that .^to feel the radiant energy. * * * It will 
probably generate as much heat * * * but that heat 
will not be directed in the form of a beam with a suffi- 
cient efficiency to wan*ant calling that form of heater a 
beam heater. It will get hot itself, it will heat air 
around it locally a little bit, and heat will be extending 
that way; but in the Brown form of heater, the idea was 
and the result was that a larger percentage of that heat 
is gathered and thrown out in the form of a beam as 
radiant energy. This diagram which you handed me is 
highly misleading; it is purely an advertising stunt; it 
is a salesman's idea of how to present a thing to the 
public and get them to buy, and I have no doubt he put 
it over. But it is as misleading as a diagram could be 
as regards the rays that emanate from the inside of that 
form of heater in action. * * * 

It shows a total misconception of the construction of a 
reflector and a heat unit to produce a radiant beam." 

We say of this English patent, with all tlie emphasis 
at our command, that if the inventor had the concep- 
tion of the radiant beam princii)le, he did not embody 
it in concrete practical form so as to make it useful 
to mankind. Unsnccessfnl and inoperative devices are 
not anticipations. Where the idea of the patent in 



45 



suit is not present in the prior patent and readjust- 
ments and modifications are necessary to bring out the 
idea and to em.body it in successful concrete form, there 
is no anticipation {MersJion v. Bay City, 189 Fed. 
745). 



WARNER. 

The Warner patent stands on a more unsubstantial 
basis than even the Shoenberg or the Simplex, because 
that device is nothing more than a conyection heater. 
Its purpose is to heat large volumes of air, which go 
out into a room and ascend towards the ceiling, thereby 
allowing fresh increments of cool air from the room 
to flow into the bowl, where they are in turn heated 
and discharged into the room. It is purely a convection 
heater, a hot air stove for heating an entire room. 

Not only does the evidence show this, but there are 
many ear marks connected with the Warner patent sus- 
taining the contention. The heating unit is shut up 
or inclosed within a housing, which separates it from 
the surface of the reflector, so that its heat rays can- 
not and do not reach the reflector. That heater ele- 
ment is not intended to become incandescent. It merely 
gets red hot. Nor is this heating element located near 
the focus. It is of circular form and is located near 
the rim of the reflector away from the focus. Again, an 
electric bulb is located in the center of the circular 
heating unit, presumably for the purpose of lighting 
up the structure. It is notable also that the reflector has 
no protective cage of arched guard wires over the 
mouth of the reflector. 



46 



This Warner heater is, as the specification says, a 
device ''capable of readily heating large volumes of 
air, making it particularly useful for the heating of 
rooms". 

We submit that the Warner heater has no relevancy 
to the issue here involved and fails utterly as an antici- 
pation of Brown or even as a disclosure of the radiant 
beam principle in any form whatever. 



GEIGER. 



The only other patent relied upon is that of Geiger, 
dated, August 8, 1916. This patent is strong corrobo- 
rative proof of our contention. It is the property of 
the Westinghouse Company, the appellee. That com- 
pany essayed to market that device before the Brown 
patent appeared in the field. Consequently, it may be 
assumed that it represented the best efforts of its 
experts in producing an acceptable electric heater. 
Of course, it is ridiculous to assert that Geiger is an 
anticipation of Brown. What we understand counsel 
to assert is that Geiger illustrates the radiant beam 
principle. That appears to be the limit of the con- 
tention. But in that behalf we assert that in Geiger 's 
case there will be no substantial parallelism of heat 
rays. On the contrary they will "scatter around" in 
all directions. This must be true because the reflector 
surface is of corrugated form. In order to illustrate 
the radiant beam principle, as we understand it, there 
must be a reflector answering to a mathematical for- 



47 



mula, that is to say, it must be of a concavo-convex 
form, which is to say that it must be either paraboli- 
cal or hemispherical. Geiger's reflector does not answer 
these requirements. It is neither an anticipation nor 
a limitation of Brown. 

The history of the device is further confirmation of 
our contention. If it illustrated the radiant beam heater 
and was a successful and meritorious device, why is 
it that the Westinghouse Company abandoned it and 
adopted their present form of heater, which does illus- 
trate the radiant beam heater and which is successful 
in practice? The answer is plain. Brown taught them 
how to embody the radiant beam principle in a suc- 
cessful mechanical form, and they merely followed in 
the footsteps of Brown. We again insist that prior 
to Brown there was not any portable electric heater 
embodying in successful and practical form the radiant 
beam principle. 

