(dissenting).
This is an appeal by Harold Lloyd Corporation, Harold Lloyd individually, and Pathe Exchange, Inc., a corporation, from an interlocutory deeree in an equity suit for infringement of the copyright of a story entitled, “The Emancipation of Rodney,” of which H. C. Witwer, a successful short story writer, was the author. The story was printed in and as part of the November 20, 1915, edition of the Popular Magazine, a semimonthly periodical owned and issued by Street & Smith, Inc., publishers, of New York City.
The complainant in the court below was the author, but, during the pendency of the suit and before the trial thereof, he died, and his widow, Sadie S. Witwer, as admin-istratrix of his estate, was substituted as plaintiff and is the appellee in this court.
The deeree from which the main appeal was taken finds infringement by each of the appellants by reason of their having produced, distributed, and exhibited a silent motion picture farce entitled “The Ereshman,” that was first commercially shown to the public about September 12, 1925. The deeree perpetually enjoins further distribution or exhibition of the picture, and it orders the destruction of all films of the picture. In addition, the deeree awards to Mrs. Witwer, in her representative capacity, an accounting from the appellants, and orders each of them to pay to her all profits that have been directly or indirectly received or derived through, from, or out of the production, distribution, or exhibition of “The Freshman” from April 11, 1926. Harold Lloyd Corporation is the producer, and Pathe Exchange, Ine., is the distributor, of the motion picture. Harold Lloyd is a noted screen star, the president and owner of practically all of the capital stock of the corporation that bears his name. He played the leading part in “The Eresh-man” and in a general way supervised its production.
Mrs. Witwer, being dissatisfied with the part of the interlocutory decree that limits her right to profits of the picture to those made subsequent to April 11, 1926, has filed and submitted a cross-appeal herein solely from such part of the deeree. By stipulation of the parties the main and cross-appeals are before this court on one record. Both appeals will be considered and determined in this opinion. For convenience, the appellants and cross-appellees will be called the “defendants” and Mrs. Witwer, the administratrix, the appellee and cross-appellant, will be called the “plaintiff.” The “Emancipation of Rodney” will be referred to as the “story” and “The Ereshman” as the “picture.”
The interlocutory decree rests upon special findings of fact and conclusions of law made by the court below pursuant to Equity Rule 70i/2 (28 USCA § 723).. The opinion of the trial judge is reported in (D. C.) 46 F. (2d) 792.
The defendants assign in'the main appeal many errors in the court below. They have *29grouped their'assignments in their briefs into six general classifications of reasons which they contend require a reversal or at least a modification óf the decree.
Primarily, it is contended that there was no infringement by the defendants, because nothing in the picture was actually appropriated from the story, and, further, that, if it be held that picture matter has been copied from the story, it is of such nature as to be without the protection of the copyright statutes of the United States.
Secondly, it is claimed that the federal court is wholly without jurisdiction to enter the interlocutory deeree.
Thirdly, it is urged that Street & Smith, Inc., is an indispensable party to this suit and no decree can be made in the absence of such party.
Fourthly, it is asserted that part of the profits awarded to plaintiff by the deeree is barred by the statute of limitations, and in this connection the cross-appeal by plaintiff is based upon her assignments of error wherein she contends that no statute of limitations whatever is applicable to her right to recover all profits realized from the picture, but that, if it be held that any limitation does apply, the court below should have applied the four-year period instead of the three-year period covered by the deeree.
Fifthly, defendants argue that the award to plaintiff of all profits of defendants since April 11,1926 (three years prior to the commencement of the suit in the court below), is inequitable and unjust, and that, under the facts, circumstances, and conditions of the case, the court, under section 25 of the Copyright Act (17 USCA § 25) should have assessed or awarded damages in lieu of profits. (If the interlocutory deeree is wholly affirmed, the money recovery will be large, as the complaint alleges the profits from the picture to have been $2,300,000, and answers admit them to be $1,000,000. The decree also allows reasonable attorneys’ fees and the bond staying execution pending appeal was fixed in the trial court at $500,000.)
Finally, it is claimed that the court below abused its discretion in denying defendant’s motion for rehearing upon the ground of newly discovered evidence. This motion questioned the existence of an alleged oral trust of November, 1919, whereby plaintiff claimed that the equitable title to the copyright of the story and all motion picture rights therein vested in the author, Witwer, at that time, although the legal'title remained in Street & Smith, Inc., until an assignment on February 13, 1929.
On August 27, 1915, Witwer sold the story and all rights in it to a partnership of Street & Smith for the sum of $75. The story was not separately copyrighted, but was protected by the copyright issued to Street & Smith for the November 20, 1915, issue of their Popular Magazine in which it appeared. In 1917, all rights in and under the copyright were transferred from said partnership to Street & Smith, Inc., a corporation, which since that time, and until February 13, 1929, was the sole legal owner and holder of the copyright, subject, however, to a trust which the trial court found to have been made in November, 1919, by oral agreement between the author, Witwer, and one MacLean, an officer of the corporate publisher and copyright owner, whereby, in consideration of Wit-wer’s subsequently writing a series of short stories for the Popular Magazine at an agreed price, he, (Witwer) could have all moving picture and other rights to the first eighteen stories of his, which included “The Emancipation of Rodney” that had been previously-printed in the Popular Magazine. It was solely from this asserted oral agreement that the court below determined that Witwer from November, 1919, was the equitable owner ,of the copyright and of all moving picture rights in and to the story as well as the equitable owner of each and every cause of aetion for infringement that accrued subsequently, and it was upon the existence of such trust in favor of plaintiff that she was awarded all of the profits from the picture that antedate the assignment of February 13, 1929. Both of the persons whose conversation it is claimed created the trust were deceased at the time of trial and neither of them had at any time given any testimony relating to it. The only witness who gave any substantial evidence as to the existence of the claimed oral agreement of 1919 was the plaintiff, Mrs. Witwer, who testified that she was present at the alleged conversation between her husband and MaeLean and heard the aforesaid agreement.
Nothing appears to have been done regarding the story or the copyright until November, 1923, when William R. Fraser, an uncle of Harold Lloyd and secretary and general manager of. Harold Uoyd Corporation, arranged a meeting of Witwer and Lloyd at the latter’s motion picture studio. The three men went to lunch together for the purpose of discussing the prospect of having Witwer write a story for a picture that Lloyd was to *30make later. Lloyd was then producing other pictures and was so occupied almost continuously until August 9, 1924. Witwer, at luncheon, told about having written a football story some time before and stated that he had the magazine in which it was printed. He asked Lloyd if he would like to read it. Lloyd said that he would and invited Witwer to dine at his home. Witwer brought a copy of the magazine, containing the story, to Lloyd’s house on November 16, 1923, the evening of the dinner, and gave it to Lloyd for the purpose of examination by him in order that it might be determined whether Witwer would write the story for a college picture that Lloyd had contemplated making. They discussed the Witwer story, but there is no direct evidence that Lloyd at any time that evening or afterwards read it. He testified that he had never read it. The opinion of the trial judge acquits Harold Lloyd of any knowledge of plagiarism, although the findings and decree of the eourt below contain no such express determination.
