CITE:  139 F.2d 98
CMON:  November 1943
PLAIN: Taylor Instrument Companies
DEFND: Fawley-Brost Company
COURT: United States Court of Appeals for the Seventh Circuit 
DATE:  November 15, 1943
Appeal from the District Court of the United States for the Northern
District of Illinois, Eastern Division; Philip L. Sullivan, Judge.

  There is no overlap between "Inventors'" "Discoveries" (patents)
  "Authors'" "Writings" (copyrights).  A patented invention should not
  be able to extend its term of protection by use of copyrights.

JUDGE: MAJOR, Circuit Judge
Before MAJOR and MINTON, Circuit Judges, and LINDLEY, District Judge. 


Plaintiff brought this action to recover damages for and to enjoin alleged
copyright and trademark infringement and alleged unfair competition in
connection with the manufacture and sale of charts used in recording
machinery. Defendant denied the charges and counterclaimed for certain
relief, including a declaratory judgment that such charts were not
copyrightable. The court below decided all issues in favor of the
plaintiff and entered an interlocutory judgment from which defendant

Plaintiff is a manufacturer and vendor of a recording thermometer which is
a combination of numerous elements, including a clock which shows the time,
a thermometer which measures and indicates the temperature, and a writing
machine which draws upon the chart a graphical record disclosing the hourly
temperature. The chart is circular in form and about ten inches in diameter.
It has arc lines extending from the center outwardly by which the time is
indicated, and lines extending in a circle around the chart by which the
temperature is indicated. The writing machine feature includes a pen or stylus
which, co-acting with other elements of the machine, produces a traced line
which indicates the temperature at differnt times during any desired period.
The chart upon which this record is made is commonly known in the trade as
such, although it appears more accurate to describe it as a paper dial. 

Plaintiff prints its copyright notice upon charts manufactured by it, in
conformity with copyright certificates issued by the United States Registrar
of Copyrights. Plaintiff relies upon eighteen of such copyright certificates
out of several hundred which it has procured. Plaintiff also prints upon
its charts its registered trademark "Taylor" and a number, which indicates
the type of machine with which the chart is to be used. 

Charts manufactured and sold by the defendant are admittedly copied from
plaintiff's charts in so far as the circular and arc lines are concerned.
Defendant omits, however, plaintiff's trademark and copyright notice. {n1}
Defendant prints on its charts in bold-faced type, "Fawley-Brost Co.,
Chicago".  It also prints upon the chart a number for the purpose of
indicating the type of machine, whether manufactured by plaintiff or
others, for which the chart is designed. This means that defendant's
number corresponds with plaintiff's number where the charts are
manufactured for the same type of plaintiff's machine. Some of
defendant's charts also bear the letter "T", which indicates that they
are designed for use on a machine manufactured and sold by the plaintiff. 

The statement thus made appears sufficient for a consideration of defendant's
contention that plaintiff's copyrights are invalid and of no effect. (Other
facts will be subsequently stated relative to the charge of trademark
infringement and unfair competition.) Plaintiff, as might be expected,
relies heavily upon the findings and conclusion of the trial court. It
may be said, so we think, that there is little, if any, dispute concerning
the facts of the case. The dispute is largely dependent upon the
conclusion to be drawn from such facts. 

Art. 1, Sec. 8, Clause 8 of the Constitution of the United States empowers
Congress "To promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries."  In the exercise of the power thus conferred,
Congress has legislated with reference to copyrights (Title 17 U.S.C.A.
Section 1 et seq.), thereby furnishing protection to "Authors" in their
"Writings", and has legislated with reference to patents (Title 35 U.S.C.A.
Section 31 et seq.), thereby furnishing protection to "Inventors" in their
"Discoveries".  Thus it appears that Congress has provided two separate
and distinct fields of protection, the copyright and the patent. In the
former (Sec. 4), it has placed "all the writings of an author", and in
the latter (Sec. 31), inventions and discoveries of "any new and useful
art, machine, manufacture * * * or any new and useful improvements
thereof * * * ."  While it may be difficult to determine in which field
protection must be sought, it is plain, so we think, that it must be in
one or the other; it cannot be found in both. In other words, there is
no overlapping territory, even though the line of separation may in
some instances be difficult of exact ascertainment 

Defendant bottoms its contention that the charts in suit are not the proper
subject of copyright, largely upon the oft-cited and much quoted case of
Baker v. Selden, 101 U.S. 99, and cases which have followed that decision.
There, the distinction between copyright and patent protection is stated
thus (101 U.S. at page 105): "The description of the art in a book, though
entitled to the benefit of copyright, lays no foundation for an exclusive
claim to the art itself. The object of the one is explanation; the object
of the other is use. The former may be secured by copyright. The latter
can only be secured, if it can be secured at all, by letters-patent." 

