author: BINGHAM, Circuit Judge. ANDERSON, Circuit Judge BINGHAM, Circuit Judge. ANDERSON, Circuit Judge

text:
    KRENTLER-ARNOLD HINGE LAST CO. v. LEMAN et al.
    No. 2525.
    Circuit Court of Appeals, First Circuit.
    March 10, 1931.
    On Rehearing June 29, 1931.

      ANDERSON, Circuit Judge, dissenting.
    See, also, 24 F.(2d) 423; 300 F. 834.
    Robert Cushman, of Boston, Mass., and P. R. Pocock, of Detroit, Mich. (Otto Barthel, of Detroit, Mich., on the brief), for appellant.
    Ellis Spear, Jr., of Boston, Mass. (Eiffel B. Gale and Edward N. Goding, both of Boston, Mass., on the brief), for appellees.
    Before BINGHAM, ANDERSON, and WILSON, Circuit Judges.
   BINGHAM, Circuit Judge.

This is an appeal from a final decree of the District Court for Massachusetts of August 20, 1930; on a petition and motion to show cause why the Krentler-Amold Hinge Last Company should not be held in contempt for the violation of a permanent injunction issued against it by the District Court November 26, 1926, in an equity- suit there brought by the Krentler-Amold Company against J. Howard Leman, administrator, and the George E. Belcher Company, defendants-eounterelaimants, in which injunction it was provided that the Krentler-Amold Hinge Last Company “shall not, directly or indirectly, make, or cause to be made, use or cause to be used,- sell or cause to be sold lasts embodying or containing the invention covered by claims 1, 2, 3, 4, 6 and 7 of Letters Patent of the United States No. 1;195,266, issued August 22,1916, to Otto A. Peterson, and any substantial or material part thereof, or any substantial equivalent or colorable imitation thereof.” The Peterson patent is the property of the complainants in the contempt proceedings, who are the counterelaimants in the equity suit.

In these contempt proceedings, by interlocutory decree of September 23, 1929, the Krentler-Amold Company was found guilty of civil contempt; that the complainants were entitled to equitable relief and should recover, by way of an award, the profits made by the Krentler-Arnold Company in violating the injunction; and that the respondent also should pay the complainants a further sum sufficient to compensate them for their expenses in these contempt proceedings, including the complainants’ counsel fees, and the usual costs; and a reference to a master for the purpose of determining these matters was ordered.

In the final decree, the master having reported, after repeating the findings made in the interlocutory decree, it was decreed that the complainants recover for infringement of the Peterson patent the sum of $39;-576.26, being the profits made by the Krent-ler-Arnold Company from the sale of its infringing deviee; also $6,102.72 as counsel fees for services rendered from October, 1928, to the end of April, 1930, in the prosecution of the contempt proceedings; also $389'.15 for expenses; amounting in all to $46,068.13, with interest thereon from June 4,1929 (the date of the filing the contempt proceedings) to the date of the entry of final decree (August 20, 1930) at the rate of 6 per centum per annum, amounting to $3,224.76, and making the total sum payable $49,292.89.

The Krentler-Amold Company is a Michigan corporation, having its place of business at Detroit, Mich. It manufactures hinges for shoe lasts and sells them to the manufacturers of shoe lasts, who sell the lasts to the shoe manufacturers. It has no place of business in Massachusetts; it manufactures its hinges or links in Detroit, and, so far as appears in these contempt proceedings, has committed no acts of infringement in Massachusetts.

The Belcher Company is a Massachusetts corporation and Leman, administrator, is a citizen of that state. The Belcher Company is a manufacturer of shoe lasts, and makes and uses its own hinges under the Peterson patent No. 1,195,266. There is no direct competition between the two companies.

The final decree in the equity suit was entered March 1, 1928. The term of court at which this decree was entered ended later in the same month. The petition and motion for order to show cause in the contempt proceedings were filed in the equity suit June 4, 1929, and the order to show cause was entered on the same day. The service directed and the only service that could be had in the Massachusetts district was by sending copies of the petition, the motion to show cause, and the order to show cause, together with the supporting affidavits of one Smith and one Soutkworth, by registered mail to the Krentler-Amold Company at Detroit, and by serving the same papers upon James R. Hodder at Boston, who had been the attorney for the Krentler-Amold Company in the equity suit. At the time of the service on Mr. Hodder his name appeared on the record in the equity suit as counsel and at that time had not been withdrawn, if that was necessary to render the purported service upon him of no avail.

On or before the 15th day of July, 1929, the date set for the hearing on the petition for contempt, Mr. Cushman entered a special appearance for the Krentler-Amold Company for the sole purpose of objecting to the jurisdiction of the court, and filed a motion to dismiss the contempt proceedings for lack of jurisdiction. This motion was overruled, subject to exception. Without waiving the objection to the jurisdiction, the petition for contempt was then heard on the supporting affidavits of the complainants, counter affidavits of the Krentler-Amold Company, and reply affidavits of the complainants, resulting in the decree of August 20, 1930, above spoken of.

The contempt proceedings, filed in the equity case, were entitled as of that case, and, while they asked for punitive as well as remedial relief, the proceedings were treated by counsel for the respective parties and by the court as only asking for remedial relief. In other words, the allegations and prayer for punitive relief were disregarded and treated as surplusage. And the court, in its final decree, awarded nothing in the way of a penalty, but only by way of remedial relief. The contempt proceedings, therefore, are to be regarded and treated as proceedings in civil contempt, for such was the mutual understanding of the parties throughout the trial. Kreplik v. Couch Patents Co. (C. C. A.) 190 F. 565; Mitchell v. Dexter (C. C. A.) 244 F. 926.

Although the proceedings for contempt were civil in nature and were entitled and filed in the equity suit, the Krentler-Amold Company contends: (1) That inasmuch as the infringing device here complained of is not the same article held to have infringed the Peterson patent in the equity suit, and the term had expired at which the decree in that suit was entered, and the damages and profits awarded by that decree had been satisfied, an independent suit in equity and a reinvestigation and consideration of the scope and vitality of the claims of the Peterson patent were necessary to determine whether the present device, a so-called sliding hinge, infringed; and that this properly could not be done in a proceeding for civil contempt. The reason underlying this contention apparently is that, if a new and independent suit in equity were necessary, it would have to be brought in the District of Michigan, where the Krentler-Amold Company is incorporated and does business, for there alone could personal service be had upon that company.

Its second contention is that, if proceedings for civil contempt are, under the circumstances of this case, proper, the District Court was without jurisdiction to entertain the same, as no personal service thereof was had on the Krentler-Amold Company in the District of Massachusetts; that, the term of court at which the final decree in the equity suit was entered having expired, and the decree, so far as it awarded compensation, having been satisfied, the power of the District Court over that decree had ceased, the parties had been discharged, and the court had no jurisdiction over the Krentler-Ar-nold Company, in the absence of personal service upon it within the District of Massachusetts.

As to the first contention, it seems to be fairly clear from the decided cases that “whether or not the different structure made by the defendant [the Krentler-Amold Company] after being enjoined according to said final decree also infringed said patent [the Peterson patent] was a question with which the District Court might deal according to various methods, either of which it was at liberty to select in its discretion” (National Metal Molding Co. v. Tubular Woven Fabric Co. [C. C. A.] 239 F. 907, 908); and that, if the court below regarded it as “really a doubtful question” whether the new device or structure was an infringement or not of the claims of the Peterson patent, the infringement of which was enjoined in the equity suit, it could, in its discretion, have directed that the complainants bring a new suit in equity against the Krentler-Amold Company for •the alleged infringement (California Artificial Stone Paving Co. v. Molitor, 113 U. S. 609, 618, 5 S. Ct. 618, 28 L. Ed. 1106). On the other hand, if it regarded the new structure as a clear infringement of the claims of the Peterson patent, the infringement of which was enjoined, or merely a colorable departure therefrom, it could, in its discretion, direct the parties to proceed in the contempt proceedings already brought. Krep-lik v. Couch Patents Co. (C. C. A.) 190 F. 565.

In this case the District Court adopted the latter alternative. The hearing was had, as above pointed out, on affidavits. But before the trial began the Krentler-Arnold Company, in addition to presenting its ease on affidavits, was given the opportunity “to put in expert evidence,” but declined to do so, stating that “it preferred to proceed on the present contempt record if we proceed on the contempt order,” meaning on the affidavits filed in the contempt proceedings.

In its affidavits the Krentler-Amold Company set up a number of patents as anticipations of the Peterson patent, including therein patent No. 1,094,153, issued April 21, 1914, to W. A. Krentler, which it had previously set up as an anticipation of the Peterson patent in the original equity suit; it also set up a number of other patents not previously set up as anticipations in the original equity suit, and undertook to try anew the scope and validity of the claims of the Peterson patent. The District Court, however, had before jt the record and proceedings in the original equity suit, including the decree in that suit. The proceedings in that suit disclosed that the scope and validity of the claims here in question were put in issue in the original equity suit and actually tried; and that they were held not to be anticipated, but valid as drawn. In other words, that they were not too broad in view of the prior art as presented and litigated in that ease. The parties to that suit were the same as in the present proceedings, and, as the scope and validity of the Peterson claims here in issue were put in issue and actually tried and determined in that suit, the decree in that suit determining those issues is as evidence conclusive in these proceedings as to the scope and validity of the claims. Walter J. Rancourt v. Panco Rubber Co., 46 F.(2d) 625, decided February 11, 1931, and cases there cited.

