§ 638. A process of manufacture may, under certain circumstances, be protected by injunction, though not the subject of a patent. Thus, where defendant, through breach of contract and in violation of confidence, has become possessed of a . secret process of manufacture, he will be enjoined from making any use of the secret. Though complainant in such a case may not have a good title for protection in equity as against the public generally, his process not being patented, he is entitled to protection against the defendant, who has obtained possession of his secret in violation of the contract of the person by whom it was communicated to defendant.1 § 639. The jurisdiction of equity for the protection of patents is exercised over foreigners within the limits of the country granting the patent, as well as over its own subjects and citizens. And an injunction will be allowed to restrain the citizens of one nation from using machinery patented to the citizens of another, on board their ships within the harbors of the nation granting the patent. 1 Morison v. Moat, 9 Hare, 241. * Caldwell v.Vanvlissengen, 9 Hare, 415. The principles applicable to injunc tions against the infringement of patents by foreigners within the jurisdiction of the government granting the patent, are well set forth by the Vice Chancellor in this case, as follows: "I take the rule to be universal that foreigners are in all cases subject to the laws of the country in which they may happen to be; and if in any case, when they are out of their own country, their rights are regulated and governed by their own laws, I take it to be, not by force of those laws themselves, but by the law of the country in which they may be adopting those laws as part of their own law for the purpose of determining such rights. * * * Foreigners coming into this country are, as I apprehend, subject to actions for injuries done by them whilst here to the subjects of the crown. Why then are they not to be subject to actions for the injury done by their infringing upon the sole and exclusive right, which I have shown to be granted in conformity with the laws and constitution of this country? And if they are subject to such actions, why is not the power of this court, which is founded upon the insufficiency of the legal remedy, to be applied against them as well as against the subjects of the crown. It was said, that the prohibitory words of the patent were addressed only to the subjects of the crown; but these prohibitory words are in aid of the grant and not in derogation of it; and they were probably introduced at a time when the prohibition of the crown could be enforced personally against parties who $640. One who has been enjoined from the infringement of a patent, violates the mandate of the court by using a machine which in substance and principle contains important portions of the patent, though in other respects it may contain new and improved features. So if he uses another patent, similar in principle, the author of which has also been enjoined by the owner of the first patent, he is guilty of a contempt of court. And a defendant who has been enjoined from infringing, by the manufacture and sale of the article, is equally guilty of a violation of the writ, whether he sells in his own right, or as the agent of another.3 So working for wages in a shop or factory, where articles are manufactured infringing on complainant's patent, is a viola ventured to disobey it. The language of this part of the patent, therefore, does not appear to me to alter the case. * * In the argument on the part of the defendants, much was said on the hardship of this court's interfering against them, and upon the inconveniences which would result from it; and some reference was made to the policy of this country; but it must be remembered that British ships certainly can not use this invention without the license of the patentees, and the burthens incident to such license; and foreigners can not, I think, justly complain that their ships are not permitted to enjoy, without license and without payment, advantages which the ships of this country can not enjoy otherwise than under license and upon payment. It must be remembered, that foreigners may take out patents in this country, and thus secure to themselves the exclusive use of their inventions within her Majesty's dominions; and that, if they neglect to do so, they, to this extent, withhold their invention from the subjects of this country. It is to be observed also, that the enforcement of the exclusive right under a patent does not take away from foreigners any privilege which they ever enjoyed in this country; for, if the invention was used by them in this country before the granting of the patent, the patent I apprehend would be invalid. One principal ground of inconvenience suggested was, that if foreign ships were restrained from using this invention in these dominions, English ships might equally be restrained from using it in foreign dominions; but I think this argument resolves itself into a question of national policy, and it is for the legislature, and not for the courts, to deal with that question; my duty is to administer the law and not to make it. Upon the grounds which I have referred to, I think that the facts stated in the affidavits and answer do not furnish sufficient grounds for refusing these injunctions." 