The reason assigned by the court for such distinction is (101 U.S. at page
102): "To give to the author of the book an exclusive property in the art
described therein, when no examination of its novelty has ever been
officially made, would be a surprise and a fraud upon the public. That is
the province of letterspatent, not of copyright. The claim to an invention
or discovery of an art or manufacture must be subjected to the examination
of the Patent Office before an exclusive right therein can be obtained;
and it can only be secured by a patent from the government." 

In Brief English Systems, Inc. v. Owen, et al., 2 Cir., 48 F.2d 555, 556, the
court stated: "* * * it may be said that the way to obtain the exclusive
property right to an art, as distinguished from a description of the art,
is by letters patent and not by copyright." This same distinction has been
recognized in Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F.2d 275,
Amberg File & Index Co. v. Shea Smith & Co., 7 Cir., 82 F. 314, and in
Dymow v. bolton, et al., 2 Cir., 11 F.2d 690, 691. In the latter case, the
court said: "Just as a patent affords protection only to the means of
reducing an inventive idea to practice, so the copyright law protects
the means of expressing an idea * * * ." 

Plaintiff points out that Congress in 1909, subsequent to the decisions
in Baker and kindred cases, amended Sec. 5 of the Copyright Act by
including Par. (i), "Drawings or plastic works of a scientific or
technical charcter", and that such decisions are no longer controlling.
In the absence, however, of any authority to the contrary, we are of the
view that the field of copyright protection was not enlarged by this
amendment. The field is still confined to "the writings of an Author".
That such is the case is evident from the concluding paragraph of Sec. 5,
which reads: "The above specifications shall not be held to limit the
subject matter of copyright as defined in section 4 of this title
 * * * ."  Furthermore, the pronouncement of the Baker case has recently
been recognized and applied by two District Courts. Clair v. Philadelphia
Storage Battery Co., 43 F.Supp. 286, and Muller v. Triborough Bridge
Authority, 43 F.Supp. 298. Therefore, we are of the view that the rule
of the Baker case is the rule of today. None of the cases relied upon
by the plaintiff announces a contrary rule. None of them, so far as we
are able to ascertain, has sustained a copyright upon an object which
did not teach or convey information. 

This brings us to a consideration of whether plaintiff's copyrighted chart
is an object of explanation or an object of use. If the former, it is
subject to copyright protection; if the latter, it is not entitled to such
protection, but the same must be obtained, if at all, by letters-patent.
The character of the chart is aptly stated in a letter written by
plaintiff's counsel to defendant's counsel shortly prior to the
commencement of the instant suit. It states, "The chart in question is,
in effect, a replaceable dial which cooperates with the pointer or index
of the instrument, to indicate a temperature reading. The fact that this
pointer carries an inked stylus to make a record of this indicated
temperature, does not change the replaceable dial into a blank book." 

The proof, as well as an examination of plaintiff's recording thermometer,
including its chart, leaves no room for doubt but that the latter is a
mechanical element of the instrument of which it is an integral part. The
chart is as indispensable to the operation of a recording thermometer as
are any of the other elements. They are interdependent. As was stated by
plaintiff's president: "I would say that you must have the pen and you
must have the chart and the two together will determine the temperature." 

Notwithstanding plaintiff's rather feeble argument to the contrary, the
chart neither teaches nor explains the use of the art. It is an essential
element of the machine; it is the art itself. It is our judgment that
plaintiff's charts are not the proper subject of copyright and that the
recognition of an exclusive property right therein would be, in the words
of the Supreme Court in the Baker case, "a surprise and a fraud upon the

Defendant introduced some twenty-five patents, the subject matter of which
was recording thermometers which displayed representations of charts.
All of such patents have expired and it seems reasonable to think that
plaintiff's chart is extremely old in the art. Plaintiff, however, seeks to
justify its copyright protection by pointing out that none of these patents
would give the defendant measurements necessary for printing the charts
alleged to infringe. This argument, if true, ignores the fact that it now
seeks protection in the copyright field for an art long protected in the
field of patents, and where undoubtedly it still belongs. The absurdity of
plaintiff's position appears from the fact that each new model of machine,
whether manufactured by plaintiff or others, requires a chart with different
measurements. As a result, these different measurements afford the excuse for
obtaining another copyright. Thus is produced the intolerable situation that
plaintiff may extend indefinitely the fifty-six years of protection afforded
by the copyright laws. In fact, the protection thus afforded would be
without end. 

