author: TUTTLE, District Judge.

text:
    CINDERELLA THEATER CO., Inc., et al. v. SIGN WRITERS’ LOCAL UNION NO. 591 et al.
    No. 6191.
    District Court, E. D. Michigan, S. D.
    March 6, 1934.
    Ralph E. Routier, of Detroit, Mich., for plaintiffs.
    William L. Thorp, of Detroit, Mich., for defendants.
   TUTTLE, District Judge.

This suit involves the construction and constitutionality of the act of Congress of March 23, 1932 (chapter 90, §§ 1-15, 47 Statutes at Large, 70-73), being sections 101-115 of title 29 of the United States Code (29 USCA §§ 101-115), entitled “An Act to amend the Judicial Code and to define and limit the jurisdiction of courts sitting in equity, and for other purposes,” the provisions of which act, if valid, materially restrict the power of federal courts with respect to the issuance of injunctions in labor disputes.

The plaintiffs, Cinderella Theater Company, Inc., and Imperial Building Corporation, are Delaware corporations which own and operate moving picture theaters in the city of Detroit, and the defendants, Sign Writers’ Local Union No. 591, an unincorporated association, which is a labor union, and its officers, are citizens and residents of Michigan, the jurisdiction of this court being properly invoked upon the basis of the requisite diversity o£ citizenship accompanied by the statutory amount of tbe value of the matter in controversy.

The bill of complaint alleges that the defendants have been pursuing a course of unlawful conduct, consisting specifically of tbe placing of stench bombs in the plaintiffs’ said theaters, the mutilation of signs and posters displayed by the plaintiffs on the outside of such theaters, the maintenance of patrols in front of the entrances to such theaters, hearing signs reciting that the said theaters are “unfair to organized labor,” and the distribution of cards containing similar language, all with the object and effect of causing the patrons of such theaters to discontinue such patronage, and thereby to compel the plaintiffs to discharge from their employ a certain nonunion sign writer and to employ in his place a member of the defendant union; and the bill prays that tbe defendants be enjoined by this court from continuing the acts and conduct so alleged. The answer of tbe defendants denies that they have been guilty of any unlawful act towards tbe plaintiffs and asks for a dismissal of the bill. After a full bearing of the evidence of the parties in open court, the cause was heard and submitted on the pleadings and proofs and on the briefs of counsel for the parties, to all of which pleadings, proofs, and briefs, and to the questions thereby raised and discussed, I have devoted most careful consideration and study.

Tbe material facts, as I find them from the record, may he stated, sufficiently for the purposes of this opinion, as follows:

The plaintiffs for several years have owned and operated, in the eity of Detroit, the Cinderella Theater and the Roosevelt Theater, both of which are moving picture theaters which have enjoyed a considerable patronage by tbe general public. In January, 1933, the p’aintiffs were requested, by officers of tbe defendant union, to discharge from their employ their one sign writer, a certain George Campbell, who was not, and is not, a member of any labor union, and to employ in bis place a union sign writer, which request was promptly refused, for the reason that he had been a faithful, efficient employee of tbe plaintiffs for tbe preceding seven years and bis services were entirely satisfactory to them. A few days later, and in tbe same month, on two successive Sundays, so-ealled stench bombs were discharged, by unknown persons who have not been discovered or identified, in tbe said Roosevelt Theater, as a result of which the performances then in progress were interrupted and a number of disgusted patrons left tbe theater, some of whom have never returned. There has been no recurrence of this outrage in either theater since January, 1933. Beginning, however, shortly after-wards, and following another request by a representative of the defendant union for the discharge of this employee (which request also was refused) and continuing thereafter, except for certain intervals, during the remainder of the year 1933, the advertising posters and signs in front of the said theaters were, on numerous occasions and usually at night, defaced and mutilated by unknown persons who were never apprehended, discovered, or identified, such posters and signs being cut and torn so as to be illegible, and stickers containing the words, “Unfair to Organized Labor,” being pasted thereon.

.Finally, commencing in tbe middle of December, 1933, and continuing, with substantial regularity, until the filing of this bill of complaint on January 3, 1934, and the issuance of the preliminary restraining order- thereon, the defendant union established and maintained in front of each of the said theaters patrols, consisting of what are commonly known as “sandwich men,” who, in groups of two or sometimes three, walked abreast, back and forth, on the public sidewalk in front of the entrance of each of the said theaters, carrying signs bearing the words, “Please Do Not Patronize This Theater. Unfair to Sign Writers’ Union,” and “This Theater Unfair to Organized Labor.” Cards bearing similar language were distributed in the neighborhood of each of tbe two theaters. The plaintiffs appealed to the lieutenant in charge of a police station in Detroit to stop the patrolling of these “sandwich men,” but were informed by him that the police would not interfere unless a disturbance of the peace was being created or pedestrians were being obstructed or interfered with, and, as no such disturbance, obstruction, or interference appeared, tbe police refused to take any action in the matter. It is not shown that tbe acts just mentioned were accompanied by any fraud or violence, or that they were not peaceable.

It is clear that, while it would be practically impossible for the police to prevent stench bombing and sign mutilations, because of the difficulty of catching and identifying the offenders, they are willing and anxious so to do. They could easily prevent the patrolling, as well as the displaying of “Unfair” signs or banners and the distribution of tbe cards in question, if they wished so to do, so that it cannot be said that tbe pub-lie officers charged with the duty to protect the plaintiffs’ property are unable to furnish to plaintiffs adequate protection against such patrolling, sign displaying, or card distribution, although they are, for the reason already stated, unwilling so to do. The natural and inevitable effect of the acts already described would be, and has been, the loss to the plaintiffs of at least some of the patronage of their theaters by the public, with consequent financial damage to their business. It does not, however, appear from any direct evidence or other clear proof that any of the defendants actually participated in, actually authorized, or ratified, any of the acts of bombing and destruction of which the plaintiffs complain. Nor is it shown, or claimed by the plaintiffs, that they made every reasonable effort, or any effort, to settle the dispute here involved, either by negotiation or with the aid of any available governmental machinery of mediation or voluntary arbitration.

The defendants deny that they have authorized or sanctioned any bombing, mutilation, or defacement of signs or posters, or any other act of violence or lawlessness toward the plaintiffs or their property. They admit, however, that they established and maintained, and are responsible for, the patrols and “Unfair” signs in question and the distribution of cards of similar import, but insist that not only are they entitled so to do under general principles of law and equity, but also that under the circumstances presented here this court cannot, even though the patrolling be unlawful, grant to the plaintiffs any of the injunctive relief sought against the defendants, for the reason that the power to grant such relief has been taken away from this court by the provisions of the aet of Congress already cited. With this latter contention of the defendants, after a careful study of the language of the aet and of the legal rules and principles applicable, I agree, for reasons now to be stated.

The act in question is, as already noted, entitled, “An Aet to amend the Judicial Code and to define and limit the jurisdiction of courts sitting in equity, and for other purposes.”

It will be noted that the aet does not attempt to broaden, limit, or define the rights of either employee or employer, nor does it assume to place any restrictions upon the state courts. The sole purpose seems to be to regulate, define, and limit the power of federal courts in labor disputes. The provisions applicable here are contained in sections 1, 2, 4, 5, 6, 7, 8, 9, and 13 of the aet (29 USCA §§ 101, 102, 104, 105, 106, 107, 108, 109, 113).

Section 1 is as follows:

“No court of the United States, as herein defined, shall have jurisdiction to issue any restraining order or temporary or permanent injunction in a case involving or growing out of a labor dispute, exeept in a strict conformity with the provisions of this act; nor shall any such restraining order or temporary or permanent injunction be issued contrary to the public policy declared in this aet.”

Section 2 provides as follows:

“In the interpretation of this act and in determining the jurisdiction and authority of the courts of the United States, as such jurisdiction and authority are herein defined and limited, the public policy of the United States is hereby declared as follows: Whereas under prevailing economic conditions, developed with the aid of governmental authority for owners of property to organize in the corporate and other forms of ownership association, the individual unorganized worker is commonly helpless to exercise actual liberty of contract and to protect his freedom of labor, and thereby to obtain acceptable terms and conditions of employment, wherefore, though he should be free to decline to associate with his fellows, it is necessary that he have full freedom of association, self-organization, and designation of representatives of his own choosing, to negotiate the terms and conditions of his employment, and that he shall be free from the interference, restraint, or coercion of employers of labor, or their agents, in the designation of such representatives or in self-organization or in other concerted activities for the purpose of collective bargaining or other mutual aid or protection; therefore, the following definitions of, and limitations upon, the jurisdiction and authority of the courts of the United States are hereby enacted.”

Section 4 includes the following provisions:

“No court of the United States shall have jurisdiction to issue any restraining order or temporary or permanent injunction'in any case involving or growing out of any labor dispute to prohibit any person or persons participating or interested in such dispute (as these terms are herein defined) from doing, whether singly or in concert, any of the following acts: * * * (e) Giving publicity to the existence of, or the facts involved in, any labor dispute, whether by advertising, speaking, patrolling, or by any other method not involving fraud or violence; (f) Assembling, peaceably to act or to organize to act in promotion of their interests in a labor dispute; (g) Advising or notifying any person of an intention to do any of the acts heretofore specified; (h) Agreeing with other persons to do or not to do any of the acts heretofore specified; and; (i) Advising, urging, or otherwise causing or inducing without fraud or violence the acts heretofore specified.”

Section 5 is as follows:

“No court of the United States shall have jurisdiction to issue a restraining order or temporary or permanent injunction upon the ground that any of the persons participating or interested in a labor dispute constitute or are engaged in an unlawful combination or conspiracy because of the doing in concert of the acts enumerated in section 4 [section 104] of this act.”