The situation is quite simple as to the facts. We 
catalogue those facts as follows: 

1. PRIOR TO BROWN THERE WAS A LONG FELT WANT 
FOR A RADIANT BEAM HEATER. 

2. OTHER INVENTORS, REALIZING SUCH WANT, ENDEAV- 
ORED BY VARIOUS AND SUNDRY FORMS OF MECHANISM TO 
SATISFY IT. 

3. EACH AND ALL OF THOSE PRIOR CONTRIVANCES PROVED 
INEFFECTIVE AND WERE ABANDONED; NOT ONE OF THEM 
SURVIVED, AND THEY CONFERRED NO BENEFIT ON MANKIND. 

4. RROWN SOLVED THE PROBLEM WHEN HE PRODUCED 
No. 7 HEATER EMBODYING THE RADIANT BEAM PRINCIPLE, 



48 



WHICH Pn^LED THE WANT OF THE PUBLIC AND WENT INTO 
IMMEDIATE AND EXTENSIVE USE THEOUGHOUT THE CIVILIZED 
WOELD. 

5. HIS PREDECESSOES, WHO HAD ESSAYED TO MAEKET 
THE PRIOR DEVICES, ABANDONED THE SAME AND PEOCEEDED 
TO MAEKET IN LARGE NUMBEES POETABLE ELECTEIC HEAT- 
EES OF THE SAME TYPE AND EMBODYING THE SAME PEIN- 
CIPLE AS THE BEOWN HEATEE. 

In these circumstances Brown made ''a distinct ad- 
vance in the art", a substantial contribution to the 
world, and his patent is entitled to a liberal interpre- 
tation. 

The following decisions of this court sustain us in 
our view : 

Smith V. Seattle, 261 Fed. 85; 
Stebler v. Riverside, 205 Fed. 740; 
Letson v. Alaska Packers, 130 Fed. 140 ; 
American Can v. Eickmott, 142 Fed. 144; 
Simplex v. Hauser, 248 Fed. 924. 

In O'Rourke v. McMullin, 160 Fed. 938, the Court 
of Appeals for the Second Circuit (Lacombe, Coxe, and 
Ward) said: 

"The principal question in such cases is: Has the 
patentee added anything of value to the sum of human 
knowledge, has he made the world's work easier, cheaper 
and safer, would the return to the prior art be a 
retrogression? When the court has answered this ques- 
tion, or these questions, in the affirmative, the effort 
should be to give the inventor the just reward of the 
contribution he has made." 



49 



From a review of all the cases on this subject we 
think it safe to say if there is one controlling purpose 
deducible from these cases, it is the steadfast deter- 
mination of the courts to protect and reward the man 
who has done something which has actually advanced 
the condition of mankind; something by which the 
work of the world is done better and more expeditiously 
than it was done before. 

We think Brown comes squarely within the purview 
of these considerations. He undoubtedly did something 
which has contributed to the comfort of mankind, some- 
thing which is an advance in the art, something which 
has proved to be of substantial and material benefit. 
A return to the prior art would surely be a retrogression. 

Dated, San Francisco, 
March 24, 1921. 

Respectfully submitted, 
John H. Miller, 

Solicitor for Appellant. 



/ y 



Nos. 3616, 3617,3618 



United States Circuit Court of Appeals 

For the Ninth Circuit 



Majestic Electeic Development Company 

(a corporation), 

Appellant, 
vs. 

Westinghouse Electric & Manufacturing 
Company (a corporation), 

Appellee. 



SUPPLEMENTAL BRIEF FOR APPELLEE. 

(Filed by Leave of Court.) 



Wesley G. Carr, 
David L. Levy, 
Walter Shelton, 

Solicitors for Appellee. 



PILED 

APR 1 6 (5v1 



United States Circuit Court ot Appeals 

For the Ninth Circuit 



Majestic Electric Development Company 
(a corporation), 

Appellant, 

vs. 

Westinghouse Electric & Manufacturing 
Company (a corporation), 

Appellee. 



Nos. 3616, 3617, 3618 



SUPPLEMENTAL BRIEF FOR APPELLEE. 

(Filed by Leave of Court.) 



At the conclusion of the argument of appeal No. 
3617, counsel for appellant requested permission to file 
a reply brief directed to the matter of validity of the 
utility patent constituting the subject-matter of that 
suit, on the ground that the opening brief had been pre- 
pared with the understanding that Judge Dietrich had 
found the patent in suit valid but not infringed. This 
request was granted by the court and it is possible that 
counsel for appellant intended to and did also request 
permission to file a reply brief respecting the bearing 
of the prior ai-t u])on design ])ntent No. 51,043 and that 
the court intended to, and did, grant such permission. 