As the decree in the original suit, as between these parties, conclusively established the validity and scope of the Peterson claims,, nothing remained for the District Court to determine but the question whether the new device (the sliding link) of the Krentler-Ar-nold Company read upon and infringed any of the claims of the Peterson patent, the scope and validity of which were determined in the original equity suit, and the infringement of which, by any substantial equivalent or colorable imitation thereof, was there enjoined.

It is clear that the new, device answers in every respect the provisions of claims 2, 4, 6, and 7 of the Peterson patent; and that the question of infringement is not doubtful or even merely colorable, but certain.' We are therefore of the opinion that the- District Court did not err or abuse its discretion in entertaining the contempt proceedings and ordering the parties to trial thereon.

The second contention presents a question of first impression in this court, and the briefs and arguments of counsel have lent little or no aid to its solution. However, after a careful examination, the logic and reason of the situation seems to warrant no other answer than that the court had jurisdiction of the parties in the contempt proceedings.

It is undoubtedly true that in the federal courts the power of the court, on motion, to alter, modify, amend, or revoke its judgments, except as to clerical errors, ends with the term at which the judgment is entered, although it retains power later to see that its judgment is executed. Schell v. Dodge, 107 U. S. 629; 2 S. Ct. 830, 27 L. Ed. 601; Casey v. Sterling Cider Co. (C. C. A.) 15 F.(2d) 52; Bronson v. Schulten, 104 U. S. 410, 26 L. Ed. 797; Brooks v. Railroad, 102 U. S. 107, 26 L. Ed. 91. It is also true that, while the federal courts of equity are for certain purposes always open (Equity Rule 1 [28 USCA § 723]), the same rule as to the power of the court over its decrees is applied as in the case of judgments in a court of law, viz., that, after the term at which the decree is entered, the power of the court, on motion, to alter, amend, or revoke it, except as to clerical errors, has ceased. McGregor v. Vermont Loan & Trust Co. (C. C. A.) 104 F. 709; E. G. Staude Mfg. Co. v. Labombarde (C. C. A.) 247 F. 879; Hart v. Wiltsee (C. C. A.) 25 F.(2d) 863, and cases there cited; United States v. Trogler (C. C. A.) 237 F. 181.

Under the English practice the power of the court ceased when the final decree was enrolled, irrespective of the terms of court. Until the decree was enrolled and thereby became a record, it could be altered by the court that made it upon motion or petition, but not after enrollment. In a great majority of the states and, it would seem from the decisions of the Supreme Court, in the federal courts, the doctrine of enrollment is worked out by treating decrees as enrolled at the end of the term. Wetmore v. Karrick, 205 U. S. 141, 150, 27 S. Ct. 434, 51 L. Ed. 745; Goddard v. Ordway, 101 U. S. 745, 750, 751, 25 L. Ed. 1040; 21 C. J. p. 706, § 874.

But in this proceeding no attempt is being made to alter, amend, or vacate the decree in the original equity suit, after the term at which it was entered. It is a proceeding to enforce the execution of that decree in so far as it granted a permanent injunction. It may be conceded that, as to the balance of the decree, execution has been had; but, so far as the question concerns the execution of the permanent injunction, the decree has not been satisfied or the parties dismissed from the control and jurisdiction of the court. If this were not so, the injunction granted against the Krentler-Arnold Company, a nonresident corporation, would at the end of the term at which the decree was entered become an empty thing. On the contrary, logic and reason lead to the conclusion that, as to the enforcement of the decree and so long as any part of it remains open for enforcement, the parties are before the court and subject to its jurisdiction; and we think the decided cases, where this matter has been considered, lead to this result.

Pitt v. Davison, 37 N. Y. 235, was a civil contempt proceeding. An action (bill in equity) had been brought by the plaintiff against Joseph Davison for specific performance of a contract by which he agreed to convey certain premises to the plaintiff. A judgment or decree was rendered adjudging the plaintiff entitled to specific performance of the contract and directing another Davison (the defendant in the contempt proceeding and to whom Joseph Davison had fraudulently, as against the plaintiff, conveyed said premises) to convey them free from any incumbrance which he had put upon them.

The Davison to whom the land had been transferred was personally served in the equity suit or action with a copy of the judgment and required to appear before a referee appointed by the court to make the conveyance under the direction of the referee. He did not appear, but his counsel appeared and offered to read an affidavit excusing his noncompliance with that part of the judgment which required him to convey, setting out that subsequent to the contract of sale to the plaintiff, but prior to the commencement of the suit for specific performance, he had mortgaged the property for $5,000, that the mortgage had been foreclosed, the premises sold, and he was unable to convey the premises to che plaintiff. The referee refused to receive the affidavit as an excuse and demanded compliance with the judgment, which was refused, and he reported the refusal to the court and the reason therefor. The final judgment or decree in the equity action was entered in May, 1856. On December 9, 1857, the plaintiff obtained from a judge of the court, in which the equity action was brought, an order requiring Davison to show cause why an attachment should not be issued against him and he be punished for his alleged contempt in not having conveyed the property. This order to show cause was founded on the judgment in the equity action *and the'proceedings had thereon, and contained a direction that it be served on the defendant’s attorney. It was so served, but no service was made on the defendant personally. At the return term named in the order, the court adjudged the defendant guilty of contempt of court in willfully neglecting and refusing to comply with the terms of the judgment or decree and ordered him committed to jail until he should comply with it. A precept issued, and Davison was arrested and committed to jail.

He then made a motion to set aside the order under which he was committed and to be discharged from imprisonment on the ground that he had no personal knowledge of the order to show cause until after the granting of the order directing him imprisoned. Counter affidavits were introduced, one showing that a similar order to show cause had been previously issued, and that after diligent search the officer was unable to make personal service thereof, and also controverting the facts stated in the defendant’s affidavit bearing on his want of knowledge of the order to show cause. This motion was denied at a special term of the court, and at a general term, on appeal, the order denying the motion was reversed and the defendant discharged from imprisonment. Prom that order an appeal was taken to the Court of Appeals. The question was whether personal service upon the defendant of the order to show cause, with the affidavits upon which it was granted, was necessary. The court below at the general term had held that personal service was indispensable.

The Court of Appeals pointed out, however, that this was not a proceeding to punish for criminal contempt, but was a proceeding for contempt to enforce a civil remedy; that, where the proceeding is for civil contempt, “the party in default has already had the opportunity of contesting his liability to perform what the proceeding seeks to compel him to perform, and such proceeding is, in effect, but an execution of the judgment or order against him.”

The court further said: “In the ease.at bar it is correct, I think, to say that the proceeding was one taken in the action. The judgment remained unexecuted, and the court was proceeding, in the mode prescribed by the statute, to execute its judgment. The order to show cause provided for by the statute, in the absence of any statutory provision to the contrary, was, then, governed by the practice of the court in regard to orders to show cause, both in respect to its service and the' further proceedings upon it. That,’ according, to such practice, an order to show cause may be served upon the attorney of the party, will not be denied. Indeed, that is the mode of service of all papers in the action prescribed by the Code, except the summons or other process, or any paper to bring a party into contempt. Code, §§ 417, 418. The papers in this case which brought the party into contempt, were the certified copy of the judgment and the summons and underwriting of the referee, requiring the defendant to appear before him and make the conveyance. These were personally served, and the defendant; by his refusal to comply with them, was brought into contempt.”

As to the service of the order to show cause, the court said: “The order to show cause is, in effect; but a notice of motion, and according to the practice of the court may ordinarily be served upon the attorney of the adverse party. Although in this ease the judgment was entered in May, 1856, and the order to show cause was made and served on the defendant’s attorney on the 9th of December, 1857, yet, inasmuch as it appears that the defendant had avoided the service of a prior order to show cause, and that, after service of the second order by the direction of the court upon the attorney, and before the granting of the order on which the defendant was arrested and imprisoned, he consulted with his said attorney, and has not denied that the attorney was authorized to appear for him and oppose the granting of the order for his arrest and imprisonment, as he did appear, it must be clear that the attorney is to be regarded as the defendant’s attorney, when the service was made, and that the service of the' order to show cause was in all respects sufficient.”

And, continuing, the court said: “A further ground for the decision of the General Term, put forth in the opinion, is, that inasmuch as the defendant was never personally before the court in this matter, the court had no jurisdiction of his person, and therefore the order for his arrest and imprisonment was unauthorized and void. If the proceeding is to be regarded as one in the action, as I have endeavored to show it is, then clearly this ground is not well taken. The court having obtained jurisdiction of the person of the defendant in the action, retains that jurisdiction for all purposes of enforcing the judgment, until its requirements are fully performed and executed.”

In Merrimack River Savings Bank v. Clay Center, 219 U. S. 527, 31 S. Ct. 295, 296, 55 L. Ed. 320, Ann. Cas. 1912A, 513, the plaintiff brought a bill in equity in the federal Circuit Court for the District of Kansas claiming to be a creditor of the Clay Center Light & Power Company by bonds secured by a mortgage on the light and power company’s plant, etc., against the city of Clay Center, the light and power company, and certain individuals. It was alleged that the light and power company owned and conducted a light and power plant at Clay Center under a perpetual franchise authorizing it to place and maintain a line of poles and wires upon the streets of the city;, that the city, claiming that the franchise had expired, had, through its council, of which the individual defendants were members, required the light and power company to remove the poles and wires, and that the officials named as individual defendants were threatening to cut down and destroy its poles and wires, etc., to its irreparable damage in the loss of its security. A temporary injunction issued retraining the destruction of the poles and wires. The bill was dismissed for want of federal jurisdiction and an appeal was taken to the Supreme Court, but the injunction was continued pending the appeal.