Section 6 is in the following language:

“No officer or member of any association or organization, and no association or organization participating- or interested in a labor dispute, shall be held responsible or liable in any court of the United States for the unlawful acts of individual officers, members, or agents; except upon clear proof of actual participation in, or actual authorization of, such acts, or of ratification of such acts after actual knowledge thereof.”

Section 7 contains the following provisions :

“No court of the United States shall have jurisdiction to issue a temporary or permanent injunction in any ease involving or growing out of a labor dispute, as herein defined, except * * * after findings of fact by the court, to the effect — (a) That unlawful acts have been threatened and will be committed unless restrained or have been committed and will be continued unless restrained, but no injunction or temporary restraining order shall be issued on account of any threat or unlawful act excepting against the person or persons, association, or organization making the threat or committing the unlawful act or actually authorizing or ratifying the same after actual knowledge thereof; * * * “ (e) That the public officers charged with the duty to protect complainant’s property are unable or unwilling to furnish adequate protection.”

Section 8 reads as follows:

“No restraining order or injunctive relief shall be granted to any complainant who has failed to comply with any obligation imposed by law which is involved in the labor dispute in question, or who has failed to make every reasonable effort to settle such dispute either by negotiation or with the aid of any available governmental machinery of mediation or voluntary arbitration.”

Section 9 contains the following language:

“Every restraining order or injunction granted in a ease involving or growing out of a labor dispute shall include only a prohibition of such specific act or acts as may be expressly complained of in the bill of complaint or petition filed in such case.”

Section 13 includes the following definitions :

“When used in this act, and for the purposes of this act — (a) A case shall be held to involve or to grow out of a labor dispute when the ease involves persons who are engaged in the same industry, trade, craft, or occupation; or have direct or indirect interests therein; or who are employees of the same employer; or who are members of the same or an affiliated organization of employers or employees; whether such dispute is (1) between one or more employers or associations of employers and one or more employees or associations of employees; (2) between one or more employers or associations of employers and one or more employers or associations of employers; or (3) between one or more employees or associations of employees and one or more employees or associations of employees; or when the case involves any conflicting or competing interests in a flabor dispute’ (as hereinafter defined) of 'persons participating or interested’ therein (as hereinafter defined). (b) A person or association shall be held to be a person participating or interested in a labor dispute if relief is sought against him or it, and if he or it is engaged in the same industry, trade, craft, or occupation in which such dispute occurs, or has a direct or indirect interest therein, or is a member, officer, or agent of any association composed in whole or in part of employers or employees engaged in such industry, trade, craft, or occupation, (e) The term 'labor dispute’ includes any controversy concerning terms or conditions of employment, or concerning the association or representation of persons in negotiating, fixing, maintaining, changing, or seeking to arrange terms or conditions of employment, regardless of whether or not the disputants stand in the proximate relation of employer and employee. (d) The term ‘court of the United States’ means any court of the United States whose jurisdiction has been or may be conferred or defined or limited by Act of Congress, including the courts of the District of Columbia.”

It is urged by the plaintiffs that this statute is an unwarranted and unconstitutional attempt by Congress to invade the province, and to usurp the functions, of federal courts, in contravention of the provisions of section 1 of article 3 of the United States Constitution, providing that “the judicial Power of the United States shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish,” and of section 2 of the same article, providing that “the judicial Power shall extend ? * * to Controversies * * * between citizens of different States.”

I am unable to agree with this contention, which seems to me to overlook or ignore the settled rule in the federal courts to the effect that, inasmuch as all federal courts inferior to the Supreme Court are dependent for their very creation upon the will of Congress, such courts have only whatever jurisdiction is conferred upon them by Congress, which may either destroy, in whole or in. part, or may limit as it deems advisable, such jurisdiction. Cary v. Curtis, 3 How. (44 U. S.) 236, 11 L. Ed. 576; Sheldon v. Sill, 8 How. (49 U. S.) 441, 12 L. Ed. 1147; United States v. Tillou, 6 Wall. (73 U. S.) 484, 18 L. Ed. 920; Ex parte Robinson, 19 Wall. (86 U. S.) 505, 22 L. Ed. 205; Kline v. Burke Construction Co., 260 U. S. 226, 43 S. Ct. 79, 82, 67 L. Ed. 226, 24 A. L. R. 1077; Standard Nut Margarine Co. v. Rose (D. C.) 41 F.(2d) 385; Kinloch Telephone Co. v. Local Union (D. C.) 265 F. 312.

In the words of the Supreme Court in Kline v. Burke Construction Co., just cited:

“Only the jurisdiction of the Supreme Court is derived directly from the Constitution. Every other court created by the general government derives its jurisdiction wholly from the authority of Congress. That body may give, withhold or restrict such jurisdiction at its discretion, provided it be not extended beyond the boundaries fixed by the Constitution.”

As was pointed out by the Supreme Court in Sheldon v. Sill, supra, 8 How. (49 U. S.) 441, at page 448, 12 L. Ed. 1147:

“The third article of the Constitution declares that ‘the judicial power of the United States shall be vested in one Supreme Court, and such inferior courts as the Congress may, from time to time, ordain and establish.’ The second section of the same article enumerates the eases and controversies of which the judicial power shall have cognizance, and, among others, it specifies ‘controversies between citizens of different States.’ * * * It must be admitted, that if the Constitution had ordained and established the inferior courts, and distributed to them their respective powers, they could not be restricted or divested by Congress. But as it has made no such distribution, one of two consequences must result, — either that each inferior court created by Congress must exercise all the judicial powers not given to the Supreme Court, or that Congress, having the power to establish the courts, must define their respective jurisdictions. The first of these inferences has never been asserted, and could not be defended with any show of reason, and if not, the latter would seem to follow as a necessary consequence. And it would seem to follow, also, that, having a right to prescribe, Congress may withhold from any court of its creation jurisdiction of any of the enumerated controversies. Courts created by statute can have no jurisdiction but such as the statute confers.”

The applicable rule was stated and discussed by the Supreme Court in Cary v. Curtis, supra, 3 How. (44 U. S.) 236, at page 245, 11 L. Ed. 576, as follows:

“The judicial power of the United States, although it has its origin in the Constitution, is (except in enumerated instances, applicable exclusively to this court) dependent for its distribution and organization, and for the modes of its exercise, entirely upon the action of Congress, who possess the sole power of creating the tribunals (inferior to the Supreme Court) for the exercise of the judicial power, and of investing them with jurisdiction either limited, concurrent, or exclusive, and of withholding jurisdiction from them in the exact degrees and character which to Congress may seem proper for the public good. To deny this position would be to elevate the judicial over the legislative branch of the government, and to give to the former powers limited by its own discretion merely. It follows, then, that the courts created by statute must look to the statute as the warrant for their authority; certainly they cannot go beyond the statute, and assert an authority with which they may not be invested by it, or which may be clearly denied to them. This argument is in. nowise impaired by admitting that the judicial power shall extend to all cases arising under the Constitution and laws of the United States. Perfectly consistent with such an admission is the truth, that the organization of the judicial power, the definition and distribution of the subjects of jurisdiction in the federal tribunals, and the modes of their action and authority, have been, and of right must be, the work of the legislature. The existence of the Judicial 'Act itself, with its several supplements, furnishes proof unanswerable on this point. The courts of the United States are all limited in their nature and constitution, and have not the powers inherent in courts existing by prescription or by the common law.”

It cannot, in my opinion, be doubted that the statute here involved is a valid exercise by Congress of its constitutional power to limit the jurisdiction of the federal courts which it has created and whose jurisdiction, therefore, to issue injunctions in labor disputes is as much subject to such congressional power of limitation, or even of prohibition, as is, for example, their jurisdiction to restrain proceedings for the collection of taxes or proceedings in state courts, which jurisdiction was at an early date subjected by Congress to the limitations, respectively, of section 3224 of the United States Revised Statutes (now section 154 of Title 28 of the United States Code [26 USCA § 154]), providing that “no suit for the purpose of restraining the assessment or collection of any tax shall be maintained in any court,” and of section 726 of the United States Revised Statutes (now section 379 of Title 28 of the United States Code [28 USCA § 379]), providing that “the writ of injunction shall not be granted by any court of the United States to stay proceedings in any court of a State, except in cases where such injunction may be authorized by any law relating to proceedings in bankruptcy.” Neither of those statutes appears to have ever been declared unconstitutional. The one first mentioned, relative to the restraining of tax collection, has been he’d to be constitutional (Pulian v. Kinsinger, 20 Fed. Cas. page 44, No. 11463), but seems to be applicable to the collection only of federal taxes and not of state taxes (State Railroad Tax Cases, 92 U. S. 575, 23 L. Ed. 663). The only ease cited by the plaintiffs in support of their argument in this connection, United States v. Klein, 13 Wall. (80 U. S.) 128, 20 L. Ed. 519, involved an act of Congress which attempted to abridge the appellate jurisdiction conferred on the Sunreme Court by the Constitution itself, and the decision in that case is therefore clearly inapplicable here.

A comparison of the provisions of this act already quoted with the foregoing findings of fact makes it clear that this statute is applicable here. The case at bar comes clearly within the definitions and requirements of section 13.

I am compelled by subparagraph (a) of section 13 of the Act (29 USCA § 113 (a) to hold the ease “to involve or to grow out of a labor dispute” for the following reasons:

(1) “The ease involves persons who are engaged in the same industry”; namely, the theater industry.
(2) “The ease involves persons who * * * have direct or indirect interests” in the same industry; namely, the theater industry.
(3) “The case involves * * * conflicting * * * interests in a labor dispute” of “persons participating or interested” therein.