The rejily brief filed by appellant's counsel recognizes 
no such limitation but discusses not only the matter of 
the validity of each of the patents just mentioned but 
sets forth, at length, his views as to infringement which 
the original or opening briefs purported to cover fully. 

It is in view of the discussion of matters outside 
the proper and legitimate scope of the brief which 
counsel for appellant was granted leave to file that we 
now present this supplemental brief. 



APPELLANT'S PRELIMINARY OBJECTION. 

Respecting the objection by counsel for appellant to 
our presentation to the court of copies of British patent 
to Kempton No. 12,830 of 1848 and British patent to 
Taylor No. 102,070 of 1916, we emphatically disclaim 
any attempt to improperly influence the court in its 
decision by presenting such copies or any intent to place 
before the court material which may not jn^oj^erly be 
considered. 

Because of the failure of appellant to reproduce the 
paper exhibits as parts of the printed record, we as- 
sembled three sets of copies of the defendant's paper 
exhibits for the convenience of the court during, and 
subsequent to, the oral argument and, inasmuch as 
Judge Dietrich specifically mentioned the British pat- 
ents Nos. 12,330 of 1848 and No. 102,070 of 1916 in his 
opinion, we believed that the court might desire to 
examine copies of such patents in order to acquire a 
full and clear understanding of such opinion. 



The copies of the British patents in question were not 
presented to the court as exhibits but merely as, in 
effect, parts of Judge Dietrich's opinion and without 
any expectation that the court would make use of such 
copies, except in so far as they might be found con- 
venient for the purpose just stated. 

As a matter of fact, the patents in question are not 
material to appellee's case, and our only reason for 
presenting any argument here with reference to them is 
to make clear to the court that we had no ulterior motive 
in making such comments as we have heretofore made 
or in presenting copies for the inspection of the court. 

As was noted in our main brief, the Kempton British 
patent is of interest only as embodying a very early 
disclosure of a heater embodying a parabolic reflector. 

The objection by counsel for appellant to considera- 
tion of the Kempton patent in these suits may be tech- 
nically well founded because the i^atent was not actually 
offered in evidence in any one of them and, if the court 
deems it proper to disregard this patent upon such 
ground, we, of course, have no objection to make. 

So far as the Taylor patent is concerned, counsel for 
appellant alleges that he might have antedated such 
patent by evidence of prior invention if the patent had 
been offered in evidence in case No. 3618. AVhatever 
may be the fact in this regard, we consider the matter 
to be immaterial because the heater disclosed in the 
Taylor patent is the Majestic No. 3 heater (Defendant's 
Fjxhibit D) many, or at least some, of which were manu- 



factured and sold more than two years prior to the date 
of application for the patent in suit. 

The substantial identity, so far as configuration is 
concerned, of the device shown in the Taylor patent and 
the defendant's exhibit 1) is so obvious that what Judge 
Dietrich said with reference to the Taylor patent might 
just as well have been said with reference to that ex- 
hibit. Such being the case, the complaint made by 
appellant's counsel respecting Judge Dietrich's state- 
ment has form without substance. 

Even though it should be held that it was error on the 
part of Judge Dietrich to make reference to the Kemp- 
ton and the Taylor British patents, it is clear that such 
error was inconsequential. 

Patent No. 51,253 was correctly held to he invalid. 
Whether the invalidating subject matter is identified as 
a heater or as the picture of a heater is of no moment. 



INVALIDITY OF DESIGN PATENT No. 51,043. 

So far as the matter of invalidity of design }3atent 
No. 51,041} is concerned, Judge Dietrich distinctly held 
that the structure embodying the patented design, as a 
whole and as regards all its elements, is intended and 
employed only for utility pur]ioses and such holding was 
fully discussed by counsel for appellant in his opening 
brief. 

The further discussion in appellant's reply brief is 
inconclusive and unconvincing. 



The brief alleges that it is the specific form of the 
design of the patent in suit that produces a certain 
appearance of pleasing aspect and then alleges that de- 
fendant has adopted such specific form or "a colorable 
imitation thereof". The brief then proceeds to specify 
the several elements of the device, except the broad mar- 
ginal flange which alone distinguishes the design from 
the prior Majestic devices (Defendant's Exhibits B, 
C and D). 