In the Supreme Court the appeal was dismissed for want of jurisdiction,,but before its mandate issued or could issue, and pending an application for rehearing, certain of the defendants to the appeal cut down and destroyed the poles and wires. The plaintiff then petitioned the Supreme Court, and, after setting out the above facts, alleged that thé defendants destroyed the poles and wires knowing that the appeal was pending, and that the Supreme Court had not lost control of the controversy, and that no mandate had issued. The prayer was that the defendants be cited and required to appear and show cause why they should not be proceeded against for contempt. Such a rule was made, and the defendants appeared and answered. They also moved to discharge the rule because the petition failed to allege that the defendants had violated any injunction or mandate of the Supreme Court, on the ground that the injunction issued pending the appeal was the injunction of the Circuit Court, and that its violation was only cognizable in that court; and, second, if that be so, the petition failed to show facts constituting contempt of the Supreme Court.

It was held (1) that the Circuit Court had power to' continue the injunction in force pending appeal; (2) that “plainly, the effect of continuing the injunction operated to continue in the circuit court such jurisdiction over the subject-matter of the litigation and of the parties as to enable it to preserve the status quo pending the appeal, including power to take cognizance of a violation of its injunction”; anfl (3) the court expressed the opinion, although it did not decide the question, that a violation of the injunction was also a contempt of the appellate jurisdiction of the Supreme Court.

In this ease, not only had the term of the Circuit Court ended at which the decree granting the injunction was made, but, at the time the alleged contempt took place and the contempt proceedings were brought, the case was in the Supreme Court on appeal, and it was held that the Circuit Court in which the injunction was pending had “such jurisdiction over the subject-matter of the litigation and of the parties as to enable it to preserve the status quo pending the appeal, including power to take cognizance of a violation of its injunction.”

In Gompers v. Buck’s Stove & Range Co., 221 U. S. 418, 31 S. Ct. 492, 55 L. Ed. 797, 34 L. R. A. (N. S.) 874, the range company had brought a suit in equity against Gompers, Mitchell, and Morrison in the Supreme Court for the District of Columbia, and, on March 23, 1908, obtained a permanent injunction restraining them from conspiring, agreeing, or combining in any manner to restrain, obstruct, or destroy the business of the complainant, etc. Erom this final decree the respondents appealed to the Court of Appeals for the District, and, while the ease was pending there, but before a decision had been reached, the Buck Stove & Range Company began contempt proceedings in the Supreme Court for the District by filing a petition therefor in the equity suit. All of the record in the original cause, including the testimony, was made a part of the petition. The petition set out publications charged to be violations of the temporary injunction of December 23, 1907, and other publications alleged to be violations of the final deeree and injunction of March 23, 1908.

The Supreme Court of the District, on December 23, 1908, found the respondents guilty of contempt, they having disobeyed the plain mandates of the injunctions, and ordered them imprisoned in jail. Erom that deeree the respondents appealed to the Court of Appeals for the District. On March 26, 1909, the Court of Appeals rendered a decision in favor of the Buck Stove & Range Company on the appeal from the deeree of March 23, 1908, in the equity ease, and entered a deeree in its favor, modified somewhat from that of the Supreme Court. Erom the decree of the Court of Appeals in the equity case, both parties appealed to the Supreme Court of the United States.

When the deeree of the Supreme Court of the District in the contempt proceeding came on for hearing in the Court of Appeals, the Buck Stove &' Range Company moved to dismiss the appeal, claiming that it was a criminal proceeding and should have been brought up by writ of error. The respondents, however, contended that it was a part of the equity ease and properly removable on appeal. The Court of Appeals held that the proceeding was for criminal contempt, and affirmed the judgment or deeree of the Supreme Court of the District. Erom that judgment or. decree the respondents applied for and obtained a writ of certiorari to the Supreme Court of the United States.

In the Supreme Court of the United States it was held that the contempt proceedings were for civil contempt in the original equity proceeding. Having so held, that court must have been of the opinion, although the term at which the final deeree in the equity case was entered had ended and an appeal had been taken therefrom to the Court of Appeals for the District when the contempt proceedings were filed in the Supreme Court for the District, that the original equity suit was still pending in that court so far as the power of the court over the execution of the permanent injunction and the punishment of any infraction of it were concerned, for otherwise it could not have regarded the contempt proceedings for a violation of that injunction as being in the original equity proceeding, if 'the equity suit had ceased to exist after the term at which the final decree in it was entered had ended.

It seems clear that the Supreme Court of the United States must have regarded the permanent injunction issued in the Supreme Court of the District as operating to continue in that court “such jurisdiction over the subject-matter of the litigation and of the parties as to enable it to preserve the status quo pending the appeal, including power to take cognizance of a violation of its injunction,” as it held in Merrimack River Savings Bank v. Clay Center, supra. See, also, Wilson v. Caleulagraph Co., 153 F. 961 (1st Cir.).

So, in the instant case, the permanent injunction made a part of the final decree in the original equity suit in the District Court for Massachusetts, operated, even after the close of the term at which it was entered, to continue in that court such jurisdiction over the shbjeet-matter of the litigation and of the parties as was necessary for it to retain power over and take cognizance of a violation of its injunction; which ineludes power to cause notice to be given the defendant such as the District Court should consider reasonable and necessary to notify and apprise it of the filing of the petition for contempt in the original equity proceeding.

Inasmuch as the District Court had jurisdiction over the subject-matter and the parties to the equity suit, in which the contempt proceedings were filed, for the purpose of protecting and enforcing its injunction, the only thing Requisite to its proceeding to a hearing and judgment in the contempt proceedings was notice to the defendant of the petition and motion to show eaüse, so that it might be present at the hearing and take such action with reference thereto as it deemed proper. Notice in this ease was brought to the attention of the Krentler-Arnold Company in two ways: One, by serving the requisite papers upon Mr. Hodder, then counsel of record in the equity suit; and, second, by mailing such papers to the Krentler-Arnold Company at Detroit. There is no question but that Mr. Hodder notified the Krentler-Arnold Company of the receipt of the papers served upon him, and no question about the receipt by the Krentler-Arnold Company of the papers that were mailed to it, and that it had full notice of the petition and motion for contempt in the equity suit. In fact it appeared and contested the matter. It is true that its appearance was special, but the court had jurisdiction over the subject-matter and the parties, and, the defendant having received actual notice, there was no basis for a special appearance.

If nothing further appeared than that the papers were served upon Mr. Hodder, it might be regarded as a close question whether the District Court would have had authority to proceed to judgment in the contempt proceeding; that is, whether by reason of the final decree and the close of the term at which it was entered the authority of the attorney of record had terminated, so that notice could not properly be served upon him for the defendant. It would seem, however, that his authority as attorney of record did not then terminate, for the protection and enforcement of the permanent injunction, embodied in that deeree, still vested the court with jurisdiction over the subject-matter and the parties in the equity suit, and that his authority continued, so far as the service of notice of a violation of the injunction was concerned, the same as it would have had the de-eree in the equity suit been interlocutory, not final, granting an injunction. .But we do not find it necessary to decide that question in view of the fact that the defendant otherwise had actual notice of the petition and the motion to show cause, filed in the equity suit.

The Krentler-Arnold Company also contends that the District Court was without authority to deeree remedial relief except as a fine; ánd that, when imposed as a fine, the only remedy for the enforcement of its payment is by committing the defendant to jail until it is paid. The defendant is a corporation. If the payment of money awarded as remedial relief in the character of a fine can only be enforced against it by imprisonment, the power of the court in the execution of such a deeree would be practically helpless. In such a situation we think the court .may properly issue an execution for the collection of the fine as in the case of a money judgment or decree. See Equity Rule 8 (28 USCA § 723), first sentence.

It may not be amiss ,to say that the injunction was not simply against the manufacture, use, or sale of the old infringing device complained of in the equity suit, or one colorably like it, as the Krentler-Arnold Company contends and would seem to think, but against the manufacture, use, or sale of an article “embodying or containing the invention covered by claims 1, .2, 3, 4, 6 and 7 * * * and any substantial or material part thereof, or any substantial equivalent or col-orable imitation thereof.”

But we are of the opinion that the District Court went far afield and exceeded its authority in decreeing that the complainants recover profits made by the respondent by the infringement of the letters patent. In Gompers v. Buck’s Stove & Range Co., supra, and Kreplik v. Couch Patents Co., supra, 190 F. at page 569, it was pointed out that the proper remedial relief for the disobedience of an injunction in an equity case is to impose a “fine for the use of the complainant, measured in some degree by the pecuniary injury caused by the act of disobedience.” In other words, that the amount of the fine or remedial relief is to be governed largely by the pecuniary damage or injury which the aot of disobedience caused the complainant. This pecuniary damage surely does not include profits which the defendant made by reason of the infringement. The item of profits should not have been allowed or taken into consideration in determining the remedial relief to which the complainants were entitled by way of fine or otherwise.

We also think that the court below erred in allowing the account of the complainants for fees for- legal services, to the extent that there was included therein charges for investigation of law and facts in regard to Mr. Drew’s liability, charges as to' matters affecting the licensees of the Krentler-Amold Company, and for the investigation of law and facts with reference to the bringing of a supplemental bill, and charges for services in regard to a contemplated contempt proceeding against Krentler, other than the one before the court. In other words the charges should be confined to the expenses incurred and the legal services rendered in these contempt proceedings, and to such as were reasonably necessary.

The deeree of the District Court is affirmed, except so far as it relates to the amount of the fine. In that respect it is vacated and the ease is remanded to the District Court for further proceedings not inconsistent with this opinion. No costs.

ANDERSON, Circuit Judge

(dissenting).