I am compelled by subparagraph (b) of section 13 of the Act (29 USCA § 113 (b) to hold that the defendants are interested in this particular “labor dispute” for the following reasons:

(1) Because “relief is sought against” them in this court.
(2) Because they are “engaged in the same industry,” namely, the theater industry, “in which such dispute occurs.”
(3) Because they have “a direct or indirect interest therein.”

I am compelled by subparagraph (e) of section 13 of the Aet (29 USCA § 113 (c) to hold this controversy to be a “labor dispute” for the following reasons:

(1) Because it is a “controversy concerning terms or conditions of employment.”
(2) Because it is a “controversy * * * concerning the association of persons in * * seeking to arrange terms or conditions of employment.”

By the express terms of the statute, this is none the less a “labor dispute” because of the fact that none of the officers or members of the defendant union have any contractual relation -with the plaintiffs, and none of “the disputants stand in the proximate relation of employer and employee.” If the applicability of the statute were otherwise doubtful, such doubt would be removed by a eonsidération of the following language in the report of the House Committee on the Judiciary (H. R. Report 669, 72d Congress, First Session), favorably reporting the bill (H. R. 5315) a few days before its passage:

“In tbe case of Duplex Printing Press Co. v. Deering (254 U. S. 443 [41 S. Ct. 172, 65 L. Ed. 349, 16 A. L. R. 196]), decided January 3, 1921, and being a six to three decision, the court held so far as pertinent to this particular discussion that this section of the Clayton Act provided a restriction upon the use of the injunctions in favor only of the immediate disputants and that other members of the union not standing in the proximate relation of employer and employee could be enjoined. Of course, it is fundamental that a strike is generally an idle gesture if confined only to the immediate disputants. This is intended to be remedied by the later provision in this act defining the meaning of the term, 'person participating in a labor dispute/ as to whom, as in the bill defined, the courts are deprived of jurisdiction to issue injunctions in the specified instances set forth in this section.
“Section 13 contains definitions which speak for themselves. It is hardly necessary to discuss them other than to say that these definitions include, as hereinabove stated, a definition of a person participating in a labor dispute whieh is broad enough to include others than the immediate disputants and thereby corrects the law as announced in the case of Duplex Printing Press Co. v. Deering, supra, wherein the Supreme Court reversed the circuit court of appeals [252 F. 722] and held that the inhibition of section 20 of the Clayton Act [29 USCA § 52] only related to those occupying the position of employer or employee and no others. The Supreme Court held to the same effect in the ease of the American Steel Foundries Co. v. Tri-City Central Trades Council [257 U. S. 184, 42 S. Ct. 72, 66 L. Ed. 189, 27 A. L. R. 360], supra.”

The same purpose to make this statute applicable to a ease such as is presented here is also manifested by the following language of the report of the Senate Committee on the Judiciary (S. R. Report 163), favorably reporting the same bill (S. 935) at the same session of Congress:

“Section 13 of the bill defines various terms used in the act, and it is not believed that any criticism has been or will be made to these definitions. * * * In order that the limitation may not be whittled away by refined definitions of what persons are to be regarded as legitimately involved in labor disputes, the bill undertakes specifically to designate those persons who are entitled to invoke the protections of the procedure required.”

Applying, then, the applicable provisions of this valid statute, so quoted, to the material facts hereinbefore stated, I cannot avoid the conclusion that such statute deprives the plaintiffs of the right to any of the relief here sought against the defend-, ants, even if in the state court, or in this court in the absence of such a statute, the plaintiffs would be entitled to some, or all, of such relief, as to whieh question there is no occasion to express an opinion here.

In compliance with the requirements of section 9 of the act (29 USCA § 109), already quoted, any injunction to be granted in such a ease as this must be limited to the restraining of only “such specific act or acts as may be expressly complained of in the bill of complaint.” The “specific” aets so charged in this bill and established by the evidence consist of the aforementioned bombings, mutilations of signs,' patrolling with “unfair” signs, and distribution of “unfair” cards.

At the outset it is to be noted that, by section 7 (e) and section 8 of the act (29 USCA §§ 107 (e), 108), Congress has prescribed two general conditions to the granting of awy injunctive relief by this court in a labor dispute, namely, that it must appear that, as required by section 7 (e), “the public officers charged with the duty to protect complainant’s property are unable or unwilling to furnish adequate protection,” and, as provided by section 8, “no restraining order or injunctive relief shall be granted to any complainant who has failed * * * to make every reasonable effort to settle such dispute either by negotiation or with the aid of any available governmental machinery of mediation or voluntary arbitration.” It is obvious that by these provisions Congress manifested its intent that, before a party should be entitled to any injunction to restrain any aets in a labor dispute in a federal District Court, such party must have (1) attempted to obtain adequate relief from the public authorities just mentioned and have been unsuccessful in such attempt, and (2) must have made the efforts thus required to settle the dispute and been unsuccessful in such efforts. If it does not affirmatively appear that such a party has exhausted both of these possible remedies, he cannot resort to this eourt for any injunctive relief in such a dispute. Have the plaintiffs here complied with both of these conditions?

From the findings of fact hereinbefore recited, it is apparent that the public authorities in question are unable to furnish adequate protection to the plaintiffs with respect to the stench bombs and sign mutilations involved, and are unwilling, for the reason already stated, to furnish such protection against the aforesaid patrolling and “unfair” signs and cards. To that extent, therefore, the plaintiffs have satisfied this particular requirement.

In view, however, of the faet that the plaintiffs have not shown that they have made the efforts at settlement of this dispute which the act makes mandatory, it is clear that this court is without jurisdiction to grant any of the injunctive relief here sought.

In addition, however, to these broad limitations on the right to any injunction in a labor dispute in this eourt, the act also prescribes, by other sections thereof already quoted, certain more specific restrictions on the right to an injunction against various kinds of particular acts in such a dispute; and the construction and effect of such other restrictions, as applied to the present case, may, it seems to me, properly be mentioned and discussed at this time, although, in view of the conclusion just reached, it is not strictly necessary to a determination of this cause.

As to the lawless acts of the unknown stench bombers and poster vandals, in view of the absence, already noted, of dear proof of actual participation in, aetual authorization of, or ratification of, such acts, by any of the defendants, an injunction against the defendants on account of those acts is precluded here by section 6 of the statute (29 USCA § 106), requiring “clear proof” of participation, authorization, or ratification of such acts, as a prerequisite to liability therefor on the part of an association interested in a labor dispute. I conclude that this provision, if not within the power of Congress, already considered, to define and limit the jurisdiction of this eourt, is, in the language of the Supreme Court in Fong Tue Ting v. United States, 149 U. S. 698, at page 729, 13 S. Ct. 1016, 1028, 37 L. Ed. 905, “within the acknowledged power of every legislature to prescribe the evidence which shall be received, and the effect of that evidence, in the courts of its own government.” To the same effect is Bailey v. Alabama, 219 U. S. 219, 31 S. Ct. 145, 55 L. Ed. 191.

Do the patrolling with “unfair” signs and the distribution of “unfair” cards constitute “giving publicity to the existence of, or the facts involved in, any labor dispute, whether by advertising, speaking, patrolling, or by any other method not involving fraud or violence,” or “assembling peaceably to act or to organize to act in promotion of their interests in a labor dispute,” within the prohibition from injunctive process prescribed by section 4 (e) and section 4 (f), respectively, of the act (29 USCA § 104 (e, f? The purpose of this section was stated in the aforementioned report of the said House Committee as follows:

. “These are the same character of acts which Congress in section 20 of the Clayton Act of October 15, 1914 [29 USCA § 52], sought to restrict from the operation of injunctions, but because of the interpretations placed by the courts on this section of the Clayton Act, the restrictions as contained therein have become more or less valueless to labor, and this section is intended by more specific language to overcome the qualifying effects of the decisions of the courts in this respect. * * *
“In the ease of the American Steel Foundries Co. v. Tri-City Central Trades Council, supra, there was a strike, and, of course, a picket line. There was practically no fraud or violence but the persistent giving of publicity to the facts involved in the dispute and the persistent advising of other persons without fraud or violence not to work for the employer. It was thought by the labor union that section 20 prohibited an injunction against such acts, but the Supreme Court held that such acts could be enjoined, and, therefore, the legislation proposed specifically restricts the courts in this respect unless the acts are accompanied by fraud or violence.”

The banners and cards used in this dispute, when fairly interpreted, attempt to advise the public, including the people who patronize, or who may patronize, the particular theaters, that the owners of such theaters are unfair to organized labor, and attempt to persuade such patrons and prospective patrons on that account not to patronize such theaters. I am of the opinion that these are the kinds of acts which Congress had particularly in mind when it provided that in cases of this kind federal courts should not restrain any one from “giving publicity to the existence of, or the facts involved in, any labor dispute, whether by advertising, speaking, patrolling, or by any other method not involving fraud or violence.” The banners and cards here used carry the language usually employed by organized labor when it gets into dispute with an employer. Every observing person who has walked the streets of our large cities during the past score of years has seen many banners of this kind. The members of Congress were, of course, familiar with the use of banners and cards carrying the words “unfair to organized labor” when they employed the language of this statute. They, of course, knew that there is seldom a labor dispute in which banners are not used carrying the words “unfair to organized labor.” These words have come to mean in the minds of the public that the employer and the labor organization are in a dispute and that the organization is claiming that the employer is unfair. When Congress provided that the federal courts could not restrain labor organizations from “giving publicity to the existence of, or the facts involved in, any labor dispute * * * by * * * patrolling,” it, of course, had in mind these usual banners carried by the men patrolling and bearing the words “unfair to organized labor.” The only thing mentioned in the act which would remove the restriction and permit the court to enjoin would be fraud or violence in accompaniment with the patrolling with the bam ners and cards. No claim is made in the ease at bar that the advertising and patrolling were accompanied by violence. It is claimed that these acts were accompanied by fraud. •This claim is based on the contention that the plaintiffs’ theaters were not unfair to organized labor, and that therefore the advertising was false and fraudulent.