Mrs. Witwer testified, however, that, the day following the dinner, Fraser telephoned to her that Lloyd had read the story, and that Lloyd wanted Witwer to come over to the studio to discuss it, and that Witwer went over that day.
Lloyd testified that when he received the magazine on November 16, he laid it on a chest in the hall of his home and a few days later went to get it, intending to read it, but it was not there.
Within three or four weeks after the dinner at Lloyd’s home, John Lj. Murphy, production manager of Harold Lloyd Corporation, telephoned to Witwer and asked him to come to the Lloyd studios to meet Sam Taylor, who was (a writer) in charge of the scenario department and was to be a director of the prospective college picture, to discuss changes in the story. Mrs. Witwer further testified that she accompanied her husband to the studio at that time and waited outside for about an hour while Witwer was inside. Taylor testified that before production of the picture Lloyd told him the idea of the Witwer story. Taylor, later, at the request of an attorney representing the plaintiff, some time before the trial, made a statement that Lloyd, before production of the picture, had handed him the story for reading, and that he had discussed with Lloyd and Murphy the purchase of the story. At the trial he testified that the statement was a mistake, that Lloyd had merely told him the Witwer story. The trial eourt found that prior to June, 1924, •and before production of the picture, Lloyd related to Taylor parts of Witwer’s story. “The Emancipation of Rodney,” and that at all times since November 16, 1923, defendant Harold Lloyd Corporation, officers, agents, and employees of it, were fully informed and had full knowledge concerning the story, its contents, and subject-matter. Some time during July, 1924, Mrs. Witwer asked Fraser for the return of the magazine containing the story that Witwer had delivered to Lloyd. Fraser told her it had been lost; that he would look for it around the studio, and in a few days called Mrs. Witwer and told her that he had “hunted” for it all over the studio and exerted every effort to get it, but had been unable to find it anywhere. Murphy also told Mrs. Witwer in July, 1924, that Fraser had spoken to him about the magazine, and that he had looked for it around the studio and in Lloyd’s dressing room, but was also unable to find it. Physical preparation for making the picture started on August 11,' 1924, and until October 13, 1924, the day that actual photographing commenced, Lloyd, Taylor, Murphy, John J. Grey, who appears to have been a scenario writer or “gag” man, as he was called in the Lloyd organization, and other members of the Lloyd organization, planned, diseussed and arranged for the actual making of the picture. All of these witnesses and every other person who had anything to do with making the picture testified that he had not read the story before production of the picture. There was no scenario synopsis of the picture prepared, but, as the result of their conferences and discussion, a general typewritten outline of the picture was made by Taylor, the chief director, and was used during the making of the picture. This consisted of a succession of sequences into which thereafter and during the'actual “shooting” of the picture the funny episodes or “gags” would be developed and interspersed in the picture. This outline consisted of eight or tfen double-spaced pages of typewriting. There were several copies of it. The director Taylor and others also made additional rough notes' in their handwriting of sequences of the proposed picture as the work progressed. The plaintiff made demand for the production of these writings in the eourt below, but none of them or any other writing, note, or memorandum relating or referring to or containing any part of the story or the picture was produced.
On September 27, 1924, and as the result of the conferences that had been going on between Lloyd, Taylor, Murphy, Grey, and *31other staff members of the Lloyd organization, a story for the picture was substantially agreed upon and reduced to the Taylor written outline to which I have already referred. This was about six weeks after actual material preparation for the picture had commenced and approximately two weeks before photographing of scenes of the picture occurred.
On that day, Lloyd, Taylor, and Murphy decided to have Witwer come to the studio. It is not clear as to just why Witwer was asked to come to the studio on this day. However, he came and an interview between the four men took place in Lloyd’s dressing room. Lloyd asked Witwer to tell his story, “The Emancipation of Rodney,” to Taylor, but Witwer was in such a befuddled condition that his effort to coherently discuss either the proposed picture or his story was fruitless, and the meeting there lasted only a few minutes. It is clear, however, that at that time he did at Lloyd’s request sketch to the group his story and did actually intelligently relate at least one episode of it. Murphy, after this meeting, accompanied Witwer to a place where more liquor was obtained and where further general talk about the story and the sale price of it was attempted by the two men, but without anything being accomplished.
The following week, and about October 4, Murphy again telephoned Witwer’s home and asked him to come to the Lloyd studio and sent a rented automobile to bring him there. Upon his arrival, Murphy, Taylor, and Wit-wer discussed the proposed picture, and Taylor told Witwer the outline of it that he had prepared up to that time.
Lloyd was not present at this second meeting with Witwer, but had discussed with Taylor and Murphy the advisability of arranging it before any photographing of the picture commenced. Taylor testified that the purpose of this meeting was to avoid any infringement action which Witwer might bring against the Lloyd Corporation for any use of his material in the picture. At the conclusion of Taylor’s presentation of his outline of the prospective picture Witwer, according to the testimony of Taylor and Murphy, stated that the story of the picture, as disclosed by Taylor, was nothing -like his stray, in fact, that it was better than his story, and that, if they (the Lloyd organization) wanted to use any of the “gags” of his (Witwer’s) story, they “were perfectly welcome to do so.”
The trial court found that Taylor related some parts of the picture to Witwer on October 4, 1924, but did not then or at a11 fully state or describe to him the photoplay “The Freshman,” or the form or content thereof. The court also found that defendants were not misled by Witwer and would have produced the picture regardless of anything that Witwer said to any of them or their agents or employees, and that defendants did not rely upon any statement made by Witwer to Taylor or Murphy.
The defendants submitted the testimony of all of those who worked on the picture during the actual photographing of it. This testimony was substantially that the picture was planned and produced without any attempt at plot, and, although the outline was prepared before actual photographing commenced, it was general and by no means complete, and the picture was developed as the physical action of production took place and without reference to or use of the Witwer story in any manner.
The photographing or “shooting” of the picture was completed on March 27, 1925, and, as already stated, the picture was first publicly exhibited about September 12,1925.
On October 2, 1925, attorneys for Witwer notified Harold Lloyd Corporation in writing that the picture was a plagiarism of the story, and demanded that steps be taken by the corporation to stop the showing of the picture and also demanded an accounting of all money received by reason of the distribution and release of the picture. This notice was directed solely to said corporation and no notice of any kind was given any other defendant prior to the filing of the bill of complaint in the court below on April 11,1929.
On December 26, 1925, Witwer brought some kind of an action in the superior court of Los Angeles county, state of California, relating to the production and exhibition of the picture, but the record is silent as to the character of this action or all defendants named therein. It does appear that the pleadings in the state court action alleged that Witwer was not the owner of the story at that time. This state case was not further prosecuted by Witwer, and it was dismissed a few days before this suit was commenced in the court below.
The defendants continued to distribute and exhibit the picture without further interference until the filing of this action on April 11, 1929, over three and one-half years from the first public exhibition of the picture and also that length of time from the notice of plagiarism.