It seems plain to me that this is in effect a new infringement suit, determined under the guise of contempt proceedings to enforce the decree in the old infringement suit.

By final deeree dated March 1, 1928, the Krentler-Arnold Company was held an in-fringer of the Peterson patent, No. 1,195,266. Meantime, Krentler got up a new device for a hinged last, applied for and obtained a patent, granted December 30, 1930, No. 1,786,-540. This new device, at least in appearance, is very different from the Peterson concept. Whether on a new infringement suit, brought in the proper forum, the court would conclude the Patent Office wrong in not holding it anticipated by the Peterson invention, seems to be a fairly arguable question.

But the fundamental objection to the majority opinion is that we have no jurisdiction to hold this Michigan corporation in contempt. The deeree of March 1, 1928, was final — absolutely. The contempt proceedings were filed June 4, 1929. Coneededly, only the original jurisdiction will avail the petitioner. This amounts to holding that, in equity, the jurisdiction of a District Court over foreign defendants is unlimited in time; that final decrees’may be enforced by contempt proceedings begun at any time in the court of original jurisdiction.

If the jurisdiction of the court below over this Michigan corporation continued a year after final decree, it continued indefinitely; without new process, the foreigner remained always subject to the originally obtained jurisdiction.

Por such a doctrine I find no support. In Merrimack Bank v. Clay Center, 219 U. S. 527, 31 S. Ct. 295, 55 L. Ed. 320, Ann. Cas. 1912A, 513, and in the Gompers Case, 221 U. S. 418, 31 S. Ct. 492, 55 L. Ed. 797, 34 L. R. A. (N. S.) 874, appeals were pending from the decrees disobeyed. No decree is final, in the sense now involved, pending appeal therefrom; the court above may affirm, modify, or reverse that deeree. The cases are not in point. Nor does Pitt v. Davison, 37 N. Y. 235 — a case in a code state — help on this question of federal jurisdiction.

If a judgment at law be unsatisfied, or a deeree in equity be disobeyed, the remedy is clear — to sue in the proper forum and to offer the judgment or deeree as conclusive evidence of the rights alleged; it is res adjudi-cata, so far as, fairly construed, it covers such rights.

I think the deeree below should be reversed and the petition dismissed for lack of jurisdiction.

On Rehearing.

BINGHAM, Circuit Judge.

Since our opinion in No. 2525 was handed down on March 10, 1931, the plaintiffs, appellees, have filed a petition for rehearing and a rehearing'has been had on the question whether we were right in overruling the action of the District Court in awarding to the plaintiffs in this contempt proceeding the profits which the defendant had made in the sale of its new infringing device.

Diligent search on the part of counsel and of this court has failed to discover any case in which this question has been directly raised and decided by a Court of Appeals or by tbe Supreme Court.

In Searls v. Worden, 13 F. 716, 717, Brown, District Judge, sitting in the Circuit Court for the Eastern District of Michigan, in 1882 had a similar question under consideration. That was an equity patent suit in which an interlocutory decree and injunction had been entered restraining the defendant from infringing the plaintiff’s patent for whip sockets. On the day the injunction issued, the defendant sold 62 gross of whip sockets in violation of the injunction. Contempt proceedings having been brought, the defendant was adjudged guilty of contempt, and the case was referred to a master to compute the amount of profit realized by the defendant, together with complainant’s costs and expenses. In the course of the opinion, the court stated: “The question now'arises as to the amount of fine to be imposed, and its distribution. The main question is whether the fine ought to be assessed at a gross sum, in the nature of a penalty, to be paid over to the government, as in an ordinary criminal proceeding, or whether it may be determined by the amount of profit realized by the defendant, and the costs and expenses incurred by the complainant, and the aggregate ordered to be paid over to the complainant in reimbursement of his damages.” And after some further observations in relation to the matter as to the practice in state courts under state statutes, the court further observed: “But I notice that in several eases the federal courts have adopted an analogous practice, and imposed a fine equivalent to the profits made by the defendants, and the costs and expenses of complainant, and directed the same to be paid over to the latter by way of reimbursement. In re Mullee, 7 Blatchf. 23 [Fed. Cas. No. 9,911]; Doubleday v. Sherman, 8 Blatchf. 45 [Fed. Cas. No. 4,020]. The validity of this practice is not discussed in these eases, and, without expressing any opinion of my own, I am disposed, with some hesitation, to follow them until corrected by a higher court.”

The profits from the sale of the whip sockets being found to be $682 and the complainant’s expenses incurred in the contempt proceeding $500, not including counsel fees, which were disallowed, the eourt imposed their aggregate amount of $1,182, as a fine for the violation of the injunction and ordered that that amount, when collected, be paid over to the complainant.

A final decree having been entered for the complainant, an appeal was taken to the Supreme Court. 121 U. S. 14, 7 S. Ct. 814, 30 L. Ed. 853. In the Supreme Court the final decree in the equity suit and the interlocutory decree in the contempt proceeding were reviewed. It was held that the complainant’s patent, upon which the suit was based, was invalid. As to the jurisdiction of the Supreme Court to review these contempt orders, the appellee contended that the contempt proceedings were criminal in character and therefore the court was without jurisdiction to review the orders. The eourt, however, pointed out that the contempt proceeding was brought in the equity suit and that the fine imposed was remedial in character, being made up of the profits of the defendant from the sale of the whip- sockets and the expenses incurred by the complainant in the contempt proceeding, and that the fine was directed to be paid to the complainant; and, such being the case, the interlocutory orders were subject to review on the appeal from the final decree in the suit. It then stated that the complainant’s right to the fine, if it existed at all, was founded on his right to the injunction, and that was founded on the validity of his patent; and, the patent having been found invalid, the preliminary injunction was unwarranted and the orders imposing the fine could not be upheld. In its decree it reversed the final decree and the contempt orders and remanded the case, with ' directions to dismiss the bill, but without prejudice to the power and right of the Circuit Court to punish the contempt referred to in those orders by a proper proceeding— meaning, no doubt, that the Circuit Court, on proceedings being instituted for criminal contempt, had the right to impose a fine payable to the United States for the contempt of eourt. It is evident that in this ease the Supreme Court did not deeide that, in a contempt proceeding, in a patent suit, profits made by a defendant through violating an injunction could be considered as an element in determining the amount-of the fine imposed by way of relief to the complainant. However, what was here spoken of as profits was nothing but damages which the plaintiff suffered by reason of the defendants selling the plaintiff’s patented whip sockets.

The only other patent case involving contempt orders before the Supreme Court which has been brought to our attention as having a possible bearing on the question is the Matter of Christensen Engineering Company, 194 U. S. 458, 24 S. Ct. 729, 48 L. Ed. 1072. This was an application to the Supreme Court for a writ of mandamus to require the Circuit Court of Appeals for the Second Circuit to reinstate and take jurisdiction of a writ of error for a review of an order of the Circuit Court finding the defendant guilty of contempt and fining it. In that ease it appeared that, after an injunction had issued restraining the defendant from infringing the plaintiff’s letters patent, the defendant was adjudged guilty of contempt in disobeying the injunction and was ordered to pay a fine of $1,000, one half to the United States and the other half to the complainant; that a writ of error to review this order was sued out and allowed, by the Circuit Court on March 25,1930, and a transcript of the proceedings certified to the Circuit Court of Appeals; and that, after a hearing on the writ of error, the Court of Appeals dismissed the writ.

The Supreme Court held that the fine payable to the United States was clearly punitive and in vindication of the authority of the court, and, being such, it dominated the proceeding and fixed its character; and that being punitive and not remedial, the method of review was by writ of error and the Circuit Court of Appeals should have taken jurisdiction, without waiting for an appeal from a final decree. This case, certainly, has no bearing upon the question of whether, where the proceedings in contempt are remedial in nature, profits, as such, may be taken into consideration in making up the fine.

McKee Glass Co. v. H. C. Fry Glass Co., 248 F. 125 (3d Circuit), was an equity patent suit in which contempt proceedings were instituted for the violation of a permanent injunction after final decree. In that case the trial court referred all matters of the complainants’ injuries and compensation to a master. The master reported, in round numbers, the following items: Net infringing profits realized by. defendants, $8,000; royalty at 6 per cent, on defendants’ entire sales of $41,713.97, $2.500; complainants’ expenses and costs, and master’s fee, $4,700; additional compensation for complainant’s injuries, $10,000. And the trial court imposed a penalty of $25,151.70. The assignments of error in that ease complained of all these items, except the one for $4,700. But at the argument counsel waived all their assignments except those relating to the item of $10,000 and the royalty item of $2,500. Consequently the question of whether the item of $8,000 profits was a proper allowance was not passed upon. The royalty item of $2,500 was passed upon and was plainly an item of damage. Whether the item of $8,000 represented damage suffered through the infringing sales cannot be gained from the record. At any rate, all objection to the allowance of this item was waived and the question was not considered.

Gordon et al. v. Turco-Halvah Co., Inc., et al. (2nd Circuit) 247 F. 487, is an equity patent suit in which, on March 4,1915, a final decree was entered by consent of both parties adjudging the plaintiffs sole owners and exclusive licensees under the two patents in suit; also adjudging that the defendants had infringed both patents; and enjoining them against making any candy containing the inventions in question, or either of them, or any candy or food products like or similar to those that they, or any of them, had hitherto made. November 8, 1915, the plaintiffs procured an order to show cause why the defendants should not be punished- for contempt. The District Court entered an order finding'the defendants in contempt for violating the provisions of the final decree of March 5, 1915, in respect to one of the patents, but not as to the other, and directed a reference to a special master to ascertain the candy so sold in violation of that decree and the profits obtained therefrom. The master found the defendant’s profits to be $2,129.70, to which he added the plaintiff’s charges and disbursements in the contempt proceeding of $700.92, together with a counsel fee of $750, making in all_ $3,580.62. The District Court confirmed these findings with a modification of the amount of the counsel fee, and an order was entered on February 19,1917, against the defendants, in the sum of $2,784.16, for which execution was directed to issue, and the defendants appealed therefrom.