What we have just said is perhaps unnecessary to a decision of the question
under consideration. It is, however, a graphic illustration of the wrong which
can be, and which we think in the instant case has been, perpetrated by
allowing plaintiff copyright protection upon a mechanical device which
clearly belongs exclusively in the patent field. Judge Chitty, in Davis v.
Comitti, 52 L.T. Rep., N.S., 539, 540, used this pertinent lwnguage: "It would
be strange if the inventor, who, by means of a patent could obtain a monopoly
for his invention for the term of fourteen years, was enabled to obtain a
distinct right of copyright for a period of at least forty-two years for the
letterpress on the dial, or some other essential part of his invention, and
thus, after the expiration of the period for which his patent was granted,
be in a position to restrain the serviceable user of some letterpress which
formed an essential part of his invention. In my opinion the statutes do
not lead to any such anomaly * * * ." 

The fact, if such it be, that plaintiff's chart has long since lost its
patentable status does not impair the conclusion that it has no place in the
copyright field. In fact, it strengthens such conclusion, even though it
leaves plaintiff unprotected. 

On the question of trademark infringement, there again appears little, if
any, dispute as to the facts. The court concluded, however, that "the use
by the defendant of the name 'Taylor' and the abbreviations thereof, 'Tay'
and 'T', by the defendant constitutes a colorable imitation of and an
infringement of plaintiff's registered trade-mark 'Taylor'." The validity
of plaintiff's registered trademark "Taylor" is not in dispute. Also,
there is no proof or contention that defendant used such trademark upon
the charts manufactured by it. The most shown in this respect is that the
defendant on some of its charts used the letter "T". Plaintiff contends
and the lower court concluded that defendant's use of the letter "T"
constituted an infringement of plaintiff's trademark mark "Taylor".  With
this contention we do not agree. Certainly the mere fact that the letter
"T" stands for "Taylor" does not justify such a conclusion. Especially
is this true in view of the undisputed proof that defendant used such
letter for the prurpose of indicating that its chart bearing such initial
was designed for use on plaintiff's machine. In other words, the use of
the letter was to show destination rather than origin of the chart. We
think the authorities are rather clear to the effect that the use of
such letter, under the circumstances of this case, was neither trademark
use nor trademark infringement. Columbia Mill Co. v. Alcorn, 150 U.S. 460,
463; Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665,
673; American Dirigold Corp. v. Dirigold Metals Corp., 6 Cir., 125 F.2d 446,
453; Autoline Oil Co., et al. v. Indian Refining co., Inc., D.C., 3 F.2d
457. In the latter case, plaintiff charged that its registered trademark
"F Autoline" was infringed by defendant's use upon its product of
"F Havoline." In denying plaintiff's contention, it was held that the
letter "F" was used by both parties to indicate that the oil procuced by
each was suitable for use in Ford cars. It will be noted that the letter
"F" was a part of plaintiff's registered trademark, in contrast to the
instant situation wherein the letter "T" in and of itself is no part
of plaintiff's registered trademark. 

As bearing upon the matter of trademark infringement, plaintiff also relies
upon defendant's use of "Tay" and "Taylor" in the sale of its charts, neither
of which, as already pointed  [**14] out, was used by defendant upon the chart
itself. The use by defendant of the symbol "Tay" was in connection with a
price card advertising charts for sale. As already stated, defendant
manufactures charts for use on recording  [*102] machines manufactured by a
number concerns other than plaintiff. The price card complained of, under the
designation in bold type "Chart to fit," listed charts for numerous machines,
including those of the plaintiff. At the bottom of the card was printed in
large letters defendant's name and address. 

Plaintiff in its brief concedes that "defendant has the right to sell charts
to the owners of these 'Taylor' instruments, but this does not give the
defendant the right to copy plaintiff's copyrighted charts, or to use
plaintiff's trademark 'Taylor' or the abbreviations of it * * * ." Plaintiff
could not do otherwise than make such concession, and it appears that
defendant, by its advertising just referred to, was acting within its rights
in advising the public that it had for sale charts to fit plaintiff's machine.
Defendant, having the conceded right to manufacture and sell a chart designed
to fit plaintiff's machine, certainly was entitled to  [**15] advise the
public that it had for sale a "Chart to fit" such machine, and the fact
that it so advertised furnishes no support to the conclusion that it was
infringing plaintiff's trademark "Taylor". 