1 Woodworth v. Rogers, 3 Woodb. & M. 135. • Id. 'Potter v. Muller, 2 Fish. 631. tion of the injunction, if done by one on whom the writ was served, and will be punished by attachment.1 And in case of a willful violation of an injunction against the infringement of a patent, it is proper for the court, on motion for an attachment against defendant, to impose upon him the payment of such counsel fees and disbursements as were necessary to establish the violation of the injunction." 1 Goodyear v. Mullee, 5 Blatch. 429, 3 Fish. 209. 'Doubleday. Sherman, 4 Fish. 253. CHAPTER XV. OF INJUNCTIONS AGAINST THE INFRINGEMENT OF COPYRIGHTS. § 641. Foundation of the jurisdiction; exercised only by federal courts. 642. Complainant must come into court with clean hands. 643. Requisites of bill; injunction not dependent on discovery. 644. Right need not be established at law. 645. Difficulty of ascertaining piracy; reference to master. 646. Quotations and extracts. 647. Rule as to compilations. 648. Quantity of pirated matter not always a test. 649. Variations merely colorable will not prevent an injunction. 650. When relief may be withheld until action at law. 651. Statute must be strictly complied with. 652. Effect of writ on sale of book enjoined no bar to relief. 653. Extracts; law reports. 654. Musical compositions. 655. Plays protected, but not mere spectacular dramas. 657. Distinction between compilation and abridgment. 663. Unpublished manuscripts entitled to protection. 665. Private letters; scientific lectures. 666. Publication of libel will not be enjoined. 667. Magazine, when enjoined. 668. Common law right. 669. Covenants against publication. 670. Translation not an infringement. 671. Equitable title will be protected. § 641. The jurisdiction of equity in restraining violations of copyright, as in case of the infringement of patents, is based upon the necessity of preventing irreparable mischief and vexatious litigation, as well as securing the rights of authors and their representatives. It is not indispensable to obtaining the relief, that complainant should make out a clear legal title, but the court will be content with a prima facie title, either legal or equitable, or with a clear color of title and assertion of the right. By acts of congress, the power of issuing injunctions in cases of copyright in this country is vested in the United States courts, and as in the case of patents, the jurisdiction is exclusively exercised by these courts. 3 § 642. The interference by injunction being purely equitable, he who seeks this species of relief must come into court with clean hands, and a book which is itself a piracy will not be protected. And since, on grounds of public policy, no copyright can exist in a work which is manifestly immoral, irreligious, or obscene, if it be matter of doubt whether the work in favor of which the aid of equity is sought comes within these classes, the threatened piracy will not be restrained, but the party will be left to pursue his remedy at law. And where there is doubt as to whether the work sought to be protected impugns the doctrines of the Scriptures, equity will refuse an injunction against its infringement." 5 '2 Story's Eq. § 930; Saunders v. Smith, 3 Myl. & Cr. 728. 2 Story's Eq. § 935; Universities v. Richardson, 6 Ves. 689; Chappell v. Purday, 4 Y. & C. 485. Dudley v. Mayhew, 3 N. Y. 9; 16 Statutes at Large, ch. 230, p. 212. In the English Court of Chancery relief by injunction is not allowed for the protection of the copyright of a foreigner. Delondre v. Shaw, 2 Sim. 237. 4 Cary v. Faden, 5 Ves. 24; Barfield v. Nicholson, 2 Sim. & Stu. 1. 2 Story's Eq. § 936; Southey v. Sherwood, 2 Meriv. 435; Lawrence v. Smith, Jac. 471. And see Martinetti v. Maguire, 1 Abb. U. S. R. 356. Lawrence v. Smith, Jac. 471. Eldon, Chancellor, says: "Looking at the general tenor of the work, and at many particular parts of it, recollecting that the immortality of the soul is one of the doctrines of the Scriptures, considering that the law does not give protection to those who contradict the Scriptures, and entertaining a doubt, I think a rational doubt whether this book does not violate that law, I can not continue the injunction. The plaintiff may bring an action, and when that is decided he may apply again." |