The right of Witwer to institute and *32maintain this suit for infringement of the copyright of the story was originally based in the bill of complaint solely upon a written assignment of the copyright made February 13, 1929, by the then sole legal owner and holder of it to Witwer. During the trial, the plaintiff changed the theory of the action, and over objections of defendants introduced the testimony of the oral trust of November, 1919, and claimed equitable ownership in the copyright for motion picture rights from that date. She was also allowed; over objections of defendants, to amend the complaint by claiming such equitable ownership of the copyright for 1919, and the findings and decree of the trial court sustain her right to recover upon the 1919 trust theory as well as under the assignment of February 13, 1929. The complaint alleged infringement of the copyright of the Witwer story, not only by production and exhibition of the picture, but also by the publication and sale of a certain novelization of the picture written by Russell Holman and distributed to exploit the picture. The opinion of the trial judge states that he did not consider this novel as an infringement of the Witwer story, and the findings of fact merely state that it was received in evidence, and that it partly follows the dramatic action of the picture. There is no specification in either the opinion or the findings as to what part of the dramatic action of the picture is held to have been described or followed by the novel, and the interlocutory decree contains no reference to the novel or determination that it infringes the story. The findings are complete and comprehensive, and it is unnecessary to mention them in detail. It is sufficient to state that the court found and concluded that plaintiff was entitled to the interlocutory decree: That Witwer as assignee of the copyright properly maintained the suit for infringement, and that defendant Harold Lloyd Corporation, its agents, officers, and employees, after full notice and in disregard of the rights of Witwer, did deliberately and willfully and without permission, consent, or authorization, use, copy, and appropriate the Witwer story, and did reproduce, distribute, and exhibit it in the picture, and the picture, “The Freshman,” copies, uses, appropriates, and incorporates the story “The Emancipation of Rodney” in substantial parts and portions thereof, and that at all material times Harold Lloyd and Harold Lloyd Corporation had full knowledge of the rights of Witwer and proceeded with the production, distribution, and exhibition of the picture in disregard of Witwer’s rights. The court also found that Harold Lloyd Corporation became completely reimbursed for all expenses in connection with production, distribution, and exhibiton of the picture about March 20, 1926. There is no evidence or specific finding that defendant Pathe Exchange, Inc., actually had anything to do with making or producing the picture. The only definite finding relative to such defendant is that it and Harold Lloyd Corporation have presented, sold, leased, distributed, and exhibited the picture and threaten to continue to do so.
The brief of the appellee contains parallels or similarities of language in the story “The Emancipation of Rodney” and in the novel “The Freshman,” and states that, because there is no writing descriptive of the picture, the parallels are used and should be considered on the infringement issue.
Although the novel has been read, I think that these parallels cannot be properly used as a basis of comparison between the story1 and the picture, for two reasons: First, because the novel was stated by the trial court, in the opinion, to not infringe the story, and there is nothing in the findings or in the interlocutory decree determining it to be an infringement of the story; and, second, because, by the findings and decree, it is a silent motion picture that is found to be the infringing entity, and the elements in such picture that are found to be copied are its fundamental theme or story structure, characterizations, and sequence of incidents. There are no findings that the words or verbal arrangement of the titles of the silent picture are copied from the story, and it is clear that they are not. Under these circumstances, the verbal parallels between the story and the novel are no criteria of infringement and cannot be considered.
The picture was exhibited to this court in the presence of counsel for the respective parties on the day that these appeals were argued, and it is from such observation of the picture that comparison with the story is made.
The photoplay consists of several reels and contains thousands of feet of film. It is necessary to see the motion picture in order to observe and fully appreciate the similarities and resemblances between it and the Wit-wer story. I have, however, prepared a description of both story and picture so that I may be able in some degree at least to point out in this opinion the features that I have found to be common to both.
The Story.
“The Emancipation of Rodney” is a “scorn to honor” short story. It opens with *33an introduction in which a venerable colored man, employed as a caretaker of Hieksville College in Hieksville, Iowa, is escorting a visitor through the campus and college buildings. In going through Briggs Hall, a trophy room is entered in which photographs of many of Hieksville’s athletic stars of bygone days line the walls. The visitor particularly attracted by a picture of a tortoise-shell spec-tacled, thin, studious appearing youth in cap and gown, asks who it is and is proudly told, “that, sah, is Mr. Benham, the greatest football player this yere college ever produced.” Expressing doubt that the nonathletic, «esthetic likeness was the one the guide referred to, the visitor is reassured that he is gazing upon Hieksville’s greatest gridiron star.
The story then leads into the development of its theme and reveals to the reader how the hero, Rodney, came to emancipate himself from obscurity and scorn to popularity and esteem, substantially as follows:
When Rodney entered college his scholastic appearance deceived faculty and students. The former observed him as “a shining light that would startle the world with its intellectual brilliancy,” when the latter saw nothing more than another “grind” who would meet the faculty’s estimate, but who would “tell” if he were hazed.
He .was a “grind” unwillingly, because, notwithstanding his erudite bearing, he found learning difficult, and only by hard study was he able to pass the easiest examinations. His burning desire was to belie appearances and be regarded as dull in the classroom, and his greatest ambition was to be a popular college athlete and to be called by the nickname "Rod" instead of being addressed as “Mister Benham,” but his desired appellation was about as appealing to his fellow students as addressing the college president as “Doe” would have been.
In order to personify his sportsmanship desires, he outfitted and attired himself in athletic garb, bought, kept in his room, and studied numerous sporting publications, memorized the slang of “fans,” and in the security of his room he would pace in front of the mirror orally emitting such ejaculations as “He’s a bonehead,” “Knock him out, kid,” and others to the plaudits of imaginary crowds.
On one occasion during his freshman year when unconnected w'ith any varsity sport he •had inscribed a big capital “H” in red ink on the bosom of his “X. Y. Z.” underwear and had gone to a photographer and had his picture taken in this simulated athletic uniform. This photograph he kept buried in the bottom of his trunk, and every night before retiring he would resurrect it and secretly admire it.
About a month after entering college, Rodney, one Sunday afternoon, concluded to “squander recklessly somewhere off in the open country surrounding Hieksville.” He bought five metropolitan dailies in order to get the latest complete sport events and supplied himself with several boxes of candy labelled “Greatest Thing in the World for Sportsmen and Athletes.” In imitation of the correct pace for a marathoner, according to his “Athletic Manual,” he jogged along the country road, but after covering a short distance he had to stop from sheer exhaustion. Seeing an attractive field in which to rest, he laboriously climbed the road fence and “deposited his tired form under the first tree.” After reading all of the sporting sections, he arose, took off his hat, coat, and vest, and took from his hip pocket a small book entitled “How to Box,” and for the next fifteen minutes he administered to his imaginary opponent, a tree, what according to the book was a “terrible lacing.” Shortly after this contest he produced a memorandum book and wrote in it: “Boxing fifteen minutes.”
Another athletic venture seized him, and, surveying the locality to make sure he was unobserved, he removed his trousers and proudly stood forth in the abbreviated athletic suit in which he had been photographed. Thus regaled he attempted to clear a nearby fence, and at the fifth trial he triumphed, stumbling awkwardly on the other side. He heard a giggle and saw a few feet away “the most beautiful being Rodney had ever seen.” He was greatly fiustrated, abashed, and embarrassed, and ran for the tree where he had left his clothes. In his confusion it was with difficulty that he finally attired himself. The girl introduced herself as Alice Campbell and opened a conversation with Rodney that showed sympathy and interest both in his athletic propensities as well as in him personally. It was evident that this first meeting was mutually attractive and the sympathetic attitude of Alice encouraged Rodney to tell her a story of unreal athletic accomplishments.