It seems to me that the statements on those signs and cards to the effect that the plaintiffs or their theaters are “unfair” to organized labor, fairly interpreted, should be construed as meaning, and intended to mean, only that as a result of a disagreement between plaintiffs and defendants the defendants considered the plaintiffs unfair and that such alleged unfairness was the cause and subject of a labor dispute between them and the plaintiffs, to which dispute they were thus giving publicity. I am convinced also that this would be the understanding created by that language in the minds of the public to whose attention it was brought. This act has to do with labor disputes. The very fact that it is a dispute indicates that there is disagreement and conflicting views. The federal courts are prohibited from interfering with a full and free advertising of those conflicting views. I am of the opinion that the court in construing this statutory provision cannot split hairs on the question whether or not the plaintiffs are “fair” or “unfair” toward “organized labor.” It is generally recognized that signs usually are mere sketches. It is not possible to tell a long story with them. What one person might call being unfair to organized labor another person might well call entirely fair. The defendants, if they are entitled to carry banners and signs, will not be able to paint the whole story on such banners or signs. They will naturally, if not necessarily, use adjectives which one^ man will say are too strong and another will say are too weak. For example, is it being unfair to organized labor to employ nonunion labor? I cannot avoid the conclusion that the acts of the defendants in connection with this patrolling and these “unfair” signs and cards do constitute the “giving publicity to the existence of, or the facts involved in, any labor dispute,” and also the “assembling peaceably to act or to organize to act in promotion of their interests in a labor dispute,” within the meaning of section 4 of the act (29 USCA § 104). The method used did not, in my opinion, involve “fraud,” within the meaning of the statute.

It may he added that there is here no evidence or claim that any interstate commerce is in any way affected by, or involved in, the present labor dispute, for which reason, if for no other, the eases cited and discussed by counsel for the plaintiffs involving combinations or conspiracies in restraint of interstate commerce have no pertinency to this' case. I express no opinion as to whether an injunction in a labor dispute against a combination or conspiracy in restraint of interstate commerce comes within section 5 of the act (29 USCA § 105), prohibiting an injunction “upon the ground that any of the persons participating or interested in a labor dispute constitute or are engaged in an unlawful combination or conspiracy because of the doing in concert of the acts enumerated” in section 4.

For the reasons stated, I reach the conclusion that the plaintiffs are not entitled to any of the relief sought and that the bill of complaint must- be dismissed, with costs to the defendants. A decree to that effect will be entered.


source: Caselaw Access Project

author: REEVES, District Judge.

license: Public Domain

text:
    MALLINCKRODT CHEMICAL WORKS v. E. R. SQUIBB & SONS.
    No. 1287.
    District Court, W. D. Missouri, W. D.
    Oct. 1, 1932.
    Frank Y. Gladney and Rippey & Kingsland, all of St. Louis, Mo., and Hale Houts, of Kansas City, Mo., for plaintiff.
    W. Brown Morton and E. H. Merchant, both of New York City, and C. W. German, of Kansas City, Mo., for defendant.
   REEVES, District Judge.

This is a suit for an alleged infringement of United States patent No. 1,370,865, granted March 8, 1921, to Frederick Westerbeek, but now owned by plaintiff, Mallinckrodt Chemical Works, a corporation.

The bill seeks an injunction against the defendant and prays for an accounting of profits.

The defendant, on its part, denies infringement, challenges the validity of the patent for lack of invention, in view of the prior state of the art, and asserts anticipation by patent No. 260,432, granted to Francis A. Walsh July 4, 1882. The defendant asserts that even if valid, its limitations were such, in view of the prior state of the art, that the structure or mechanical closure employed by defendant is easily distinguished and that in consequence there is no infringement.

The patent under consideration is a mechanical combination for an efficient seal and relates “to closures for sheet metal vessels applied without the use of solder, the invention being of special merit in hermetically sealing sheet metal cans containing ether or other volatile and inflammable liquids.”

It was the contention of plaintiff, and its evidence tended to show, that for many years previous to the introduction of its mechanical combination for closure of containers ether was either placed in glass containers or metal containers sealed by a process of soldering. This method of confining ether was attended with hazard on account of its inflammable and volatile nature. Glass stoppers were not practical and the ether having fluidity four times that of water would imperceptibly escape around glass stoppers or acting as a solvent upon other stoppers would create an opening for its escape. Ether will boil or become gaseous at a very low temperature and being inflammable the use of solder in sealing the container is fraught with grave danger of fire. Moreover, the contents are liable to adulteration from the flux of the solder.

Prior to 1880, glass containers were chiefly used. Such were easily broken and transportation was made hazardous from breakage and, as above stated, loss from evaporation.

The character of ether and the difficulties that confronted those engaged in handling it were expressed by Dr. E. R. Squibb, the predecessor of the defendant, in 1872 in an article appearing in a trade journal as follows :

“This stronger ether is especially prepared for use as an anaesthetic, with much care and pains; and the extreme volatility which particularly adapts it to the production of anaesthesia makes it very difficult to secure for transportation and very inflammable. Glass stoppers cannot be ground in quantity at any reasonable cost which will secure it against loss by evaporation.
“Corks secure it best while standing at rest or during its application, but by the agitation of transportation, or by long standing, they become so shrunken and condensed as to admit a considerable loss at best, while the bottle sometimes reaches its destination apparently well secured, but entirely empty. Hence, when ordered in bottles, either glass stoppered or corked, it must be entirely at the risk of the buyer.”
“A much better way of putting up — and by far the best that has yet been devised— is in tin cans with a sheet or cap of thick tin foil soldered over the mouth.”

Thirteen years later, or in 1885, Dr. Squibb again expressed the difficulty of handling ether as follows:

“No method of transporting or using ether has ever been devised that is at all equal to soldering it up in tin, and it is very curious and irrational that this method now in use for many years should have proved so unsatisfactory as to prevent its general adoption. It is, beyond doubt, the only proper method of putting up and transporting ether, because by it the ether is wholly preserved in a perfect condition, and is transported and used with general safety — or at least with the smallest possible risk.”

The testimony tended to show that while the transportation of ether thus placed in containers was attended with comparative safety, yet the objection to the soldering method was the fire hazard and the risk of introducing impurities into the ether from the soldering fluid.

It was the object of the chemist to accomplish chemical purity, as well as safety. It appeared that this problem not only confronted chemists and manufacturers, but that the patentee for many years had struggled to overcome what appeared to be danger and hazard attending the securing or confining of ether. Because of its extreme fluidity and volatility, ether was more difficult to confine than any other substance. Containers hermetically sealed for all practical purposes as to other substances or elements were wholly ineffective and inefficient as relates to ether.

The Walsh patent appertained to the closure of paint cans. Paint, as is well known, has viscosity rather than fluidity and the Walsh patent, by means of interlocking edges of the metal closure part and the pouring neck, was able to effect such a seal of the container as to make it efficient for that particular purpose.

In like manner an English patent of a later date, to wit, 1897, provided for the closure of metal-containers filled with food products. Both paint and food products lacked the fluidity of ether. In each case provision was made for a soft metal cap with the object of facility in opening the can, so as to pour out the contents. These patents antedated plaintiff’s patent by many years. Notwithstanding the fact that these mechanical combinations were known and in extensive use, yet they were not used in an effort to confine or hermetically seal metal containers filled with ether. In 1921 the patent admittedly owned by plaintiff was granted. Claims one and two thereof are as follows:

“1. A container provided with a closure-receiving member having an annular sealing flange provided with a sharp annular edge, a soft metal cap seated on said sealing flange and having a depending soft metal flange surrounding said sharp annular edge, and a binding band closely fitted to said soft metal cap at .a point directly opposite said sharp edge and having its margins turned inwardly to closely confine the soft metal against the upper and lower faces of said sealing flange, marginal portions of said soft metal cap being interposed directly between said binding band and the sharp annular edge, and said sharp edge being embedded in said soft metal cap.
“2. A container provided with a closure-receiving member having an annular sealing flange provided with a sharp annular edge, a soft metal cap seated on said sealing flange and having a depending soft metal flange surrounding said sharp annular edge, and a binding band closely fitted to said soft metal cap at a point directly opposite said sharp edge and having its margins turned inwardly to closely confine the ’soft metal against the upper and lower faces of said sealing flange, marginal portions of said soft metal cap being interposed directly between said binding band and the sharp annular edge, and said sharp edge being embedded in said soft metal cap, said binding band being in the form of an endless ring approximately U-shaped in cross section, so as to embrace said sealing flange and the margin of said soft metal cap, and said soft metal cap being exposed inside of said ring to receive an instrument for cutting the soft metal.”

These are the only two claims in issue. It will be observed that the patent purports to cover sheet metal cans having a closure of soft metal secured to the can by a ring of harder metal. The closure was accomplished by interlocking the edges of the several parts and, on account of the soft metal of the cap and the sharp harder edge of the pouring neck, the sharp edges of the pouring neck and the binding band were imbedded in the soft metal cap. According to the evidence, this was efficient in, hermetically sealing ether cans.