The opinion in this case does not discuss the question, and it apparently was not raised, whether the District Court, after final decree in the original equity suit, could, in a summary eontempt proceeding, direct an accounting of profits made by the defendants from the infringing sales and take those profits into consideration in determining the amount of the fine to be imposed. No such question was raised or decided. The sum reported as profits was probably nothing but damages due to infringing sales.

Christensen Engineering Co. v. Westinghouse Air Brake Co. (2d Circuit) 135 F. 774, is the same case above referred to under the name of the Matter of Christensen Engineering Co. that was before the Supreme Cdurt, and involved the action of the Court of Appeals in two contempt proceedings which it was directed by the Supreme Court to review on writs of error. In this case the contempts consisted in violations of an interlocutory injunction restraining the defendant from infringing plaintiff’s letters patent. In both contempt proceedings decrees had been entered finding the defendant guilty of violating the interlocutory injunction. In the first contempt proceeding the order or decree fined the defendant $1,000 and directed one half the fine to be paid to the clerk for the use of the United States and the other half paid to the complainants in the suit. In the second contempt proceeding the order or decree fined the defendant $4,000 and directed a like disposition of the fine.

The Court of Appeals affirmed the orders of the District Court so far as they imposed penalties payable to the United States, but reversed the orders so far as they directed payments to be made to the complainant, as the ease did not disclose that the latter orders were “based upon any proved items of loss or expense”; that “a fine exceeding the indemnity to which the plaintiff is entitled is purely punitive”; and that, “when it is imposed by way of indemnity to the aggrieved party, it should not exceed his actual loss incurred by the violation of the injunction, including the expenses of the proceedings necessitated in presenting the offense for the judgment of the court.” And where such expense is not shown, the expense item should be limited to the taxable costs.’

1 Cheatham Electric Switching Device Co. r. Transit (Development Co. (2d Circuit) 261 F. 792, 796, was an appeal from a decree in a patent equity ease, in which review was "also sought of an interlocutory decree entered in a contempt proceeding. The plaintiff apparently complained that the District Court erred in refusing to make the punishment in the contempt proceeding larger than it did. In considering the matter Judge Hough, speaking for the Circuit Court of Appeals, said:

“Contempt is not to be regarded as a source of revenue or additional damages to a complainant. A civil contempt, such as this, may result in reimbursing complainant, not for infringements as to which he may seek damages and profits before a master, but for losses and expenses to which he is subjected by the offender’s contumacious conduct. This record shows no loss of any kind to plaintiffs by reason of defendant’s delay in disconnecting the aforesaid apparatus, and its expenses were reasonably covered by the $150.”

This decision of the Circuit Court of Appeals of the Seeond Circuit, like its other decision in Christensen Engineering Co. v. Westinghouse Air Brake Co., indicates that, in a civil contempt proceeding brought in an equity ease, the fine constituting the complainant’s reimbursement should consist of losses (damages) and expenses to which he has been subjected by the defendant’s contumacious conduct; and that it should not include profits made through infringing sales which did not damage the plaintiff.

This seems to be the attitude of the Court of Appeals in the Sixth Circuit, as will be seen from an examination of the case of Monroe Body Co. v. Herzog, 13 F.(2d) 705, 706. That was an appeal from a decree of the District Court in which it was sought to review an order or decree in a contempt proceeding instituted pending an accounting in the original ease in which it was filed. In the contempt proceeding a fine was imposed to be paid to the plaintiff on account of the defendant’s continuing infringements. In discussing the latter fine, the court said:

“The specific objection against the imposition of the private penalty is that it was made additional to the damages and profits that might be recovered in the pending accounting, and was not to have any effect upon such accounting. M)Fe see no objection to this. A private penalty of this kind is imposed, not to compensate for assessable damages and profits, but with reference to those items of damages which are not thus assessable.”

The Court of Appeals in this circuit in the case of Kreplik v. Couch Patents Co., 190 F. 565, 569 (1st Circuit), in a decision written by Judge Hale, reached a like conclusion. That was an equity patent suit in which proceedings for contempt were instituted against the defendant for breach of an injunction restraining him from infringing the plaintiff’s patent. He was found guilty of contempt and was ordered to pay a fine of $500 to the clerk of court for the use of the petitioner. In that case it was said:

“In Gompers v. Buck’s Stove & Range Co., 221 U. S. 418, 31 S. Ct. 492, 55 L. Ed. 797 [34 L. R. A. (N. S.) 874], the Supreme Court has lately passed upon this question. The court clearly draws the vital distinction between proceedings for civil contempt, which are between the original parties, and proceedings at law for criminal contempt, which are between the public and the defendant. The court holds that the proper remedial relief for a disobedience of an injunction in the equity cause before it would have been to have imposed a fine for the use of the complainant, measured in some degree by the pecuniary injury caused by the act of disobedience.
“The two aspects of contempt proceedings have often been before the Circuit Court in this circuit, where it has been clearly recognized that in an equity cause a fine for contempt imposed for the use of the petitioner is not a punitive fine, but merely indemnity to the petitioner for the loss occasioned to him by the offensive acts of the defendant.”

In Gompers v. Buck’s Stove & Range Co., 221 U. S. 418, at pages 443, 444, 31 S. Ct. 492, 499, 55 L. Ed. 797, 34 L. R. A. (N. S.) 874, the court said:

“In this case the alleged contempt did not consist in the defendant’s refusing to do any affirmative act required, but rather in doing that which had been prohibited. The only possible remedial relief for such disobedience would have been to impose a fine for the use of complainant, measured in some degree by the pecwniafy injury caused by the act of disobedience.”

The Gompers Case was not a patent case, but it was an equity case in which the contempt proceedings were brought. The .fact that it was not a patent case can make no difference as to the nature of the elements of which the penalty may consist. That case, the Kreplik Case, and the cases in the Second and Sixth Circuits, point out, if they point out anything, that a remedial fine in a contempt proceeding is to be based upon the pecuniary injury or damage, which the act of disobedience caused the complainant, and such reasonable expenses as the act of disobedience occasioned through the bringing of the proceeding. It is to compensate him for his damage thus occasioned. It is not an attempt to restore to him the profits which he might recover in an equity suit for discovery and accounting, where the sales were so conducted that the plaintiff could not be shown to have been thereby pecuniarily damaged.

If the plaintiffs in this case had been able to prove that the infringing sales, out of which the profits were realized, caused them to suffer pecuniary damage, or had been able to prove what would have been a reasonable royalty for the use of their patent and that they had lost the same through the defendant’s conduct, they could have established a case for the allowance of damages arising out of the infringing sales. But they failed by either of these methods to show that they were pecuniarily injured, and neither the master nor the court found that they suffered any damages.

This contempt proceeding in no way affects any equitable remedy which the plaintiffs have or may have had to recover profits, and the case of Root v. Railway, 105 U. S. 189, 26 L. Ed. 975, does not controvert this proposition. That ease proceeds upon the theory that, in the absence of some recognized ground of equity jurisdiction, the owner of an expired patent cannot maintain a bill in equity for profits; that a bill “for naked'ae-count of profits” will not suffice. In' this respect the plaintiffs’ equitable remedy, if they have any, does not stand differently from what it would if this court had no jurisdiction to entertain the contempt proceeding and had dismissed it.

In view of the conclusion we have reached, our previous order in this case is affirmed.

ANDERSON, Circuit Judge

(dissenting).

Still asserting, on the facts in this ease, no continuing jurisdiction over this Michigan corporation, T now add that (assuming jurisdiction and violation of the injunction) I can see no reason why the profits derived from the alleged violation of the injunction are not recoverable; that at least they may be taken as a guide in assessing petitioner’s damages.

Rights, under a previously obtained injunction, are at least as great as rights under a presently obtained injunction. Violation of such rights ought to have like remedy, both in nature and in extent. The patent owner, if now suing in equity for infringement, could of course recover the infringer’s profits. Rev. St. § 4921 (35 USCA § 70).

But the present holding is that the persistent infringer, instead of being held, under Rev. St. § 4919 (35 USCA § 67), Hable for punitive damages (no damages whatever being shown), shall escape all aeeountabiHty for its profits, made as the result of its alleged contumacy.

In Brown v. Lanyon, 148 F. 838 (C. C. A., 8th) it was held that an action at law cannot be maintained for the sole purpose of recovering an infringer’s profits. Compare Walker Patents (5th Ed.) § 555. In Root v. Railway, 105 U. S. 189, 26 L. Ed. 975, it was held that the owner of an expired patent could not maintain a bill in equity solely for an account of profits and damages against an infringer during the life of the patent; that his only remedy was at law. Compare Tilgh-man v. Proctor, 125 U. S. 136, 148, 8 S. Ct. 894, 31 L. Ed. 664.

The present decision apparently leaves this appellant without any remedy, either at law or in equity, to obtain its just rights.