That night Rodney in the quietude of his room recounted the romantic events of the day and regretted his boastful stories to Alice because of her attractiveness and also because he realized that he would be required to demonstrate his athletic pretentions to her in the approaching sports season at Hieksville. *34She, while not a co-ed, was a frequent visitor at the college, as her father was a professor there. '
Rodney annoyed and exasperated the college coaches for the next two months hy his insistence for “a chance” to demonstrate his athletic ability. They ignored this inexperienced “dub” who had bought for, himself a uniform of each particular sport mentioned in the “Athletic Manual.” Finally, to get rid of his generalized demand for recognition, the different coaches matched coins to see who would be exclusively harried by him. The baseball captain lost and had to let Rodney sit on the bench in uniform as an unusable substitute for several games. These efforts to make good with Alice having proved fruitless, Rodney resorted to the deception of bandaging first his arms and then his legs so as to make it appear that he was disabled and therefore unable to participate in the season’s college athletics.
One day, however, the truth was revealed to Alice, and she “saw a great light.” A track meet with Hieksville’s bitterest rival was scheduled for the following day and Rodney had to display some kind of an injury to explain his inability to appear in the contest. He hastily bandaged his left arm and anxiously went to meet Alice whom he saw coming into the campus. She greeted him cordially and then glancing at the bandaged arm sympathetically asked if the other one was better. Rodney had forgotten that he had displayed a bandaged right arm the day before, and, being caught in his deception, he blushed, and, by his silent confusion, confessed to her his fake personation. This incident caused a decided coolness and indifference by Alice toward Rodney. It likewise disclosed to Rodney his pseudo life and prompted him to forego athletic pretense and to devote himself naturally to things. He nevertheless still ardently desired to restore himself in the confidence of Alice and to make himself popular so that his fellow students would affectionately call him “Rod.”
A crisis in his life was reached, however, when he learned that Jack Niles, captain of the football eleven, had taken Alice- to a fraternity hop. He locked himself in his room, analyzed his career, found it fictitious, and firmly resolved then and there to change it. He took from the trunk his picture in the improvised athletic suit with the big crimson “H” on his shirt and tore it up, then he also tore up all the sport manuals and the memorandum book in ‘which he had cheeked his daily exercises, wrapped the fragments in a newspaper and burned all in a secluded corner of the campus, kicked the ashes to the winds, and defiantly walked to Briggs Hall where he assured himself that a notice that he had seen Captain Jack Niles put there in the morning was still posted. This notice was an invitation to all who wanted a chance to get in the game with Gratton University to report that afternoon.
Rodney, fired with his resolution, hurried off to report.
It was just before the final period in the Hicksville-Gratton annual football game that the coach of Hieksville was berating his charges for their playing “with an eloquence that would have won any other cause and brow-beaten them until Simon Legree would have appeared a well mannered man by comparison.” The score was Gratton 9, Hieks-ville 3.
Upon resuming play, Hieksville by a successive play of a forward pass, line plunge, and end run carried the ball some distance into Gratton territory when their strong defense made further Hieksville advance seem hopeless. Then Wainright, the quarterback, signaled for a kick, which, however, was blocked by Gratton. This unsuccessful play resulted in Wainright’s recovering the ball for Hieksville, but in it he sustained injuries that necessitated his being carried off.the field and out of the game.
Rodney had been seated on the players’ bench with an unused substitute. He approached the coach and was about to speak to him when the coach roughly interrupted him, saying, “Heh? Oh, I can’t bother with you now. We’ve got four minutes to go, man, and. * * * ” Rodney’s diffidence changed to defiance. He snatched a nose guard from a substitute and swinging the coach around to face him rapidly exclaimed, “Somebody has to go in there! I know the signals; I’ve studied them for weeks; let me go in for Wainright and I’ll work a play that will beat them!”
The coach acquiesced, and Rodney ran out in the field and entered the game to the wonderment of the rest of the Hieksville team. He was so excited that he forgot the signals. He knew no winning or other kind of a play, and he used the pretext of knowing a play simply to get his chance to show his stamina and attain his popularity. “Come on, you dub! What’s the matter? We haven’t got all day,” coming from his teammates cleared his head enough to cause him to remember a signal for “pass the ball,” which he called, and to the amazement of the *35rest of the team he took the pass from center and without regard to his interference ran with the ball in an unusual and improbable manner to the Gratton’s one-yard line where he was tackled, but “with a last convulsive wiggle of his tortured body, spat dirt from his mouth and wormed his way over the goal line, dragging the Gratton tackle with him.” The try for point kick was successful and the game was won. Just as the score, Hieks-ville 10, Gratton 9, was shown, Alice Campbell turned to her escort saying, “Didn’t I tell you Rod would do it?” She excused herself to her escort, and, stepping “to the edge of the box” with “a dreamy look in her eyes” said: “I — I want to congratulate Rod!”
The story closes in a classroom of Hieks-ville College two days after thé football game. A group of students passing outside stop in front of an open window and one of them shouts, “A locomotive for Rod.” Rodney is the center of admiration of the students and is affectionately hailed by them as “Rod.” His ambition had been realized and a moment later his twin desire to be considered dull in class was achieved when he stood up upon being asked a question by the professor and answered, “Search me.”
The Picture.
The silent motion picture “The Freshman” is designed as a vehicle to convey to an audience the comical youthful pranks and antics that characterize all the cinema productions of Harold Lloyd.
The picture opens with a scene in the home of Harold Lamb (played by Harold Lloyd), a boy of college entrance age who has earned and saved $485 for spending money at Tate College which he is about to enter as a freshman. His parents are discussing his thrift and effort to go to college. Mr. Lamb settled himself for an evening of comfort before a radio receiving set. Harold, a nonathletic appearing youth, is pictured upstairs in his room alone dressed in athletic attire with a red block letter “T” on the bosom of his white sweater, wearing tortoise shell spectacles standing before a mirror with a megaphone and vigorously sending into it college yells to an imaginary concourse. His room is very collegiate in appearance. Pen-ants, football, tennis racket, college song and yell literature being displayed therein. His father hearing the yells at first thinks that it is static in the radio and later believes that he has -picked up China when recognizing his son’s voice he attempts to hide his embarrassment from Mrs. Lamb and goes upstairs to investigate. In Harold’s room a poster is hung on the door showing a popular motion picture actor, Lester Laurel, with the title, “I’m just a regular fellow. Step right up and call me Speedy.” Harold copies the title in a small notebook. He sits on his bed and glances at an athletic manual, then opens the “Tate Yearbook 1924” to a page showing the picture of Chester A. (Chet.) Trask, the most popular man in college. As Harold looks, Trask’s likeness fades and Harold’s picture appears in its place.
Mr. Lamb enters the room. Harold rises, goes through a comical little jig step that he has learned from Lester Laurel, and that he thinks will be a means of popularizing himself at Tate College. The father turns to go and meeting Mrs. Lamb he gives a clumsy reproduction of the jig step and opines that if Harold imitates the actor at college he will surely meet disaster.