After the patent in suit was granted, the defendant quit its former method of soldering and employed a mechanical combination similar to that embodied in plaintiff’s patent.

Other facts, if they become pertinent, will be stated in the course of this memorandum opinion.

1. On the question of validity of the patent, the court must indulge the presumption of validity; that it possesses utility and m-bodies invention. Minneapolis, St. P. & S. S. M. Ry. Co. v. Barnett & Record Company (C. C. A.) 257 F. 302; Galvin Electric Mfg. Co. v. Emerson Electric Mfg. Co. (C. C. A.) 19 F.(2d) 885; Luten v. Kansas City Bridge Co. (C. C. A.) 285 F. 840.

This presumption is strengthened by the circumstance that the defendant has cited in its answer a great number of patents alleged to have anticipated or narrowed the art. Moreover, there is the further supporting circumstance that the defendant has since the issuance of plaintiff’s patent employed a seal or combination very similar to that embodied in the patent. Forsyth v. Garlock (C. C. A.) 142 F. 461; Naylor v. Alsop Process Co. (C. C. A.) 168 F. 911.

Relating to the subject of imitation, the Supreme Court in Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U. S. 428, loc. cit. 441, 31 S. Ct. 444, 450, 55 L. Ed. 527, said:

“It (the defendant) gives the tribute of its praise to the prior art; it gives the Grant tire the tribute of its imitation, as others have done.”

Furthermore, it appeared from the evidence that the defendant advertised its seal as an improvement and placed upon its can a statement that it too had applied for a patent. The defendant, under such circumstances, could hardly be heard to dispute the validity of plaintiff’s patent. David et al. v. Harris (C. C. A.) 206 F. 902; Hiler Audio Corporation v. General Radio Co. (D. C.) 26 F.(2d) 475.

According to the evidence, the combination involved in plaintiff’s patent became popular and was immediately put in use extensively, both by the plaintiff and defendant. This, too, aids the presumption of patentability. Eibel Co. v. Paper Co., 261 U. S. 45, 43 S. Ct. 322, 67 L. Ed. 523; Vacuum Cleaner Co. v. American Rotary Valve Co. (D. C.) 227 F. 998.

The foregoing is true notwithstanding the fact that each of the elements involved in the patent may be old. If the particular combination of elements produces a new and useful result, then the article is patentable.

2. The parties have favored the court with many drawings and exhibits, each one exemplifying patented containers used by the parties and others.

A careful examination of each of these exhibits fails to disclose the slightest difference in the combinations used. The closure is accomplished by interlocking the edges of the various metal parts and the employment of a soft metal cap so that upon pressure, and with the use of an appropriate instrument, the harder edges of the metal parts become embedded in the soft portions of the metal cap.

This combination was a substitute for soldering. According to the evidence it was not only far more efficient but much safer. The use of a mechanical closure facilitated very greatly the safe bottling of ether. In this ease the matters in controversy were before the court and the court is of the opinion that the combinations were identical. As was said in Globe Knitting Works v. Segal (C. C. A.) 248 F. 495, loc. cit. 498:

“The mere inspection of the two garments determines the question of infringement. In looking at thorn and comparing them in the light of the testimony, we cannot escape the conclusion that the garment of the defendants corresponds precisely in elements and substantially in ‘detail with the claims of the patent. The parts are the same, they are in the same positions and relation, are intended for the same uses, perform the same functions and operate exactly as disclosed by the patent.”

This testimony convinces the court, aside from all other evidence, whether it be of experts or otherwise. The evidence with respect to the file wrapper does not disclose anything that would work an estoppel upon plaintiff.

In view of the foregoing, the court must reach the conclusion that plaintiff’s patent is valid and infringed. Accordingly, plaintiff is entitled to an injunction against future infringement and a decree for an accounting of profits.

The parties wiE prepare and submit a decree accordingly.


author: HINCKS, District Judge. HINCKS, District Judge.

text:
    HOOKLESS FASTENER CO. v. G. E. PRENTICE MFG. CO.
    No. 2133.
    District Court, D. Connecticut.
    July 28, 1932.
    On Rehearing Sept. 29, 1932.
    Fish, Richardson & Neave, of New York City (Charles Neave and Merrell E. Clark, both of New York City, R. S. Kelley, of Meadville, Pa., and Bristol & White, of New Haven, Conn., of counsel), for plaintiff.
    Roberts, Cushman & Woodberry, of Boston, Mass. (Robert Cushman and Richard F. Walker, both of Boston, Mass., and Drury W. Cooper, of New York City, of counsel), for defendant.
   HINCKS, District Judge.

This is a suit brought for the infringement of two letters patent, as followsPatent No. 1,566,996, issued to one Sundback on December 22, 1925, upon an application filed May 8, 1923; and Patent No. 1,598,183, issued to one Whitney on August 31, 1926, upon an application filed March 30, 1925. The plaintiff relies upon claims 1 to 4, 6, 7, 8, 11, 12, 14, 16, 18, 19, 20, and 21 of the Sundback patent; and upon claims Nos. 1 to 6 of the Whitney patent; charging that two devices of the defendant (a specimen of each of which is in evidence as Plaintiff’s Exhibits 7 and 8) infringed the Sundback patent, and that one of these two devices (Exhibit 8) also infringed the Whitney patent. The usual defenses of lack of patentable invention and anticipation are interposed. The defense of noninfringement also is addressed to the Sundback patent, but is not pressed, at least upon brief, with respect to the Whitney patent.

The parties are manufacturers of slide fasteners of the general type now commonly used upon various articles of clothing, overshoes, and luggage. The patents in suit relate only to that part of the fastener which is commonly called the slider, which by its movement in one direction closes the fastener by bringing into interlocking engagement the small metal fastener units set upon the opposing edges of the fabric, and which, when moved in the opposite direction, unlocks these fastener units, and thereby opens the fastener device.

Sundback Patent.

The Sundback patent in suit discloses a slider made of three parts, each of metal: (1) A flat blank, stamped in such fashion that two wings are separated by a narrow neck portion from which extend transverse tabs. In manufacture these wings are bent over into a position of parallelism with respect to each other, the bending occurring in the neck portion, and the tabs on both sides of the neck are bent in between- the wings, serving as abutments or lugs between the wings and preventing the further compression thereof; (2) a rivet with a right angle head or arm, which pierces both wings, serving to hold them snug against the intervening tabs of the neck, thus preventing the spreading of the wings; (3) from the head of this rivet projects an arm upon which is pivoted a pull-piece, consisting of a flat metal tab of any desired shape, by a perforation in its end. The pull-piece being thus engaged upon the rivet arm, the arm is permanently closed so that the pull-piece is free to slide along the rivet arm, the relative length of which is not fixed. Indeed, in one of the drawings of the patent it is shown as bemg almost as long as the overall surface of the wing; in another, barely long enough to permit the pull-piece pivoted thereon to rotate through a straight angle. When these three parts are thus assembled, the fastener units, on opposing edges of fabric, may on the operation of the slider pass through a channel between the wings. The outer walls of this channel are formed by a bending together of the outside edges of the parallel wings. The two opposing lines of units enter this channel in parallel interlocked position, but as they approach the neck of the slider, each line of units diverges at the rivet post into a separate channel of its own, the inner walls of which are formed by the wedge-shaped rivet post and the in-bent neck tabs, and it is in these diverging channels that the two lines of units emerge from the slider.

Claims 1, 2, 8, and 20 describe combinations including (1) wings forming diverging channels, (2) “means” for holding the wings against spreading, and (3) a pull device described, with certain limitations, as to its location.

But Sundbaek, No. 1,302,606, (1919) shows the wings with diverging channels, means to prevent spreading of the wings (a yoke), and also a pull device. Thus the earlier Sundbaek patent constitutes a complete anticipation of these claims unless it be that invention and novelty can be found in these combinations of the patent in suit by reason of their description of the location of the pull device. For the claims now under consideration recite that the pivoted pull device is “between the channels adjacent one wing to confine the actuating force to substantially the intermediate portion of the slider” (e. g., claim 1), and “near the intersection of the channels and at about the central portion” (e. g., claim 8). But the drawings show a variation in which the force is applied at a point nearer the ends of the' slider than its center, the specification stating the longer travel is desirable “in large sliders for heavy work.”

These claims therefore first raise a question of construction. What is meant by an application of the actuating force at “substantially the intermediate portion” of the slider? The only explanation given in the specification of the desirability of the center pull feature is that it makes for smoother operation in that in operation a component of the actuating force (directly applied in a diagonal direction with respect to the plane of the slider) will serve to raise the whole slider, instead of one end only as would be the ease if the force were applied directly at that end; also to provide room to steady the slider in its movement by application of thumb and finger on the surface of the wing-on both sides of the point where the force is applied, thus lessening the attendant chatter. Conceding without deciding- that smoother operation may be thus obtained and that the center pull feature to that extent has a certain utility, the-efficiency of this element necessarily varies. That is to say, if the pull has the effect claimed when applied precisely at the center of the slider, its efficiency does not wholly disappear when the point at which the force is applied is moved away from the center, but rather diminishes as its distance from the center increases. Indeed, even though the efficient force is applied at the extreme (forward) end of the slider, it may still be steadied against chatter, and, due at least to the partial rigidity of the stringers within the slider, the upward component of force may still tend to lift the whole slider-body. Otherwise, indeed, the claimed effect of this upward component is nil when the actuating force is applied at any point other than the center of balance — to which it is not limited by the claims.