None of the cases cited and reviewed in the majority opinion seems to me to support the conclusion. The proceedings are purely remedial. I think the appellant entitled to full relief.


source: Caselaw Access Project

author: ERNEST F. COCHRAN, District Judge.

license: Public Domain

text:
    OSBORN v. UNITED STATES.
    No. 3145.
    Circuit Court of Appeals, Fourth Circuit.
    June 17, 1931.
    H. Woodward Winburn, of Greensboro, N. C. (R. H. McNeill, of Washington, D. C., J. F. Jordan, of Wilkesboro, N. C., and W. E. Miller, on the brief), for appellant.
    E. L. Gavin, U. S. Atty., of Greensboro, N. C. (Arthur E. Tilley, Asst. U. S. Atty., of Mt. Airy, N. C., Hobart Morton, Asst. U! S. Atty., of Albemarle, N. C., T. C. Carter, Asst. U. S. Atty., of Burlington, N. C., and William Wolff Smith, Gen. Counsel, U. S. Veterans’ Bureau, and B. L. Guffy, Atty., U. S. Veterans’ Bureau, both of Washington, D. C., on the brief), for appellee.
    Before PARKER, Circuit Judge, and Mc-CLINTIC and COCHRAN, District Judges.
   ERNEST F. COCHRAN, District Judge.

The appellant brought an action against the United States on a contract of war risk term insurance. A trial in the District Court resulted in a judgment in favor of the United States, and he has appealed. During the course of the argument in this court, it appeared from an examination of the record that what purports to be the bill of exceptions has not been signed by the trial judge. It appears to have been merely filed, in reliance apparently upon the state practice.

The practice prevailing in some states, under which the bill of exceptions may be settled by the agreement of the parties without asking or securing the assent of the judge, does not exist in the federal courts. Goetzinger v. Woodley (C. C. A. 4th) 17 F.(2d) 83, 84. They may not consider such a bill unless it is authenticated by a judicial signature. Goetzinger v. Woodley, supra; Mussina v. Cavazos, 6 Wall. 355, 363, 18 L. Ed. 810; Origet v. U. S., 125 U. S. 240, 243, 8 S. Ct. 846, 31 L. Ed. 743; Malony v. Adsit, 175 U. S. 281, 20 S. Ct. 115, 44 L. Ed. 163. It is true that some six months after the decision in the last-cited case was handed down, and doubtless in consequence of what was then said, Congress provided that, in the event of the death, sickness, or other disability of the trial judge, another judge might sign the bill, if he thought he could fairly do so (section 1, Act of June 5,1900, 31 Stat. 270 [U. S. Code, title 28, § 776, 28 USCA § 776]); but, as was said by Judge Rose in Goetzinger v. Woodley, supra, page 84 of 17 F.(2d), this enactment simply emphasizes the necessity of signature by some judge.

The counsel for appellant who argued the case in this court and who was not of counsel until the reeord was lodged here, contends that, inasmuch as the attorney for the United States made no objection to the bill, he must be deemed to. have assented to its correctness, and to have waived the signature of the judge. But consent cannot give jurisdiction to the court to allow the bill. Goetzinger v. Woodley, supra, page 83 of 17 F.(2d); Exporters of Manufacturers’ Products, Inc., v. Butterworth-Judson Co., 258 U. S. 365, 42 S. Ct. 331, 66 L. Ed. 663. In Malony v. Adsit, supra, page 287 of 175 U. S., 20 S. Ct. 115, 44 L. Ed. 163, the Supreme Court said that it was not competent for parties by agreement lo dispense with the signature of the judge. If the parties cannot by consent or express agreement dispense with this requirement, a fortiori it cannot be waived by conduct.

Appellant’s counsel also argues that the court should not of its own motion strike the bill from the reeord. But Mussina v. Cavazos, supra, page 363 of 6 Wall., 18 L. Ed. 810, is directly in point on that proposition. There, after the ease had been elaborately ar-. gued on the merits, it was discovered by the court that the bill of exceptions had not been signed by the trial judge, and, there being nothing showing that it had been submitted to him or had in any way received his sanction, the court held that it had no power to consider the bill.

Counsel further argues that the defect is a technical one, and that the court has the power in its discretion to consider the bill. But the defect is not a technical one, and this court has no discretion in the matter. It is important that records submitted to this court should be duly authenticated, and the requirements of law should be strictly complied with. In a recent case, the Supreme Court of the United States, after reciting the history of bills of exceptions, and the necessity of the signing thereof by the trial judge, as provided by the act of Congress, used the following language: “Strict requirements are thus insisted on so as to make certain that the reviewing court shall have before it an accurate account of the evidence or exhibits, which were before the trial court in the original hearing of the issues of the ease, properly certified.” Krauss Bros. v. Mellon, 276 U. S. 386, 390, 48 S. Ct. 358, 359, 72 L. Ed. 620.

It follows from what has been said that the so-called bill of exceptions cannot be considered by us, and, if it be stricken from the record, as it must be, there is no foundation for any of the assignments of error relied on.

But there is another defect fatal to the appeal. The record. discloses that final' judgment was entered in favor of the United States on August 8, 1930, and the petition for appeal was not presented to the trial judge, nor the appeal allowed, until November 26, 1930, more than three months after the entry of final judgment. The Act of Congress (U. S. Code, title 28, § 230 [28 USCA § 230]) provides that no appeal shall be allowed unless application therefor be duly made within three months after the entry of the judgment or decree. The requirements of this section are mandatory and jurisdictional, and not to be avoided by consent, waiver, or acquiescence, or even by an order of the court. Old Nick Williams Co. v. U. S., 215 U. S. 541, 30 S. Ct. 221, 54 L. Ed. 318; Vaughan v. American Ins. Co. (C. C. A. 5th) 15 F.(2d) 526, 527; Kiehn v. Dodge County (C. C. A. 8th) 19 F.(2d) 503, 504; Collins v. U. S. (C. C. A. 8th) 24 F.(2d) 823; Bremner v. Thomas (C. C. A.) 25 F.(2d) 301; N. W. Public Service Co. v. Pfeifer (C. C. A. 8th) 36 F.(2d) 5, 8; Robie v. Hart, Schaffner & Marx (C. C. A. 8th) 40 F.(2d) 871, 872.

Here also counsel contends that, inasmuch as the attorney for the United States-has made no motion to dismiss, this court should not dismiss the appeal on its ovfa motion. The eases above cited hold that this jurisdictional requirement cannot be avoided by consent, acquiescence, or waiver of the parties, or even by an order of the court. It is the duty of a federal áppellate court in every case to examine its jurisdiction, whether such point has been raised or not. Bremner v. Thomas, supra, page 301 of 25 F.(2d) and cases there cited.

Counsel contends also that the appeal should be. considered because the appellant-gave notice of an appeal. There is nothing in the record to show that any such notice, was given, except in the supposed bill of exceptions, which contains this statement: “The plaintiff also notes for the purpose of the record an appeal to the Circuit Court of Appeals.” When or how this notation was made does not appear. But inasmuch as the bill of exceptions is not signed by the judge, we cannot accept or consider the statements it contains. Aside' from this, a notiee of appeal is not sufficient. The Act of Congress (U. S. Code, title 28, § 230 [28 USCA § 230]) requires that an “application” must be made for the appeal. While courts may be rather liberal in construing that word, yet they are not at liberty to disregard its reasonable meaning, which in this usage necessarily carries the element of request. Robie v. Hart, Schaffner & Marx, supra, page 872 of 40 F.(2d). It is true that the Act of Congress of January 31, 1928, chap. 14, § 1, 45 Stat. 54 (U. S. Code Ann. title 28, § 861a), abolished writs of error and substituted an appeal, and section 2 thereof provided that the appeal might be taken by serving notiee, etc., but section 2 of that act was amended by the Act of April 26, 1928, chap. 440, 45 Stat. 466 (U. S. Code Ann. title 28, § 861b), and the provisions for giving notice were omitted. The result is that under the act, as amended, appeals cannot be taken by notice, but there must be an application therefor in accordance with the rules governing appeals. Vaughan v. American Ins. Co., supra; N. W. Public Service Co. v. Pfeifer, supra; Robie v. Hart, Schaffner & Marx, supra.

The rules requiring the dismissal of this appeal are so well settled that it might well have been dismissed without discussion. We have, however, deemed it advisable to advert to these rules again, in the hope that the bar will understand that these jurisdictional requirements must be complied with.

For these reasons, the appeal herein must be, and the same is hereby, dismissed.


author: PARKER, Circuit Judge.

text:
    WOOD, Forest Supervisor, v. PHILLIPS et al.
    No. 3099.
    Circuit Court of Appeals, Fourth Circuit.
    June 17, 1931.
    Thomas J. Harkins, U. S. Atty., of Ashe-ville, N. C. (Elton L. Marshall, Sol., U. S. Department of Agriculture, J. B. Horigan, and H. H. Clarke, Assts. to the Sol., U. S. Department of Agriculture, all of Washington, D. C., on the brief), for appellant.
    Zebulon Weaver, of Asheville, N. C. (T. M. Jenkins, of Robbinsville, N. C., on the brief), for appellees.
    Before PARKER and NORTHCOTT, Circuit Judges, and GLENN, District Judge.
   PARKER, Circuit Judge.

This is an appeal from a decree in a suit instituted in the court below by one R. L. Phillips, as plaintiff, against Arthur A. Wood, a forest supervisor of the United States, as defendant. The bill of complaint alleges that plaintiff is the owner and entitled to the free and uninterrupted use of a certain tract of land; that defendant is exercising dominion and control over same, is claiming title thereto to be in the Department of Agriculture of the United States and, under threats of prosecution, is preventing plaintiff from removing timber therefrom or exercising other rights of ownership with respect thereto; that defendant and those under whom he claims have no title to the land and their alleged title and claim of ownership constitute a cloud upon plaintiff’s title and prevent him from placing the land upon the market or from cutting and removing timber therefrom; that the land is principally valuable for the timber and unless plaintiff is allowed to sell same while timber is being cut on an adjoining tract he will be irreparably damaged; and that plaintiff is unable to sue the United States or to induce the United States to sue him for the purpose of settling the title. It concludes with a prayer that plaintiff be declared the owner of the land and that defendant be enjoined from claiming or exercising dominion over same, or from interfering with the free and uninterrupted use thereof by plaintiff.