The opening of the fall term at Tate University is then pietorialized by. showing the stadium and buildings as well as the campus and many boys and girls arriving at the college railway station. A large automobile draws up to the depot and a pompous gentleman alights. He is the dean of the college and is described as “so dignified he never married for fear his wife would call him by his first name.” A college cad is shown bullying newly arrived freshmen, and a title describes him as “an upper class bully who made Simon Logree look like a good Samaritan.”
Peggy, the principal girl character in the picture is then shown for the first time. She is returning by train to her home in Tate and is seated in the well-filled diner of “The Tate Limited” working out a cross-word puzzle while waiting for her meal. Harold enters the ear still clad in his collegiate dress with the unearned block letter “T” on his sweater. He is seated at a table opposite Peggy. He observes her trying to solve the puzzle, and thinking that he can tell her the word she is wanting, but having never met her before, he hesitates to do so until he is reassured by her smile. He then submits several endearing words such as “Dearest,” Sweetheart,” and is overheard by a kindly looking elderly lady sitting near who thinks he and Peggy are lovers and who is represented as saying to them: “Isn’t it wonderful to be in love.” Harold is illustrated, embarrassed, and abashed and runs down the aisle, in his confusion upsetting a colored waiter with a tray, of dishes.
The train reaches the college station. Harold is on the platform heavily laden with golf bag, tennis racket, fencing foils, ukelele, and suitcase. He is a stranger. Peggy gives *36him a friendly wave as she passes, but otherwise he is unnoticed until his comical appearance attracts the attention of the college cad who decides to play a trick on him. In the meantime, Harold has moved near a standing passenger car and a man puffing his pipe throws a lighted match out of the car window. It falls on Harold’s sweater which starts to blaze. The smoker leans-out of the car window and slaps Harold on the back to extinguish the blaze. Harold thinking it is a cordial greeting bestows a similar slap on the back of a gentleman standing near him who turns and indignantly informs Harold that he has saluted in this all too familiar fashion none other than the “Dean of this College.” Turning away embarrassed, Harold bumps into the cad who asks him if he has been assigned to a car to take him to the college. Harold, responding negatively, is directed to the dean’s car that is parked nearby. As the cad disappears the colored chauffeur dozingly obeys a direction to go without noticing the identity of his passenger. The dean, who has been leaning against the rear fender, tumbles into the street in irate astonishment as his ear starts away with Harold in it.
The automobile draws up to the stage entrance of “Tate Auditorium” for the annual address of the dean to the student body, and to the surprise of the chauffeur Harold alights with his would-be athletic paraphernalia. He enters the stage door and is sympathetically attracted by a mother cat crying for her kitten that has become stranded on a board over the stage. He climbs a pedestal and rescues the kitten, but as he is alighting with kitten in hand the cad raises the curtain and Harold is seen by the entire student body in a laughable position. He walks off the stage, but is told by the cad that he should make a speech unless he wishes to be the most unpopular man in college. He yields to this warning, and, nerving himself, walks out on the platform, fumbling with a fencing foil, he gets an electric shock from an empty foot-light socket, and begins a ridiculously meaningless speech which the picture intersperses with funny incidents with the kitten that in Harold’s consternation he has shoved up under his sweater. He finally looks at the small notebook and concludes with the declamation that he had learned from the actor, Lester Laurel, amid tumultuous applause from the students. He is met back stage by a group of students who all address him as “Speedy.”
He is next shown inviting the group to a treat, and, as they proceed to an ice cream parlor, the group invites other students, and the party becomes a throng all treated at the sole expense of Harold.
This foolish generosity has reduced Harold’s exchequer to such an extent that it becomes necessary for him to hunt modest living quarters while at Tate and he is next shown engaging a room at $3 per week in a plain-looking frame house. The landlady, upon showing him the room, apologizes for the newly soaped mirror and windows saying that she would send her daughter up to finish washing the same. Harold’s shirt has been clawed by the kitten at the auditorium. He removes it and starts to mend the torn places. Looking into a clear spot in the mirror he sees Peggy with broom in hand entering the room. They are both agreeably surprised, and Peggy, noticing the needle hanging from the tom shirt, finishes the mending operation.
The college paper “Tatler” is then shown and Harold alone again in his room has eut out his own photograph that appears in the paper with a title “Speedy, the Spender. This frisky Freshman is just a regular fellow who is leaving a trail of empty ice cream cones in his dizzy dash to popularity.” He pins this picture with its caption on the wall under a photograph of Chet Trask, the football hero, and standing before the two pictures he secretly admires them.
Peggy is shown at her work in the checkroom of Hotel Tate. She reads the article in the “Tatler” and has clipped out the picture, cutting off the caption, however. Harold enters the hotel and is surrounded by students who flatter him about the article. He thinks they are sincere and does not appreciate that they are simply making fun of him. While they are talking, Chet Trask appears outside in football togs and all except the cad abruptly leave Harold and flock to the football hero. The cad tells Harold that he can never be as popular as Trask unless he plays on the football team. Harold thereupon manifests his determination to thus attain popularity by bringing his fist down upon a post upon which the dean had unwittingly put his high silk hat. Harold, upon seeing the destruction that his emphasis had wrought upon the dean’s hat made a quick escape, and the dean, putting on the badly crushed hat, comically walks out of the lobby.
Football practice at Tate athletic field is next shown with the rough spoken head coach berating his men and telling them theii lack of fighting spirit. He points to Trask, .observing that he is the only man on the team with real Tate spirit. Harold enters the field *37through a gate unobserved by the coach and in “football togs suggesting a by-gone era” takes a position near the coach that Trask left to open the gate for Harold. The coach, still dwelling upon the athletie ■ qualities of Trask, points to where he thinks Trask is standing but actually to Harold in his obsolete funny togs, saying, “There’s the man to model yourselves after! He’s worth more than the whole bunch of you together.” A player trying to tell the coach that he is praising Harold is shoved away and Harold innocently accepts the unintended laudation. Some one pulls a blanket upon which Harold is standing and topples him and as he falls he clutches the coach for support and upsets him, arousing his ire. Trask saves Harold from bodily harm at the hands of the wrathy coach, whereupon Harold does his Lester Laurel jig, offers to shake hands with the coach, and tells him he would like to play on his football team if he does not mind. The coach disdainfully looks at Harold and inquires if he can ldck a football and hands him one to punt to a man whom the coach sends down the field to receive the kick. Harold beckons the receiver further and further back and attempts the kick with the result that he kicks the ball backward over his own head and over the rear fence. Harold runs out through the gate after the ball which has rolled in front of a dog kennel. A bulldog savagely rushes out and stands guard over the ball. By a clever trick Harold gets the ball when the bulldog slips his collar and takes after Harold who barely beats the dog through the gate. Inside he drops the ball and in his excitement picks up a punching bag that is fastened to the ground that jerks him back as he starts to run to where the team is practicing. Harold then without invitation lines up with the players to practice tackling a dummy. In his turn he dives for the dummy when the man holding the cord to it pulls it away and Harold lands on his face in the saw- • dust pit. He makes three tries with the same result, the third time pulling the coach down with 1dm. The coach, noting Harold’s ignorance and inexperience of the game of football, orders him “to get out and stay out.” Harold backs away to leave through the gate where he encounters the bulldog still ferociously waiting outside. He returns, slamming the gate on the bulldog, and is then utilized by the coach as a dummy for tackling practice by the entire team. Although very roughly handled and almost totally knocked out he has displayed such grit and stamina that upon conclusion of the practice in which he thinks he has been a qualified and accepted player he is patted on the back by the coach, and, as reward for his spirit, Captain Trask and the coach agree to let him stay on the team as water boy while leading him to think he is a real substitute.