But Sundbaek, No. 1,302,606, shows a pivoted pull device. Like the patent in suit it has a movable pivot which is adjacent the wing. If the pull device in the patent in suit, as these claims recite, is indeed pivoted “between the channels,” which strictly seems not to be the ease (the rivet post being between the channels, but the rivet-arm which serves for the pivot extending from the post over the common channel in the lower part of the slider rather than between the diverging channels in the upper part), with even greater accuracy can the pivot of the earlier Sundbaek be said to be between the channels. And, lastly, for the reasons stated at length above, the vague description of the location of the pivot by saying it is such that the application of force is confined to the “intermediate portion” of the slider, if it has any effect, is practically tantamount to the arrangement shown in the earlier Sundbaek. That is to say, the word “intermediate,” for lack of any other definition, must be construed to include everything between the extremes. For the court cannot by fiat, without subject-matter to aid construction, draw lines defining the “intermediate” portion: Altogether I find these broad and vague claims completely anticipated by the earlier Sundbaek.

But even though the combination of these claims were held to have patentable novelty, it would be impossible to find in them true invention. Their similarity, element for element, with the earlier Sundback is such that any variation found in the location of the pivot is not more than a matter of design. Indeed, the location of the pivot depends on the length of the rivet arm. But the selection of a given size of a part or the restriction of the movement of a part to a given degree, without producing any new method of operation, does not involve an exercise of the inventive faculty. Walker on Patents, § 68; Howard v. Detroit Stove Works, 150 U. S. 164, 14 S. Ct. 68, 37 L. Ed. 1039. Thus for lack of invention as well as novelty I hold these claims invalid.

Claims 6, 7, 11, and 12 each state a combination, the dominant feature of which may be deemed to be the rivet. This is described as “a clamping rivet” passing through the channeled wings, upon which the pull device is pivoted. It is a rivet which (1) clamps the wings to prevent their spreading and (2) serves as the attachment for the pull-piece And these claims consist of such a rivet in combination with the channeled wings and pivoted pull-piece.

Against the validity of these claims the defendant on its brief cites Judson, No. 504,038; Kuhn-Moos British, No. 14,358; and Judson British, No. 6998. The defendant by reply brief also cites Judson, No. 788,317, and Aronson (U. S.) No. 1,060,412.

But Judson No. 504,038 shows at most a bail, upon which the pull-piece travels, riveted to .the slider. Its specifications plainly show that this bail is riveted to the top plate (or wing) only. (Page 2, lines 16,17), Necessarily the rivet had no clamping effect upon the plates. At most, it furnished a means of attachment and travel for the pull-piece, and lacking the means to prevent a spreading of the wings, it did not anticipate these claims. The Kuhn-Moos patent and Judson No. 788,317 show no rivet at all. Aronson’s U. S. Patent, No. 1,060,412, shows a rivet, to be sure, adapted to keep the wings from spreading. But the patent contains no indication of a pull-piece connected with this rivet. On the contrary, the rivet as shown is , not adapted for the attachment of a pivoted pull-piece. Indeed, the commercial specimen of the patent introduced in evidence as defendant’s Exhibit F shows a pull-piece rigidly fixed to the top end of the slider.

I find, therefore, that the combination of these claims is not lacking in novelty. And the obvious and inherent ingenuity of the combinations amply warrants a finding of patentable invention. Accordingly I hold claims 6, 7, 11, and 12 valid.

Claims 3 and 4 cover a slider comprising (1) wings forming diverging channels, (2) “means” engaging the wings between the channels to prevent spreading, and (3) a pull device pivoted to said means “to confine the actuating force to substantially the intermediate portion of the slider.” These claims, therefore, differ from Nos. 1, 2, 8, and 20 in that the pull-piece is specified as being attached to the antispread means. In this respect claims 3 and 4 are narrower than 1, 2, 8, and 20. On the other hand, these claims differ from 6, 7,11, and 12 in that the latter group specify that the antispread means consists of a rivet, whereas in claims 3 and 4 the anti-spread means is described only as “engaging the wings between the channels.” Thus in this respect claims 3 and 4 are broader in scope than 6, 7, 11, and 12. Having held the one group invalid and the other valid, it remains to consider to which classification the intermediate claims 3 and 4 belong.

On the whole, I find these claims (Nos. 3 and 4) invalid. Sundback, No. 1,302,606, shows the pull-piece attached to the anti-spreading “means.” And the antispreading means shown in Sundback, No. 1,302,606, may fairly be deemed to be “engaging the wings between the channels” as specified in these claims. To be sure, this Sundback reference does not show an antispreading means which pierces the wings between channels. But it does show an antispreading yoke which encompasses the wings between the divergent channels. Since many of the claims of the patent in suit (e. g., claim 12) specify an antispread device which passes through the wings, it is necessary to give these claims which specify an antispread device between the channels a broader construction. And so construed, as T have indicated, their validity cannot be sustained. For though narrower in scope than claims 1, 2, 8, and 20, they are, in the respect indicated, too broad to share the validity found in claims 6, 7,11, and 12.

Claim 21, however, escapes the anticipatory effect of Sundback, No. 1,302,606, in that although, like claims 3 and 4, the anti-spread “means” upon which it counts is not fully described, yet it is specified as “passing through the wings.” This claim therefore deserves the validity accorded to claims 6, 7, 11, and 12.

Claims 14 and 16 state combinations comprising (1) wings (a) forming diverging channels and (b) connected between said channels by a neck, and (2) side portions of the neck being bent down to form inner walls for said channels. Thus the essence of these claims is the presence in the combination of a neck piece connecting the wings with integral tabs so disposed as to form inner channel walls.

Clearly Sundbaek, No. 1,302,606, which shows inner walls for the channels formed from a separate key piece does not anticipate. And notwithstanding the defendant’s vigorous contention to the contrary, I find the Rocke reference, No. 1,511,777, does not show inner walls integral with the wing-forming blank. The Rocke drawings (Figs. 3 and 4) indicate a lack of integrity between these parts, and its specifications (page 2, line 14) expressly describe the channels by reference to Sundbaek, No. 1,219,881, which in turn shows (Fig. 2, and page 1, line 10), instead of integral tabs, a separate cap to which the wings are riveted.

But though not lacking in novelty these claims (14 and 16) show no patentable invention. Wings formed from a single blank connected by a narrow neck-piece were well known in the art. Channels such as shown in this patent with inner walls diverging had been known at least since Judson, No. 557,207 (1896). So far as the evidence disclosed, the inner walls in the patent in suit have no essential function other than those of Judson. And Aronson, No. 1,060,412 (1913), shows channels integral with the wings, the inner as well as the outer channel walls being formed by the shaping of the wings, presumably by a stamping operation. Thus in this respect the Aronson reference differs from the patent in suit only in that the inner channel wall is formed from a different portion of the original blank. But such a difference is a matter of design only, and skillful though the design of the patent in suit may be, it falls short of patentable invention. Consequently I hold claims 14 and 16 void for lack of invention.

Claims 18 and 19 include in combination (1) with the wings connected by integral neck-piece and side tabs, (2) a rivet passing through the wings “adjacent the vertex of said channels.” Claim 19 further specifies this rivet as being of wedge-shaped cross section with the point of the wedge at the vertex of said channels. Neither claim includes the pull-piece as an element.

The rivet is so described in these claims as necessarily to constitute a part of the inner wall of the diverging channels and guide for the fastener units, the remainder of the inner walls being formed by the in-bent neck-tabs, already described. Indeed, on its brief, the defendant says: “It is the rivet itself which constitutes the inner walls of the diverging channels.” And under a proper construction of these claims, the rivet is seen to have a clamping effeet upon the wings, holding them against 'spreading. Nowhere does the prior art show a slider containing a rivet of such a character performing these two functions. Judson’s British Patent, No. 6998, cited by the defendant in this connection, shows two plates (wings) separated by a triangular block, apparently not integral with either plate, which serves only to space the plates. These plates and wings are shown as perforated and presumably are clamped by an ordinary round rivet, which is not shown in the drawings nor mentioned in the specifications and which can have no function but to hold the plates and block together. Kuhn-Moos British Patent, No. 14,358, also cited by the defendant, shows no rivet at all. If Aronson, No. 1,060,412, indicates a clamping rivet, its location is quite outside the channels, and it serves neither as earn nor guide for the fastener units. Altogether I find in the mass of prior art which has been brought to my attention nothing which teaches a combination so ingenious as that of these claims. Consequently I hold claim 18 valid.

But claim 19 contains no essential difference from claim 18. The recital of claim 19 that the rivet shall have a wedge-shaped cross section is at most a refinement of design. Indeed, the plaintiff itself urges that one of the defendant’s models which is charged to infringe includes all the elements of claim 19 except the wedge-shape of the rivet. But this model operates successfully and with the same method of operation as the models in which the rivet is wedge-shaped. And so, even though claim 19 is apparently narrowed by the inclusion of this element, yet, having found claim 18 valid, I am unable to discern an independent invention in claim 19 and accordingly hold it invalid. Walker on Patents, § 220.

Having now discussed all of the Sundbaek claims relied upon, my holding is, by way of summary, that claims 6, 7,11, 12, 18, and 21 are valid, and that claims 1, 2, 3, 4, 8, 14,16,19, and 20 are invalid and will proceed at once to consider the charged infringement of the Sundbaek patent which the defendant contests.