Appellant's counsel criticizes the appellee for adopt- 
ing a circular base, an upright standard, a hemispherical 
reflector, a tubular, cylindrical heating unit and a cage 
of arched guard wires and, in that connection, alleges 
that appellee might have adopted some other form of 
base, some other form of standard, some other form of 
reflector, some other form of heating unit and some 
other form of guard. 

Appellee admits that its heater might have been so 
designed as to embody elements having the forms sug- 
gested by appellant's counsel if the suggestions had 
been made at a sufficiently early date but it presumably 
would not have done so because it had a wide range of 
choice within the prior-art field. 

Appellee preferred the base and standard of the 
British patent No. 19,971 of 1913 to any of the several 
forms suggested by appellant 's counsel as available. 

Appellee's adoption of a sjjherically curved reflector, 
such as is shown in the Warner patent (Defendant's 
Exhibit H), does not meet the api)i-ovnl of appellant's 



counsel but hardly constitutes a reasonable ground of 
complaint. 

Just why appellee should have adopted a heater 
element of "pyramidal form, or eliptical form, or circu- 
lar form", as suggested by appellant's counsel, when the 
element of the British patent No. 19,971 of 1913 and that 
of the "abandoned" Majestic devices were available is 
not clear, so long as the cylindrical form was preferred. 

As regards the protective wire cage, the suggestions 
of appellant's counsel are not helpful at this time, but 
would presumably have been rejected if offered at a 
sufficiently early date to have made them available be- 
cause appellee preferred — for protective purposes — the 
arched wire guard of the Porter patent (Defendant's 
Exhibit N) or that of the "abandoned" Majestic heaters 
(Defendant's Exhibits A, B, C and D). 

Appellant's complaint of "the use of these specific 
forms" as infringing the patent in suit is, therefore, a 
complaint that the patent in suit is infringed hg the 
prior art. 



THE DESIGN IS SPECIFIC. 

We agree that the design of the patent in suit is 
specific, and necessarily so, because it would not other- 
wise be distinguished, in any mannei- or degree, from 
the prior art of record. 

It is apparent from the prior art and also from 
appellant's utility patent No. 1,245,084 that the design 
of appellant's No. 7 heater, if new at the time the first 



sani}ile was produced, was new only because of the broad 
marginal flange which constituted a part of the enclos- 
ing casing and extended outwardly from the margin of 
the reflector. This is mainly what the patentee Brown 
added to the No. 2 Majestic heater (Defendant's Exhibit 
B). It is true also that Brown made the standard 
shorter and larger in diameter, the reflector larger in 
diameter and provided it with a reflecting surface of 
burnished copper, but, notwithstanding the lengths to 
which counsel for appellant is willing to go for the pur- 
pose of attempting to demonstrate validity and infringe- 
ment of the patent in suit, he hardly dares to go so far 
as to allege that decreasing the length and increasing 
the diameter of the supporting standard, enlarging the 
diameter of the reflecting bowl and providing it with a 
surface of burnished copper are such changes as produce 
a new and patentable design. 

If the appellant's design is new, in any patentable 
sense, its novelty is dependent solely upon the marginal 
flange and, while it may possibly be true that, notwith- 
standing such marginal flange, appellee's design might 
be held an infringement if it had some equivalent part 
not found in the \)vioY art, there is no escape from the 
fact that the appellee has omitted the marginal fiange 
of the patent and, instead of providing a substitute, has 
merely utilized prior-art material ivhich was available 
for use ivithout paying tribute to anyone. 

An infringing colorable imitation of a patented design 
must be colorable awaii from, not into, the prior art. 

In order to establish both validity and infringement, 
the appellant is in a hopeless position. The marginal 



flange must he included in order to impart validity and 
must he excluded or ignored in order to estahlish in- 
fringement. 



SCOPE OF PATENT IN SUIT. 

A producer of a design for an article of manufacture 
may be an originator or an improver. If an originator, 
the designer produces a new type of either form or 
ornamentation. If an improver, he modifies, adds to, 
or subtracts from, an existing type. In the present case, 
the patentee Brown was not and could not be an orig- 
inator because several English designers, Warner and 
Shoenberg and others had preceded him in the portable, 
radiant, reflector-type electric heater field. 

Inasmuch as the Majestic Company had developed, 
manufactured and sold heaters of the type in question 
long prior to the production of the design of the patent 
in suit and these heaters were well known to the pat- 
entee Brown, we may, for convenience, select the 
Majectic No. 2 heater (Defendant's Exhibit B) as a 
representative of the type and, with that as a starting 
point, determine what Brown designed as an improver. 