Harold goes home from the strenuous “practice” in a taxicab. He is so sore and lame that it is with difficulty that he slowly crawls upstairs. Peggy, who has just overheard the college cad telling other students that Harold has been made a fool of, hurries home from the hotel to tell Harold of her discovery, but before she has a chance to do so he interrupts and proudly informs her, “I have made the team,” and she has not the heart to tell him the truth then. He, limping, enters the room and removes his Tatler picture from its position beneath that of Chet Trask and instead places it beside the football hero. He then reads in the latest issue of the “Tatler” a query as to which student will step forward to be the host this year of the customary Fall Frolic, which event last year had largely contributed to making Trask the most p'opulár man in college. He ponders, walks over to the two pictures, and places his above that of Trask, and later sends out invitations to the student body as host to the Fall Frolic at Hotel Tate. Peggy is shown reading one with an expression of dismay, and students laughingly peruse the invitations and nudge, one another in ridicule of Harold.
Harold orders a suit for the party from a tailor who is afflicted with dizzy spells that delay the finishing of the clothes so that on the night of the ball all the party assembles except “Speedy,” who finally appears after the evening was well under way in the suit that has only been basted on account of the frequency of the tailor’s dizzy spells, and, in order to render emergency treatment to the clothes in case of accident, the tailor, Mt in hand, accompanies Harold to the ball. Then follow comical scenes in the ballroom depicting heroic efforts of the tailor to keep Harold’s clothes on. These scenes culminate in Harold’s trousers pulling apart and falling off while he is dancing with a girl. In great embarrassment and confusion he runs into a telephone booth for shelter, and, seeing a bellboy passing with a suit of clothes over his arms for a guest, he reaches out, takes the trousers and puts them on. The college cad has meanwhile been trying to force his unwelcome attentions on Peggy, who has been witnessing Harold’s plight and discomfort in the ballroom from her check stand in the hotel where she was on duty. Leaning out of the booth, Harold sees the cad trying to kiss Peggy and he rushes at him, knocking him *38down. The cad, ignoring Peggy’s gestures imploring him not to do so, reveals to Harold that the students regard him as “the college boob” and have been “kidding” him ever since he came to college, and, pointing out to Harold students in the ballroom who are ridiculing and mimicking Harold’s jig step and salutation, the cad leaves. Harold vainly tries to affect unconcern to Peggy. He, however, is overcome by the truth of the cad’s revelation, but principally by Peggy’s entreaty for him to throw off pretense and be true to himself by getting out and malting the students like him for what he naturally is and what he can do. A scene then shows a, gust of wind blowing Harold’s picture from its exalted position above Trask’s picture into the wastebasket. Harold’s face shows that he has reached a crisis in his life, and it indicates grim determination to alter himself as well as his conduct and he says “There’s just one ehance left — if I ever get in that big game against Union State, I’ll show them.”
Harold is next seen in football togs seated on the bench near a water bucket and sponge with a Tate substitute beside him. The annual football game between Union State and Tate is on and there are but thirteen minutes left to play, with the score Tate 0, Union State 3. The college cad in the grandstand sneeringly says to his girl companion, “Look at Speedy on the bench — he still thinks he has a chance to get in the game.” Peggy, also in the grandstand with her mother, waves at Harold. During the play members of Tate’s team are injured in rapid succession until the last substitute is put into the game. Other injuries make Harold the only available man on Tate’s bench and only a few minutes to play. Harold, uninvited, starts out to the field but is commanded back by the coach who tells him, “Why, we’ve just been kidding you, — you’re only the water boy.” Harold, dejected, sits down but immediately defiantly gets up and clutching the coach seriously exclaims, “You listen now! I wasn’t kidding! I’ve been working — and fighting— just for this chance — and you’ve got to give it to me! ” The coach ignores Harold’s argument and the referee coming up to the coach tells him that he has had enough time out and to send in a substitute at once or forfeit the game. Harold goes into the game and calls to his teammates, “Come on you old women! Are you afraid of mussing your hair? Don’t you know how to fight?” The ball is putin play, and, as the teams untangle, Harold is unconscious and at the bottom of the heap. He is put on a stretcher but shortly opens his eyes and runs back into the game. Several ludicrous plays follow in which Harold shows utter ignorance and misunderstanding of football. Finally, with one minute left, Harold chases a Union State man to Tate’s very goal line where he downs him. The ball is fumbled, and Harold recovering, it rims madly and humorously the entire length of the field through all the players. He is finally tackled near Union State’s goal, but dragging three tackles with him over the line he makes the touchdown and is seen at the bottom of the pile, sticking his head up and showing his face covered with white chalk just as the gun announces the end of the game. Tate 6, Union 3.
Harold is carried through the crowd on the shoulders of his team mates to the showers. As he passes Peggy, she scribbles a note and hands it to him. A group of students are •shown earnestly trying to learn Harold’s jig step. The picture closes with Harold so intent on reading Peggy’s note “I knew you could do it — I’m so proud. I love you,” that he turns on the shower still clad in his tattered football suit.
The motion picture embodies, colorfully imitates, and reproduces substantial and material parts of the Witwer story that are novel, unique, and not found in the public domain of earlier literature.
Both story and picture relate to, center in, and are built around the same locale and fundamental theme. The locale in each being an American college where football is a major athletic activity, and the basic theme in each being the advantage in life of throwing off artificiality and false personation and being natural. Each has and concerns a similar leading male character or hero, who is called Rodney Hatch Benham in the story and named Harold Lamb in the picture; each hero is a lower class college student who is dominated by an ardent desire to be popular and called by a nickname “Rod” in the story and “Speedy” in the picture; each hero is scorned by the student body and conducts himself not as a normal unpretentious college youth but in imitation of an athlete; each is inexperienced and ineligible for membership in varsity athletic teams, yet each one outfits himself with paraphernalia for participation in various college sports, and, although not on any team as an athlete, each one engages in practice with the teams and causes to be inscribed upon his clothing an unearned block letter; each hero, although actually nonath-letie, carefully possesses athletic manuals and practices athletic yells before a mirror in the privacy of his room, and each one secretly«ad*39mires a picture of himself in pseudo-athletic garb. Each one annoys and exasperates athletic coaches until the persistence of each is recognized by the coach giving permission to him to sit upon the bench of a college athletic team during contests, the result being, that each hero believes he is a substitute player, although every one else knows that he is not and is only being tolerated.