Of the defendant’s manufacture, two models are charged to infringe, examples of which are in evidence as Exhibits 7 and 8. Both of these sliders I find have the rivet piercing the wings and forming the vertex of the diverging inner channel walls, and in both the rivet serves to prevent any spreading of the wings and also as the means of attachment for the pivoted pull-piece. Both, by stipulation of the parties, were made, used, and sold by the defendant in the United States after the patent in suit had issued and before the bill herein was brought. Both, I find, infringe claims 6, 7, 11, 12, 18, and 24 of the Sundbaek patent, No. 1,566,996.

Whitney Patent.

This patent discloses a slider in all respects similar to that of the Sundbaek patent in suit, except: (1) the rivet is staple-shaped or bifurcated, with a U-shaped head in which the pull-piece pivots. Both legs of the rivet pierce and clamp the wings of the slider in its longitudinal axis, and (2) the extremity of the pull-piece which is pivoted on the rivet has a projection which operates as a cam upon the surface of the upper wing. The result is that when the pull-piece is at an angle with the plane of the slider, as when grasped for purposes of operation, the cam is released from the pressure on the wing and the slider is free to move in the direction of the pull precisely as in the Sundbaek patent. When, however, the pull-piece is pushed down into a position parallel with the surface of the wing, the cam, coming into operation, depresses the upper wing upon the fastener units between the wings, thus holding them by friction so as to prevent their movement.

The patent discloses a single cam only upon the pull-piece. As a result, although the slider may be moved in either direction according to the direction of the pull, it can be locked only by bringing the pull-piece into parallelism with the surface of the wing on one side only of the rivet member.

The plaintiff relies upon claims Nos. 1 to 6. All of these claims specify a cam on the operating handle, arranged to cause the plates or wings of the slider to grip the interlocking members or fastener units, thus locking the device in adjusted position. It thus appears that the locking feature of the cam upon the operating member of the pull-piece pivoted to the rivet, is the essence of the invention claimed.

The slider which the plaintiff produced under this patent conforms to the specifications of the patent except that, instead of the bifurcated rivet shown by the patent, it used a rivet very similar to that shown in the Sundbaek patent; and instead of a single cam on the end of the pull-piece (thus allowing the slider to be locked with .the pull-piece depressed into parallelism with the surface of the slider on one side only of the rivet head to which it is pivoted), the plaintiff’s commercial slider has a double cam on the end of the pull-piece so that the slider may be locked by depressing the pull-piece on either side of its fulcrum or rivet head. The defendant’s commercial slider, which it is charged infringes this patent, was designed and introduced into the market by the defendant after the defendant’s principal officer, who was active in the design of the defendant’s products, had actually seen the Whitney patent. The defendant’s slider being almost identical with that shown in the Whitney patent, especially with reference to the cam locking feature, I can only conclude that the defendant copied the invention of the plaintiff’s (Whitney) patent. However that may be, the defendant, on brief at least, does not attempt to meet the charge of infringement, but confines its defense to the contention that the plaintiff’s Whitney patent lacks patentable invention.

On the issue of invention, the defendant cites Aronson’s French patent, No. 442,132. The reference however, does not support the contention since Aronson discloses a wholly different means for the locking result, a blade-like member insertable through the slider and between the fastener units. The Binns reference, No. 1,506,286, cited in the answer, seems to have been abandoned on brief. In any event, the locking device which it discloses shows no resemblance whatever to that of Whitney. Instead, the defendant on brief relies upon Koplin, No. 293,476, showing a lock for rein-holders; Clark, No. 379,934, a lock for a rope fire escape; Booth, No. 442,906, showing a compression cock operating upon a flexible rubber tube; Dulje, No. 526,830, a shoe fastener; MeEwen, No. 631,-938, a fastener for tent ropes; Prentice (the defendant’s president, manager, and patentee), No. 1,443,145, showing a lock for.a belt buckle, and Ockford, No. 374,749, showing a device for locking a mail box by friction on flexible locking or closing cords. None of these references discloses the entire combination of the Whitney patent. But the defendant contends, in so far as these contentions disclose earlier applications of the principle of locking' by friction, they demonstrate that no patentable invention was required by the application of that principle to the device in question.

The contention, however, cannot be sustained. The problem in locking a slider into given position upon fastener units suitable for a fastener involved the introduction of a new feature into an intricate fastener mechanism and was quite a different problem from that involved in the locking of a slider upon unitary material such as a single piece of leather, rope, rubber tubing, etc., which was the problem of the references. The defendant has produced not a single reference showing a slider operating with metallic fastener units, in which the principle of cam-produced friction has been disclosed to obtain a locking effect. One skilled in the art of designs pertaining to hookless fasteners, could never have evolved the design of the patent in suit if he had drawn only upon his familiarity with that art. To adapt with success the elementary principle of cam and lever to produce friction for locking the device in question, involved more than routine design.

The defendant itself seems not to distinguish between the six claims of this patent. Finding as I do that the application of the locking device to fasteners of this type involved the exercise of patentable invention, I hold that all the claims of this patent are valid.

On brief, the defendant seems not to dispute that the patent, if valid, is infringed. It was stipulated that the defendant’s product was made, used, and sold in the United States after the issue of the patent in suit and before the bill was brought. That the defendant’s product on which the charge of infringement is based, like the plaintiff’s product for the protection of which this patent is invoked, has a single-post rivet instead of the double or bifurcated rivet, and a double-action cam instead of a single cam acting in one direction only is of no significance. For even the defendant seems not to deny that the elements actually used are the equivalent of those disclosed by the patent. In any event, such I find to be the case and hold the first six claims of this patent valid and infringed.

In considering both the Sundback and Whitney patents in suit, I have not neglected to consider numerous contentions of both parties growing out of file wrappers, and other factors. But the opinion is already too long, and ought not be extended.

But one incidental question remains to" be decided.' The original bill counted also upon a charged infringement of Statham reissue patent, No. 17,437. Some six months after filing its bill, the plaintiff notified the defendant that it would withdraw the Stat-ham patent from the suit. At trial plaintiff moved that the bill with respect to the Statham patent be dismissed without prejudice, the defendant objecting that its dismissal should be only upon the merits. On authority of Pullman’s Palace-Car Co. v. Central Transportation Co., 171 U. S. 138, 18 S. Ct. 808, 43 L. Ed. 108; which was followed in Hawie Manufacturing Co. v. Hatheway Manufacturing Co., Equity No. 1719, U. S. D. C., Connecticut, the motion to dismiss without prejudice may be granted. It having been represented to the court that the defendant was put to additional expense in connection with its defense by the presence of the Stat-ham claims in the bill, and since ordinarily the costs of a bill dismissed run to the defendant and on a bill sustained to the plaintiff, in this ease it seems equitable that the costs to each should be offset, and with costs to neither party.

A decree may be entered in accordance with this opinion.

On Rehearing.

HINCKS, District Judge.

On rehearing the defendant argues that the court fell into error finding patentability in the Whitney patent in view of the fact that the prior art is replete with means for the application of cam-produced friction to lock sliders of various types. It is urged that the problem which confronted Whitney was essentially a problem in the art of locking rather than one pertaining to the art of slide fasteners. Since in locking devices the use of cam-produced friction is old, it is argued that Whitney disclosed neither invention nor novelty in applying that familiar locking means to a new use on an old type of slider.

In support of this claim the defendant relies largely on Stearns & Co. v. Russell (C. C. A.) 85 F. 218, and Jay v. Weinberg (C. C. A.) 262 F. 973, 974. As I read the Stearns Case, the invention of the patent there in suit covered merely a suction bar designed only for holding pills. The specifications and the claims, at least so far as reported, indicate that other means not specified by the patent should be used to control the suction bar in its movements in the dipping and drying process. The court found that the device of the patent was almost a replica of a suction device used to feed paper into a press as one element or subcombination of the patent covering a larger machine, and, as I read the opinion, held only that no patentable invention or novelty was required to appropriate one element or subcombination from an earlier machine and use it as an independent tool for another use in another process. Clearly this holding eannot> control the decision here. For Whitney did more than to appropriate a cam and lever from the prior art and use it as a separate tool. Instead, he contrived to adapt a cam into co-operative combination with an operable slide fastener. To be sure, the slide fastener of his combination, independently considered, may have lacked invention and novelty. But it, was the combination, rather than any element thereof, which was claimed as the patentable invention.

Nor does Jay v. Weinberg hold that patentable invention cannot be predicated upon a new combination of old devices.

In any event, in this case the presence of invention and novelty is apparent from the history of the prior art. To be sure, Oekford in 1880 applied the principle of the cam and lever to lock a fastener on the closing ropes of a mail bag; in 1888 Clark applied the same principle to lock the jaws of a fire escape device upon the rope on which it traveled; in 1890 Booth used the principle to lock the flow of liquid through a flexible tube; in 1894 Dulje used the principle in a shoe lace fastener; in 1923 Prentice himself used the principle in a belt buckle. But in the earlier forms of slide fasteners from Judson (1893) onward, so far as the record discloses, no one thought to apply the principle to a slide fastener until Whitney. Yet the prior art shows an effort to provide fastener sliders with suitable looking means. Thus Aronson, in his French patent, shows a finger or bar insertable between the fastener units for locking purposes; and Binns, in 1924, showed a lock for slide fasteners' consisting of hooked fasteners integral with the pull-piece, adapted to engage upon stops set into the stringers.

To be sure, from the time of Judson on through Sundback’s patent in suit, the existing types of sliders, because of the rigidity of their wings,.were not adapted to such an application of the cam as Whitney showed. And the art showed no slider with wings adapted for compression until the slider with the central rivet piercing the wings had been invented. Even though the slider with the central rivet preceded Whitney, his use of the central rivet on a slider as a co-operative member between cam-actuated wings involved novelty and invention.