Defendant filed to the bill of complaint a pleading entitled “Answer and motion to dismiss or transfer to the law side of the docket.” In this he denied plaintiff’s title, averred title to be in the government of the United States under whom he claimed, and moved that the suit be dismissed or transferred to the law side of the court under Equity Rule 22 (28 USCA § 723). This motion was denied, exception to its denial was duly taken, and trial was had before the court sitting in equity. Decree was entered adjudging plaintiff to be the owner of the land in controversy and enjoining defendant from claiming or exercising dominion over same; and from this decree defendant has appealed, assigning as error, among other rulings of the court, the refusal to dismiss the suit or transfer it to the law side of the docket for trial.

An analysis of the bill of complaint will show that the plaintiff has not only not alleged that he is in possession of the lands in controversy, but has alleged that defendant is in possession thereof, the allegation with regard to defendant’s possession being that defendant is exercising dominion and control over these lands, claiming title thereto to be in the government of the United States. As defendant is sued as forest supervisor of the United States, the fair inference from the pleadings is that he is exercising such dominion. and control as forest supervisor. Without entering into an analysis of the many decisions as to what constitutes possession of real estate which will subject the possessor to an action of ejectment, there can be no doubt, we think, that the dominion and control exercised by a forest supervisor over government forest lands constitutes such possession. Tindal v. Wesley, 167 U. S. 204, 211, 17 S. Ct. 770, 42 L. Ed. 137. As said by Judge Gaston in Williams v. Buchanan, 23 N. C. (1 Iredell’s Law) 535, 35 Am. Dec. 760: “Possession of land is denoted by the exercise of acts of dominion over it, in making the ordinary use and taking the ordinary profits, of which it is susceptible in its present state— such acts to be so repeated as to show that they are done in the character of owner, and not of an occasional trespasser.” And the rule as to what constitutes possession in a case such as this is thus stated in 1 R. C. L. 695:

“As a general rule it will be sufficient if the land is so used by the adverse claimant as to apprise the community in its locality that it is in his exclusive use and enjoyment, and to put the owner on inquiry as to the nature and extent of the invasion of his rights; and this is especially true where the property is so situated as not to admit of permanent improvement. In such cases if the possession comports with the usual management of similar lands by their owners it will be sufficient. Neither actual occupation, cultivation, nor residence is necessary where neither the situation of the property, nor the use to which it is adapted or applied, admits of or requires such evidences of ownership.”

The bill was evidently drawn in accordance with the North Carolina practice, under which the distinctions between actions at law and suits in equity have been abolished, and pursuant to the provisions of section 1743 of the Consolidated Statutes, which allows an action to be brought by “any person against another who claims an estate or interest in real property adverse to him for the purpose of determining such adverse claims.” This section authorizes suit in the courts of North Carolina wherever another sets up an adverse claim to land of plaintiff, whether plaintiff be in possession thereof or not (Satterwhite v. Gallagher, 173 N. C. 525, 92 S. E. 369), the suit being treated by the North Carolina courts as an action of ejectment, where ownership is alleged to be in plaintiff and possession in defendant. Hines v. Moye, 125 N. C. 8, 34 S. E. 103. This statute, however, does not enlarge the jurisdiction of federal courts of equity, as it merely regulates procedure and does not. create any substantive right. And, even if it could be considered as - creating an equitable right, it would not authorize the trial by a federal court of equity of what is in essence an action of ejectment, for the reason that in such action the defendant is entitled under the federal constitution to a trial by jury. As said by Chief Justice Hughes in the recent case of Henrietta Mills v. Rutherford County, 281 U. S. 121, 127, 50 S. Ct. 270, 272, 74 L. Ed. 737:

“It is true that where a state' statute cre- ' ates a new equitable right of a substantive character, which can be enforced by proeeed- ■ ings in conformity with the pleadings and practice appropriate to a court of equity, ■ such enforcement may be had in a federal court provided a ground exists for invoking the federal jurisdiction. Clark v. Smith, 13 Pet. 195, 203, 10 L. Ed. 123; In re Broderick’s Will, 21 Wall. 503, 520, 22 L. Ed. 599; Holland v. Challen, 110 U. S. 15, 24, 25, 3 S. Ct. 495, 28 L. Ed. 52; Frost v. Spitley, 121 U. S. 552, 557, 7 S. Ct. 1129, 30 L. Ed. 1010; Gormley v. Clark, 134 U. S. 338, 348, 10 S. Ct. 554, 33 L. Ed. 909; Lawson v. United States Mining Company, 207 U. S. 1, 9, 28 S. Ct. 15, 52 L. Ed. 65; Pusey & Jones Company v. Hanssen, 261 U. S. 491, 498, 43 S. Ct. 454, 67 L. Ed. 763. But the enforcement in . the federal courts of new equitable rights created by states is subject to the qualification that such enforcement must not impair . any right conferred, or conflict with any in- . hibition imposed, by the constitution or laws of the United States. This court said in Scott v. Neely, 140 U. S. 106, 110, 11 S. Ct. 712, 714, 35 L. Ed. 358, that ‘whenever, respecting any right violated, a court of law is competent to render a judgment affording a plain, adequate, and complete remedy, the party aggrieved must seek his remedy in such court, not only because the defendant has a constitutional right to a trial by jury, but because of the prohibition of the act of congress to pursue his remedy in such cases in a court of equity.’ Whitehead v. Shattuck, 138 U. S. 146, 152, 11 S. Ct. 276, 34 L. Ed. 873; Wehrman v. Conklin, 155 U. S. 314, 323, 15 S. Ct. 129, 39 L. Ed. 167. Whatever uncertainty may have arisen because of expressions which did not fully accord with the rule as thus stated, the distinction, with respect to the effect of state legislation, has come to be clearly established between substantive and remedial rights. A state statute of a mere remedial character, such as that which the petitioner invokes, cannot enlarge the right to proceed in a federal court sitting in equity, and the federal court may, therefore, be obliged to deny an equitable remedy which the plaintiff might have had in a state court.”

When the bill is considered in the light of the principles governing suits in equity in the federal courts, and without the aid of the state statute, it is perfectly clear that it cannot be sustained for two reasons: (1) Because a bill to quiet title does not lie in favor of a plaintiff who is not in possession against a defendant- who is in possession; and (2) because a suit to quiet title would settle nothing, as defendant is claiming, not in his own right, but as an officer of the federal government, which cannot be made a party.

A federal court of equity will not entertain a bill to quiet title by a plaintiff not in possession against a defendant in possession not only because such plaintiff has a plain, adequate and complete remedy at law in an action of ejectment, but also because defendant has the constitutional right to have the issue of title tried by a jury. Whitehead v. Shattuck, 138 U. S. 146, 151, 11 S. Ct. 276, 277, 34 L. Ed. 873; White v. Sparkill Realty Corp., 280 U. S. 500, 50 S. Ct. 186, 74 L. Ed. 578; Twist v. Prairie Oil & Gas Co., 274 U. S. 684, 47 S. Ct. 755, 71 L. Ed. 1297; Wehrman v. Conklin, 155 U. S. 314, 323, 15 S. Ct. 129, 39 L. Ed. 167; Smyth v. N. O. Canal & Banking Co., 141 U. S. 656, 661, 12 S. Ct. 113, 35 L. Ed. 891; Scott v. Neely, 140 U. S. 106, 110, 11 S. Ct. 712, 35 L. Ed. 358; Frost v. Spitley, 121 U. S. 552, 556, 7 S. Ct. 1129, 1131, 30 L. Ed. 1010; U. S. v. Wilson, 118 U. S. 86, 89, 6 S. Ct. 991, 30 L. Ed. 110; New Jersey & N. C. Land & Lumber Co. v. Gardner Lacy Lumber Co. (C. C. A. 4th) 178 F. 772; Johnston v. Corson Gold Mining Co. (C. C. A. 9th) 157 F. 145, 15 L. R. A. (N. S.) 1078; Harland v. Bankers’ & Merchants’ Tel. Co. (C. C.) 32 F. 305; 5 R. C. L. 642.

The ease of Whitehead v. Shattuck, supra, cited with approval in the recent ease of Henrietta Mills v. Rutherford County, supra, is directly in point. In that ease it appeared that a statute of Iowa authorized the bringing of a suit to quiet title against one in possession of the property claimed by plaintiff. Suit was instituted under the statute against a defendant in possession. In holding that a federal court of equity was without jurisdiction to entertain the suit, the court, speaking through Mr. Justice Field, said:

“The seventh amendment of the constitution of the United States declares that ‘in suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved.’ That provision would be defeated if an action at law could be tried by a court of equity, as in the latter court a jury can only be summoned at its discretion, to ascertain special facts for its enlightenment. Lewis v. Cocks, 23 Wall. 466, 470 [23 L. Ed. 70]; Killian v. Ebbinghaus, 110 U. S. 568, 573, 4 S. Ct. 232 [28 L. Ed. 246]; Buzard v. Houston, 119 U. S. 347, 351, 7 S. Ct. 249 [30 L. Ed. 451], And so it has been held by this court ‘that whenever a court of law is competent to take cognizance of a right, and has power to proceed to a judgment which affords a plain, adequate, and complete remedy, without the aid of a court of equity, the plaintiff must proceed at law, because the defendant has a constitutional right to a trial by jury.’ Hipp v. Babin, 19 How. 271, 278 [15 L. Ed. 633].
“It would be difficult, and perhaps impossible, to state any general rule which would determine, in' all cases, what should be deemed a suit in equity as distinguished from an action at law, for particular elements may enter into consideration which would take the matter from one court to the other; but this may be said, that where an action is simply for the recovery and possession of specific real or personal property, or for the recovery of a money judgment, the action is one at law. An action for the recovery of real property, including damages for withholding it, has always been of that class. The right which in this case the plaintiff wishes to assert is his title to certain real property; the remedy which he wishes to obtain is its possession and enjoyment; and in a contest over the title both parties have a constitutional right to call for a jury.”