The first meeting of the hero with the principal girl character in both story and picture is accompanied by embarrassment and confusion, on the part of the hero; each hero tells the principal girl character (called Alice Campbell in the story and named Peggy in the picture) his unreal athletic achievements and each one believes that the girl thinks that he is a real college athlete. The girl in both story and picture expresses sympathy with the hero in his athletic protestations and desires and it is largely through the girl in both story and picture that the hero is ultimately brought to a self-analysis as well as to a de- - termination to throw off sham and pretense and be himself — to show his real character and fighting spirit in the major football game of the year with a traditional college rival. This crisis in both story and picture is similarly disclosed.
Each hero persuades an unwilling football coach to permit him to enter the game at a crucial moment, and, although each hero is held in scorn by the team at the time and does not know the signals and is ignorant of how to play football, each hero wins the game in the final moments by running to a touchdown by an amusing and improbable play through the entire opposing team and thereby achieves his ambition to become the most popular man in college and attains the com gratulations and affection of the girl and the hero worship of the entire student body. The major climax in both story and picture is substantially alike.
In the light of the evidence that showed access by some defendants to the story and conferences by some defendants and their agents with the author of the story relative to its contents and use prior to and during the production of the picture by defendants and because defendants failed to produce any manuscript, outline, or other writing of the picture made by them, or to satisfactorily show in the court below the originality of the •picture, I am constrained to believe that the many substantial similarities appearing in both story and picture cannot reasonably be said to have been coincidental or independently conceived by defendants.
There are many discrepancies in the testimony of the witnesses as to the preparations for and production of the picture. There are also sharp conflicts in the evidence as to conversations with Witwer about his story and about the use of it during the making of the picture. The trial court had better opportunity than this court to determine the relative weight and effect of evidence that was given by the witnesses who personally appeared and testified in the court below, and we should not now, in the absence of plain or obvious error, undertake to disturb findings of fact that are made upon conflicts in the evidence. Gila Water Co. v. International Finance Corp. (C. C. A. 9) 13 F.(2d) 1; Easton v. Brant (C. C. A. 9) 19 F.(2d) 857; and Ætna Life Ins. Co. v. Geher (C. C. A. 9) 50 F.(2d) 657.
After a thorough consideration of the evidence and of the two opposing works as a whole, I cannot say that the findings of the trial court that Harold Lloyd Corporation, its' officers, agents, and employees, copied substantial and material parts of the story and used and reproduced them in the picture, are not supported by the evidence.
In considering whether there has been an infringement, the question is: Has there been an illegal copying of a substantial part of a validly copyrighted work, not as a matter of quantity, but of quality and value?
The series of incidents that I have pointed out that are common to both story and picture are not immaterial or inconsequential to the latter. To the contrary, they constitute part of the story structure of the picture. It is true, as will readily appear from reading the two descriptions, that they have been augmented and expanded as well as interspersed with “gags” of independent origin, but these incidents by no means eliminate the common features from the picture. They remain as part, at least, of the central situation and the only effect that the additions have had upon them is to further dramatic effect in the picture. Such changes or adaptation are necessary in the visualizing before an audience of most short stories and do not evade infringement of them as long as a substantial part of the copyrighted story is copied and incorporated in the picture. The Circuit Court of Appeals for the Second Circuit in considering the effect of adaptations of short stories to the stage in Dam v. Kirk La Shelle Co., 175 F. 902, 907, 41 L. R. A. (N. S.) 1002, 20 Ann. Cas. 1173, said: “The statute giving authors of copyrighted works the exclusive right to dramatize them must receive a rea*40sonably liberal application, or it will be wholly ineffective. As we have just pointed out, the adaptation of a story to the stage must necessitate changes and additions. Few short stories could be transformed into dramatic compositions without the addition of many new incidents. Unless the copyright statute is broad enough to cover any adaptation which contains the plot or theme of the story, it is wholly ineffective.”
The picture under consideration in this appeal does not merely take ideas from the story which would be permissive, and not infringement. Holmes v. Hurst, 174 U. S. 82, 19 S. Ct. 606, 43 L. Ed. 904; Kalem Co. v. Harper Bros., 222 U. S. 55, 32 S. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285; Nichols v. Universal Pictures Corp. (C. C. A. 2) 45 F.(2d) 119. It substantially copies concrete forms that were conceived, developed, arranged, and put into shape by Witwer to express the ideas of his story. This is nothing less than the appropriation of the intellectual product of Witwer which is the entity that is protected by copyright law. Dymow v. Bolton (C. C. A. 2) 11 F.(2d) 690. In other words, the literary property that is safeguarded from appropriation does not lie in the ideas per se that are expressed or diffused by literature, but in the particular form in which ideas are embodied in the work of an author when such form is novel and unique.
There is a clear distinction between this case and those where the theme of a story has been so generalized by the author as to include commonplace incidents, historical events, or stock characters, or eases where it has been held that the representation of a spurious event cannot infringe an earlier description of the genuine happening. Compare Barbadillo v. Goldwyn (D. C.) 42 F.(2d) 881; Roe-Lawton v. Hal E. Roach Studios (D. C.) 18 F.(2d) 126. In the story here under consideration, the basic theme of being true to oneself, while old in literature, has been concretely developed and expressed in a way that is sui generis, and in the picture this fundamental theme is pietorialized by the substantial reproduction of Witwer’s concept.
There are many “scorn to honor” stories earlier than “The Emancipation of Rodney” that center about and pertain to college athletic life and that have a romance interwoven in them. A number were introduced in evidence in the court below and have been considered. None of them, however, describe or contain the unique sequence of connected incidents present in the Witwer story and substantially reproduced in the Lloyd picture, and these distinctive and singular series of incidents that were originated by Witwer and uniquely described in his copyrighted story cannot be regarded as common property.
None of the stories or books in evidence contain .or describe the incongruous, paradoxical, illogical situation of a nonathletie boy, inexperienced in football to such an extent that coach and players regarded him as incapable of participating in the game, and yet who, notwithstanding this status and reputation as substitute or regular player, overrides the coach and forces himself into a game, and who, bewildered, confused, forgetting signals, and practically unaided, runs to a touchdown and wins the game, as in “The Emancipation of Rodney.” The fact that substantially the same story structure and series of events is found only in the picture removes any merit from defendant’s argument that this situation consists of standardized forms of college stories and is therefore not original, but wholly within the public domain.
I conclude the discussion on this branch of the appeal with the statement that in my opinion this court should not reverse the trial court on the issue of infringement, but, on the contrary, should find no error in the decree of the court below to that extent.
Coming now to a consideration of jurisdictional questions raised by defendants in their assignments of error and discussed in their first brief, it is clear that plaintiff has modified her position relative to such issues since the trial and decision of this suit in the District Court.
The plaintiff based the right to recover profits from the picture prior to February 13, 1929, upon the asserted oral trust of November, 1919, as well as upon the written assignment of the copyright covering the story that was executed February 13, 1929, and the record before this court indicates that it was upon the existence of a trust relationship between the publishers, Street & Smith, Inc., and the author, Witwer, that the decree awarded pecuniary relief to plaintiff for infringements antedating the assignment.
In plaintiff’s briefs in this court the following statements are made :
“The following is a general statement of our position in regard to the so-called jurisdictional questions raised by appellants in their brief: We contend that the complainant was the copyright proprietor and the owner of all claims for past infringements by virtue of the written assignment of 1929.