I must, therefore, decline to alter my decision.


author: BYERS, District Judge.

text:
    JACKSON v. PRICE.
    District Court, E. D. New York.
    March 9, 1934.
    William Murray, of Brooklyn, N. Y., for plaintiff.
    Howard W. Ameli, U. S. Atty., of Brooklyn, N. Y. (Albert D. Smith, Asst. U. S. Atty., of Brooklyn, N. Y., of counsel), for' defendant.
   BYERS, District Judge.

Action at law to recover $9,844.92 principal and $2,086.51 interest, with interest,, paid as an alleged deficiency in income tax for 1923.

The question for decision is whether the plaintiff, as residuary legatee under the will of William P. Talbot deceased, was entitled to a deduction, from his 1923 income as such legatee, of the amount of the New York state-transfer tax upon his legacy, which tax was-paid in that year.

The stipulated facts are quite simple: The executors under the Talbot will received for the taxable year, income belonging to the plaintiff as residuary legatee, amounting in. all to $73,374.67.

They paid out:

The plaintiff filed a return of income for the same year, containing items other than the $59,595.62 so received by him from the said executors; in connection with “Other income” his return stated as follows: “Monies received from executor of estate not included because estate now in process of administration and taxed as an entity.”

The other items set forth in his return exceeded the legal deductions, and consequently a tax was reported and paid.

In January of 1928, the plaintiff was advised that a deficiency tax had been determined against him, based upon the said fiduciary income of $59,595.62, and a bill therefor was thereafter rendered, made up of the items stated in the opening paragraph hereof; that bill was paid to the defendant on February 28, 1928, and a claim for refund was filed March 8, 1928.

Rejection of the claim was thus explained in November, 1928: “Inasmuch as the estate and inheritance taxes in the instant case were claimed and paid by the estate, under the provisions of section 703 (a) of the Revenue Act of 1928 [26 USC A § 2703 (a)], such taxes are not deductible in determining the net income of the beneficiary.”

It may be observed here, that the Revenue Act of 1928 was approved May 29, 1928, about six months after the determination of deficiency, which was dated December 31, 1927, and over four years after the income in question had been received. Of course section 703 of the Act of 1928 (26 USCA § 2703) was not relied upon when the assessment was made, and otherwise is of no assistance in deciding the ease.

Reconsideration was sought and denied April 8,1929, thus:

“After careful consideration of the entire record in the case, this office is of the opinion that during the years in question the property, which would ultimately comprise the residue of the Estate, had not yet passed to the taxpayer, and the estate as represented by the executors was a separate and distinct taxable entity during such period. Such being the ease it cannot he successfully contended that the taxes paid by the Estate were from funds belonging to the taxpayer, but instead from the funds of the Estate, and having been claimed by the Estate as a deduction on its income tax returns, the taxes in question cannot be allowed as a deduction to the beneficiary, the present taxpayer.
“The fact that amended returns have been filed in no wise affects the case as indicated in I. T. 2464 published in Volume 8, No. 12, March 25, 1929. « * * ”

The amended returns last above referred to were as follows:

As to the executors, form 1041 was employed, showing:

The latter item was lower than the amount reported by the plaintiff originally in his return for the year 1923.

It will he seen that the government has taken the view that, under the returns as originally filed, the payment of the New York transfer tax by the executors must be so construed as to deprive the plaintiff of the benefit of a deduction therefor, because the fiduciary income is not regarded as having been' tax free in his hands.

This is what the letter of Aprii 8, 1929, means, if presently understood. In order to justify that' conclusion, the Commissioner, true to the instincts of the tax gatherer, has, to his own satisfaction, made two incomes grow where one grew before:

A. The income from the residuary estate in the hands of the executors during 1923.

B. The income paid by the executors during that year.

The trouble with that concept is that both sources of revenue occupied the same space; they were co-existent; they were co-extensive; they were identical.

It becomes necessary to inquire whether the New York transfer tax paid during 1923 constituted a deductible item from income received that year.

The applicable statute was the Revenue Act of 1921 (42 Stat. 227), which provided, in section 214, that, among deductions allowed to individuals, were included:

“Taxes paid or accrued within the taxable year except * * * (taxes not here involved).
“For the purpose of this paragraph estate, inheritance, legacy, and succession taxes accrue on the due date thereof except as otherwise provided by the law of the jurisdiction imposing such taxes.”

Section 219 provides that the net income of an estate is computed in the same manner and upon the same basis as for an individual.

Thus clearly revealed is the purpose to permit the deduction of such a tax as the New York transfer tax, from the income received during the year of accrual. See Farmers’ Loan & Trust Co. v. U. S. (D. C.) 9 F.(2d) 688, and eases therein discussed.

It is stipulated that $60,000.00 was paid by these executors during the calendar year 1923 on account of the New York transfer tax, and at the time of payment it had accrued and was due and payable.

Therefore the item was a proper deduction from income for the year 1923. Since this is so, there remains to be seen whether such deduction has been allowed. Said section 219 deals with “Estates and Trusts,” as to which an income tax must be paid. The applicable subdivisions are:

“(1) Income received by estates of deceased persons during the period of administration or settlement of the estate;”
“ (4) Income which is to be distributed to the beneficiaries periodically, whether or not at regular intervals * * *."

It is unnecessary to dwell upon the question of whether subdivision (1) or (4) applied to the facts as they existed in 1923. This plaintiff was vested of the residuary estate created by the Talbot will, which was probated during the year 1923. That residue was to be held in trust for his life, subject to the termination of the trust upon his reaching the age of 40 years, when the principal was to be conveyed to him by the trustees. The executors were the same persons as the trustees; whether the income in question was received and had to be reported for income tax purposes, as having been received during the period of administration or settlement upon the theory that such period would continue until the executors accounted as such, and took up their separate duties as trustees— or whether the income for 1923 was regarded as subject to distribution to the plaintiff periodically, seems to be unimportant for present purposes.

If the first subdivision applied, the executors were required to pay the income tax, after which the income was tax-free in the plaintiff’s hands. (See article 344, Income Tax Regulations 62.)

If subdivision (4) governed, the income was taxable directly to the beneficiary. (See article 345, Income Tax Regulations 62.)

In other words, there was one income tax payable on the income, either by the executors, or by the beneficiary; not two incomes, or two taxes.

It is requisite to bear in mind the precise character of the New York state transfer tax, during the year 1923. That it was an exaction by the state of a price for permitting a decedent to make testamentary disposition of his property, seems to have been decided in U. S. v. Perkins, 163 U. S. 625, 16 S. Ct. 1073, 41 L. Ed. 287; Prentiss v. Eisner (C. C. A.) 267 F. 16; Farmers’ Loan & Trust Co. v. U. S., supra; and Keith v. Johnson, 271 U. S. 1, 46 S. Ct. 415, 70 L. Ed. 795.

In the latter case, it was said below [(C. C. A.) 3 F.(2d) 361] that section 220 of the New York Tax Law (Consol. Laws c. 60) is “ambiguous-in respect of its incidence,” i. e., the incidence of the transfer tax; in consequence of the decision in that ease, it cannot be said that the instant levy was an impost upon the transferee — the plaintiff. Deduction by the personal representatives, from income received during the year in which the tax had been paid, was sanctioned in the last two eases above referred to; hence these executors were acting in accord with the authorities when they claimed, as a deduction, the tax payment made by them, as set forth in the first return which tiny filed for the year 1623.

Whether they were required to assert the deduction in order to avoid tax liability as a practical matter, is of no moment. The fact is that they did assert it, and filed a return which disclosed no tax liability. The ineome in their hands was thereby demonstrated to be free from federal ineome tax, and it did not become something else in the hands of the beneficiary. It was always his ineome, from the time that it arose, and never changed its essential character through being handled by the executors. Matter of Talbot, 215 App. Div. 724, 212 N. Y. S. 506.

While the legal title to the securities constituting the residue of the estate was in the executors, and hence the ineome therefrom, the property, in a larger and truer sense, was always in the residuary legatee, and the naked legal title of the executors was only such as was requisite to enable them to perform their functions.

Since the ineome for 1923, through legal deductions, was exempt from federal ineome tax for that year, the collector was without power to impose such a tax, and his action in so doing was without legal sanction.

The fallacy of the collector’s reasoning as set forth in his letter of April 8, 1929, is comprehended in the statement that “the property which would ultimately comprise the residue of the estate had not yet passed to the taxpayer ® ®.” On the contrary, the property in the residue had passed to the taxpayer on the date of the testator’s death, and the dimensions thereof alone remained to be determined as the result of the process of administration.

The defendant’s briefs make frequent reference to the two tax entities, namely, the estate, i. e., the executors, and the beneficiary. So much may be conceded arguendo; but multiple entities did not give rise to multiple incomes — that is the fact which confronts the defendant, and which deprives the assessment of validity.

However convenient it may be, for purposes not here involved, to visualize personal property under fiduciary administration as something apart from those who own it (Anderson v. Wilson, 289 U. S. 20, 53 S. Ct. 417, 77 L. Ed. 1004), that concept cannot function so as to create something which does not exist, namely, two incomes from one property.

The collector has disregarded the supplemental or amendatory returns, and his determination is entitled to adjudication upon the theory adopted by him, which is found to be based upon a fallacy. As to the various returns, it is thought that they present matter of form, not substance, and that, the controversy turns upon the latter. The determination is that the assessment of the alleged deficiency tax was invalid, and that the plaintiff is entitled to judgment in accord with the prayer of his complaint, and as contemplated by U. S. Rev. Stat. 989 (28 USCA § 842); this opinion may be construed as the applicable certificate under that statute.