The rule is thus stated by Mr. Justice Gray, in Frost v. Spitley, supra:

“Under the jurisdiction and practice in equity, independently of statute, the object of a bill to remove a cloud upon title, and to quiet the possession of real estate, is to protect the owner of the legal title from being disturbed in his possession, or harassed by suits in regard to that title; and the bill cannot be maintained without clear proof of both possession and legal title in the plaintiff. Alexander v. Pendleton, 8 Cranch, 462 [3 L. Ed. 624]; Peirsoll v. Elliott, 6 Pet. 95 [8 L. Ed. 332]; Orton v. Smith, 18 How. 263 [15 L. Ed. 393]; Crews v. Burcham, 1 Black, 352 [17 L. Ed. 91]; Ward v. Chamberlain, 2 Black, 430 [17 L. Ed. 319]. As observed by Mr. Justice Grier in Orton v. Smith: ‘Those only who have a clear legal and equitable title to land, connected with possession, have any right to elaim the interference of a court of equity to give them peace or dissipate a cloud on the title.’ 18 How. 265 [15 L. Ed. 393]. A person out' of possession cannot maintain such a bill, whether his title is legal or equitable; for, if his title is legal, his remedy at law, by action of ejectment, is plain, adequate, and complete; and if his title is equitable, he must acquire the legal title, and then bring ejectment. U. S. v. Wilson, 118 U. S. 86, 6 S. Ct. 991 [30 L. Ed. 110]; Fussell v. Gregg, 113 U. S. 550, 5 S. Ct. 631 [28 L. Ed. 993].”

And we think that the second ground stated above is equally conclusive against the right of plaintiff to maintain the suit in equity. The United States not having consented to be sued, cannot be made a party defendant. Carr v. U. S., 98 U. S. 433, 25 L. Ed. 209; U. S. v. Turner (C. C. A. 8th) 47 F.(2d) 86. Consequently, plaintiff’s suit to quiet title will not establish title against the adverse claimant, and any relief which the court may grant will be nugatory. Ejectment would lie, because in that action relief is sought, not against the claim of the government, but against the wrongful possession of the government’s agent. U. S. v. Lee, 106 U. S. 196, 1 S. Ct. 240, 27 L. Ed. 171. In a suit to quiet title, however, the matter in issue is the title itself; and no effective relief can be granted unless the adverse claimant is a party to the suit. As was well said by the Court of Appeals of New York in Sanders v. Saxton, 182 N. Y. 477, 75 N. E. 529, 530, 1 L. R. A. (N. S.) 727, 108 Am. St. Rep. 826, 828: “Now, as the only object and purpose of a suit in equity to remove a cloud on the title to property is to have any adverse title that may be asserted under such cloud passed on and adjudged void, so that the plaintiff in possession may be forever afterwards free from any danger of the hostile claim, it would seem plain that, where the judgment in an action cannot conclude or bind a party daim- - ing under the adverse title, the action must fail.”

Louisiana v. Garfield, 211 U. S. 70, 29 S. Ct. 31, 53 L. Ed. 92, was a suit instituted to establish the title of Louisiana to certain swamp lands and to enjoin the Secretary of ■the Interior from making a disposition of the lands in derogation of that title. The court held that the case presented questions with respect to the title of the United States which could not be tried behind its back, that it was therefore a necessary party to the ease find that, as it could not be made a party, the action must fail. To the same effect is New Mexico v. Lane, 243 U. S. 52, 37 S. Ct. 348, 61 L. Ed. 588; and see, also, Oregon v. Hitchcock, 202 U. S. 60, 26 S. Ct. 568, 50 L. Ed. 935; Minnesota v. Hitchcock, 185 U. S. 373, 22 S. Ct. 650, 46 L. Ed. 954; Carr v. U. S., supra; Electric Steel Foundry v. Huntley (C. C. A. 9th) 32 F.(2d) 892, and Subirana v. Kramer (C. C. A. 1st) 17 F.(2d) 725, 727.

In the case last cited, which is very similar to the case at' bar, the Circuit Court of Appeals of' the First Circuit, speaking through Judge Bingham, said:

■ “While the bill purports to be one to remove a cloud upon the plaintiffs’ title, it does not allege facts sufficient to give them a right to the interference of a court of equity. It is well established in the federal courts that 'those only who have a clear, legal, and equitable title to land connected with possession, have any right to claim the interference of a court of equity to give them peace or dissipate a cloud on the title.’ Orton v. Smith, 18 How. 263, 265 (15 L. Ed. 393). * * *
“Furthermore, it is not the jurisdiction of equity to adjudicate upon the conflicting titles of parties to real estate — that is for the law court; and one who brings a bill in equity to remove a cloud upon his title must not only set out facts showing that he has a clear legal title, but also set out the pretended title or right of the defendant claimed to be a cloud upon his title, that it is clearly invalid and such as may, at the present or a future time, embarrass him in controverting it. Phelps v. Harris, 101 U. S. 370, 374, 375, 25 L. Ed. 855; 3 Pomeroy’s Equity, § 1399. This bill does not allege that the defendant owns or claims to own any title or right that easts a cloud on the plaintiffs’ title. On the contrary, the implication of the bill and the contention of the plaintiffs in their brief is that he does not own or claim any title to or right in the lands in controversy, but that, in committing the acts of trespass complained of, he pretends to have acted in pursuance of the authority and right of another, not a party to this proceeding. The bill undoubtedly alleges a cause of action at law for trespass, but no ground for the interposition of a court of equity.”

The case of Philadelphia Co. v. Stimson, 223 U. S. 605, 32 S. Ct. 340, 345, 56 L. Ed. 570, relied upon by complainant, is not in point. That was a suit instituted by a riparian owner in possession of land to enjoin the Secretary of War from instituting criminal pros'ecution against complainant because of 'the reclamation and occupation of land outside the harbor lines established by the secretary pursuant to statute. The court said of the easeN “It was not to determine a controversy as between conflicting claimants under the local law. It was not to restrain trespass. Northern Indiana R. R. Co. v. Michigan Central R. R. Co., 15 How. 233, 14 L. Ed. 674; Ellenwood v. Marietta Chair Co., 158 U. S. 105, 15 S. Ct. 771, 39 L. Ed. 913. It was not brought to try the naked question of the title to the land. Massie v. Watts, 6 Cranch, 148, 158, 3 L. Ed. 181, 185. While the complainant’s title lay at the foundation of the suit, and it would be necessary for the complainant to prove it, if denied, still if its title to the land under water were established or admitted to be as alleged, the question would remain whether the defendant, in imposing restrictions upon the use of the property, was acting by virtue of authority validly conferred by a general act of Congress. This was the principal question which the complainant sought to have determined.” In the case at bar, the question of title is the sole question involved. That being determined, there is no question as to the rights of complainant in the-property or as to the powers of the officials of the government. It is clear that a court of equity cannot be vested with jurisdiction to try title to land by asking injunction against the institution of criminal prosecutions for trespass by the person in possession. “An injunction will not be used to take property out of the possession of one party and put it into that of another. I High, Inj. (2d Ed.) § 355.” White v. Sparkill Realty Corp., supra, 280 U. S. 500, 511, 50 S. Ct. 186, 189, 74 L. Ed. 578.

For the reasons stated, the proceeding instituted by plaintiff could not be maintained as a suit in equity. The faets alleged in the bill, however, disclosed a good cause of action at law against defendant under the doctrine of U. S. v. Lee, 106 U. S. 196, 1 S. Ct. 240, 27 L. Ed. 171. The court should, therefore, have granted the motion to transfer the cause to the law side of the docket, with leave to plaintiff to amend. Equity Rule 22 (28 USCA § 723); Act of March 3, 1915, c. 90, 38 Stat. 956, 28 USCA § 397; White v. Sparkill Realty Corp., supra, 280 U. S. 500, 512, 50 S. Ct. 186, 74 L. Ed. 578; Liberty Oil Co. v. Condon Nat. Bank, 260 U. S. 235, 241, 43 S. Ct. 118, 67 L. Ed. 232; Clarksburg Trust Co. v. Commercial Casualty Ins. Co. (C. C. A. 4th) 40 F.(2d) 626, 633; Kelley v. U. S. (C. C. A. 9th) 30 F.(2d) 193, 194. It is urged that because of the agreed statement of facts introduced on the trial in equity the error in not transferring the cause should be held harmless. The answer to this is that defendant objected to proceeding in equity and excepted to the refusal to transfer the cause. Because of defendant’s right to a trial by jury, the error in refusing to transfer the cause cannot be treated as harmless, whatever the state of the proofs. Great American Ins. Co. v. Johnson (C. C. A. 4th) 27 F.(2d) 71.

The decree below will be reversed, and the cause will be remanded, with directions that it be transferred to the law side of the docket, with leave to the parties to amend their pleadings.

Reversed and remanded, with directions.