First, he changed the dimensions of the reflector and 
the supporting stand, without materially changing the 
form of either, and made the reflecting surface of copper 
in place of nickel. Even appellant's counsel would 
hardly go so far as to claim that these changes involved 
invention, within the purview of the design-patent 
statute. 



But Brown did something more than this — he added 
a supplemental hack or casing for the reflector and a flat 
peripheral flange — both for protective purposes — not for 
ornament. The protective casing does not make a suffi- 
cient change in the contour of the device to make it a 
patentable modification of tlie design any more than do 
changes in the dimensions of the reflector and the sup- 
porting stand. 

Whether the broad marginal flange is an ornamental 
feature, within the purview of the statute, may be open 
to question but, whatever may be the fact in this regard, 
the flange is all that Brown added ivhich can by any 
possibility wake his design neiv in a?iy patentable sense. 



NO MISAPPLICATION OF RULE OF CONSTRUCTION. 

The appellant alleges a misapplication by Judge Die- 
trich and by counsel for appellee of the established rule 
of construction for determining whether a given design 
is or is not an infringement of a design patent. In this 
counsel for appellant is in error. It would unquestion- 
ably have been held by Judge Dietrich that, if the pat- 
entee Brown had been an originator of a heater of a 
new type, slight variations, or perhaps, even variations 
of considerable proportions, would not serve to relieve 
the appellee's device from the charge of infringement, 
but, in the case of an improver where the feature con- 
stituting the improvement which differentiates the 
design from prior designs of the same type is omitted 
by tlie alleged infringer, colorable imitations which dif- 



10 



ferentiate only in tlie direction of prior-art devices can- 
not be held to amount to infringement without ignoring 
the facts and all decisions of the courts which have con- 
strued the statutes and api:)lied them to facts of like 
character and import. 

No amount of argument can make the appellant's and 
the appellee's designs different from what they actually 
are and no amount of argument can make them alike 
unless the prior devices which are exemplified and dis- 
closed in defendant's exhibits are ignored. 



UTILITY PATENT. 

Patent No. 1,245,084 has been so fully discussed in our 
main brief tliat further comment is unnecessary except 
to call attention to and emphasize the erroneous allega- 
tion on the part of appellant's counsel that the patentee 
was the first to produce a so-called beam heater. As a 
matter of fact, the theory that a substantially cylindrical 
beam of heat is produced by the patented device did not 
originate with the patentee Brown, but apparently had 
its origin in the mind of counsel for appellant or that 
of his expert Avitness Henry. Considered apart from 
the device itself, the theory is attractive but, as we have 
already demonstrated, at least one-half of the heat gen- 
erated in the element of the Brown device is radiated 
outwardly through a very wide angle without impinging 
upon the reflector, and those rays which actually do 
impinge upon the reflector are reflected in various direc- 



11 



tions in such manner and to such degree as to disprove 
the beam theory. 

It was quite proper that the patentee should not de- 
scribe the production of a beam of heat, because any 
such exposition would have been without support in fact 
and could not by any possibility have enabled the 
patentee to secure a valid claim which omitted the only 
element that served to differentiate the structure from 
the prior art, namely, the marginal flange as a protec- 
tive device, having nothing whatever to do with the 

PRODUCTION OF A BEAM OF HEAT. 

The Majestic Company manufactured and sold, in 
considerable numbers and over a considerable period of 
time, the 1, lb, 2, 2b, 3 and 3b heaters and there is noth- 
ing in the record to show that these heaters were unsuc- 
cessful, although the record does show that the manu- 
facture and sale of these heaters was abandoned in 
favor of the No. 7 heaters. 

It is (piite within the range of possibility, if not prob- 
ability, that, if the reflector of the Is^o. 2 heater had been 
enlarged and provided with a burnished copper surface, 
the demand which appellant's counsel alleges was satis- 
fi(Hl by the No. 7 heater would have been met by such 
enlarged, copper colored device, even though the sup- 
plemental easing and its peripheral flange had not 
been added. 

The allegation of appellant's counsel that other 
devices made by other manufacturers prior to the 
exploitation of the No. 7 heaters proved ineffective and 
were abandoned is a statement of eonclnsion, and per- 



12 



haps of belief, but is not substantiated by the evidence 
of record. 

Dated, San Francisco, 
April 12, 1921. 

Respectfully submitted, 

Wesley G. Carr, 
David L. Levy, 
Walter Shelton, 

Solicitors for Appellee, c,-