The sole instance wherein defendant was shown to have used the word "Taylor"
was in a confidential letter to the Bowman Dairy Company, in which the
defendant quoted a price on "Taylor" charts, as well as on numerous other
designated charts. This letter was obtained in some manner by plaintiff
without the consent of either the defendant or the Bowman Dairy Company, and
was exhibited to certain of plaintiff's witnesses who furnished some testimony
to the effect that the word "Taylor" would indicate that the charts were those
of the plaintiff. We are of the view that testimony obtained in such fashion
is entitled to little, if any, weight. Certainly the recipient of the letter
was not decived or misled in any particular. The purchasing agent of the
Bowman Company testified positively that his company understood, in fact was
so advised by the defendant, that the charts mentioned in the letter were
manufactured by it. We think that this isloated instance of defendant's use
of the word "Yaylor" in a private communication thoroughly understood by
the recipient is without significance. 

What we have said concerning plaintiff's charges of copyright and trade-mark
infringement is largely determinative of its charge of unfair competition. We
shall mention one additional circumstance relied upon by plaintiff. It has to
do with the sale by defendant of thirty boxes of charts manufactured by it,
which plaintiff contends were sold as those of the plaintiff. These charts
were sold in response to letters which requested, "Kindly forward me by return
mail one box of Taylor charts No. 742." The persons placing such orders sere
in each instance in the employ of the plaintiff, and the orders were evidently
placed with the view of obtaining evidence preparatory to this litigation.
Plaintiff contends that such an order calls for a box of charts manufactured
by it. Defendant argues that it interpreted the order as calling for a box of
charts designed for plaintiff's machine. Acting upon such interpretation,
the order was filled by defendant's charts, manufactured to fit plaintiff's
machine. The letter, in our judgment, is capable of either construction.
Certainly the interpretation placed upon it by the defendant is as
reasonable, if not more so, than that placed upon it by the plaintiff.
Plaintiff, in its anxiety to obtain evidence, apparently thus worded the
letter as a basis for the contention now made. If defendant had supplied
charts in response to orders for those manufactured by the plaintiff, an
entirely different situation would be presented. While it may be, as argued
by the plaintiff, that the employment of persons to make purchases is the
only way of obtaining evidence to support its charge, it does not follow
that such persons are licensed to practice a deception on the party
against whom the evidence is sought to be obtained. 

Furthermore, the accusation that defendant palmed off these thirty boxes of
charts as those of the plaintiff comes near to being dispelled by other
circumstances of their sale and delivery. Such shipments were billed by the
defendant to be paid for within sixty days after receipt, thus giving the
purchaser ample time to examine the charts. In addition, the defendant, in
conformity with its universal custom, packed and shipped the charts in a one
piece white box having a hinge opening and red printing, with its name
conspicuously printed on top of the box. In contrast to this, plaintiff's
charts were universally  [*103] packed and sold in a two piece box having
a dark blue cover, with the trademark "Taylor," two inches in height,
printed in light blue thereon. It is difficult to believe that the persons
who ordered these thirty boxes of charts, or any other persons acting
under like circumstances, could have been deceived or misled. Cf. Quaker 
Oats Co. v. General Mills, Inc., 7 Cir., 134 F.2d 429. 

In conclusion, we have not overloked the testimony of some witnesses
introduced by the plaintiff to the general effect that defendant's manner of
doing business either had or was calculated to confuse the purchasing public.
Of course, little is required to confuse a person who is desirous of being
confused for the purpose of a law suit. Much of plaintiff's evidence may
properly be placed in this category. Others of plaintiff's witnesses were
confused, or at any rate pretended to be, as a direct result either of their
refusal or neglect to read what was plainly before them.Typical of such
witnesses are those who pretended to believe that the symbol "Tay" used on
defendant's advertising cards, heretofore referred to, indicated that the
product advertised was that of the plaintiff, notwithstanding that such
symbol followed the designation in bold type "Chart to fit," and that
defendant's name and address were printed in large letters in connection

It follows that the judgment appealed from must be and is hereby reversed and
remanded, with directions to dismiss plaintiff's complaint. This is without
prejudice to the right of the court to allow to defendant its costs of suit,
including as part thereof a reasonable attorney fee, as provided by Sec. 40,
Title 17 U.S.C.A. 


{n1}  Defendant on some of its charts printed a notice of a copyright
owned by it. We understand that it has ceased this practice, and in any
event it appears immaterial.