“In answer to appellants’ contention, that *41the action can be brought only by the one who was the copyright proprietor at the time of the infringement and that complainant did not enjoy that status, we reply that the right to sue for past infringements was assigned by the written assignment of 1929.
“Since appellee relies squarely on the assignment of 1929, as passing the copyright and all existing rights, including the right to sue for past infringements, it is clear that Street & Smith, Inc., has no interest whatever in the copyright or in this controversy. It follows that Street & Smith, Ine., is neither a necessary nor a proper party to the action.
“We have previously pointed out that the oral trust is not the basis of appellee’s right to recover for such infringements. The written assignment of the copyright ‘together with all rights’ then existing or which might thereafter come into existence, is the basis of appellee’s right to recover and the court definitely so found.
“Appellee is not relying on the oral agreement as an independent source of title. She relies squarely upon the assignment of 1929, pleaded in the. original complaint, which assigned the copyright ‘together with all rights now existing or which may hereafter come into existence, except the right of magazine publication,’ and which thus clearly passed the right to sue for past infringements. She relies upon the oral agreement and resulting trust merely as circumstances, to prove that it must have been the intention of Street & Smith, Inc., when they made the written assignment of 1929, to pass all claims for past infringements. We claim that the language used in the assignment is sufficient of itself but if there be any doubt as to this, we submit that the agreement of 1919 and the.subsequent conduct of the parties, conclusively show such intention.”
These statements of the present position of plaintiff in these appeals are tantamount to an abandonment of the trust theory as a basis for the recovery of any profits antedating the assignment, and this altered situation obviates the necessity of any discussion of the following points in the main brief of defendants: (1) That, since Street & Smith, Inc., the legal owner of the causes of action for infringements prior to the assignment of February 13, 1929, is not a party, the court had no jurisdiction over such prior infringements; (2) that, independently of the jurisdictional question, Street & Smith, Inc., as trustee of the alleged oral trust, is an indispensable party; (3) that the period of the statute of limitations should be computed from July 9,1930, the date of the amendment to the complaint introducing the trust, because that amendment brought in a new cause of action; and, (4) that the refusal of the trial court to grant a rehearing for consideration of new evidence bearing on the alleged trust of 1919 was an abuse of discretion. If it were not for the modified position of the plaintiff, I would consider it imperative to discuss these points and especially 1 and 2, on account of their importance in this suit.
We are therefore brought immediately to the question as to whether or not the assignment of February 13,1929, from the then sole legal owner of the copyright justified the court below in awarding to plaintiff all profits of the picture for acts of infringement that occurred before the date of the assignment. The general rule is that a copyright may be assigned only by an instrument in writing signed by the proprietor of the copyright, 17 USCA § 42; Publie Ledger Co. v. Post Printing & Publishing Co. (C. C. A. 8) 294 F. 430, and that a mere assignment of a copyright does not ex proprio vigore transfer to the assignee any cause of action for infringements that occurred prior to the assignment.
In other words, before an assignee of a copyright can maintain a suit for infringements that happened prior to the transfer of the copyright to him, the writing that is necessary to constitute him the copyright proprietor must contain clear and explicit language assigning causes of action for prior infringements. United States v. Loughrey, 172 U. S. 211,19 S. Ct. 153, 43 L. Ed. 420.
The assignment in question reads:
“Assignment of Copyright.
“We, the undersigned, in consideration of the sum of One Dollar to us in hand paid and receipt whereof is hereby acknowledged, do hereby assign, transfer, grant and convey to H. C. Witwer of Los Angeles, State of California, that certain copyright taken out by us on the 20th day of November, 1915, registered as Class B, XXc., No. 343424 at the Library of Congress, Washington, title being ‘The Popular Magazine, Volume 38, No. 5, November 20th, 1915, New York, N. Y.,’ together with all rights now existing or which may hereafter come into existence except the right of magazine publication.
“Street & Smith, Ine.,
“By George C. Smith.”
Leaving out of consideration for the moment the question as to whether or not this instrument is sufficient to constitute Witwer the “copyright proprietor,” whose presence *42in any infringement suit is indispensable under the Copyright Aet, §§ 8-25, as amended (17 USCA §§ 8-25-), it is clear that there is no express transfer of causes of action for past infringements in this assignment. It is only because of the clause, “together with all rights now existing or whieh may hereafter come into existence,” appearing in the document, that any claim of a right to recover for past infringements can be made by the assignee. The document is entitled “Assignment of Copyright.” No explicit mention is made in the title of the instrument or in the body of it of any causes of action for infringement. The subject-matter of the instrument is the copyright itself, and the words, “together with all rights now existing,” are used strictly and solely with reference to the copyright itself. -
My attention has not been called to any copyright case in which a similar assignment has been interpreted by the courts, and I have found none by an independent investigation. There are, however, many well-considered patent eases in whieh assignments containing like terms have been judicially considered, and I think that patent cases whieh construe assignments as affecting the assignee’s right to recover for past infringements are applicable in interpreting the scope of this copyright assignment.
In the early case of Moore v. Marsh, 7 Wall. 515, 523, 19 L. Ed. 37, the Supreme Court said: “Grant that these views are correct, and it is clear that unless the plaintiff can maintain the action there can be no redress, as it is too plain for argument, that a subsequent assignee or grantee can neither maintain an action in his own name, or be joined with the patentee in maintaining it for any infringement of the exclusive right eom7 mitted before he became interested in the patent. Undoubtedly the assignee thereafter stands in the place of the patentee, both as to right under the patent and future responsibility ; but it is a great mistake to suppose that the assignment of a patent carries with it a transfer of the right to damages for an infringement committed before such assignment.”
See, also, to same effect, Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U. S. 24, 39-41, 43 S. Ct. 254, 67 L. Ed. 516; United States v. Loughrey, 172 U. S. 206, 211, 212, 19 S. Ct. 153, 43 L. Ed. 420; Herman v. Detroit Shipbuilding Co. (D. C. E. D. Mich.) 295 F. 423, 424; Superior Drill Co. v. Ney Mfg. Co. (C. C. N. D. Ohio) 98 F. 734, 735; Gilmore v. Anderson (C. C. N. Y.) 38 F. 846; May v. County of Juneau (C. C. W. D. Wis.) 30 F. 241, 244, 245.
In May v. County of Juneau (C. C.) 30 F. 241, 244, whieh decision was later affirmed by the Supreme Court in 137 U. S. 408, 11 S. Ct. 102, 34 L. Ed. 729, the District Court, in construing a patent assignment as follows: “All the right, title, interest, claims, and demands whatsoever whieh the estate of said Edwin May, deceased, has in, to, by, under, and through the said improvements, and the letters patent and extensions thereof therefor aforesaid * * * ” said: “The question is whether this assignment carries with it the right of action for infringements of the patent while Edwin May was the sole owner; and it seems clear, on principle and authority, that it does not. The language used, refers only to the then present and future interest in this patent, and cannot be construed to cover rights of action whieh accrued to the patentee for infringements during his lifetime.”
In a later ease, United States v. Loughrey, 172 U. S. 206, 19 S. Ct. 153, 155, 43 L. Ed. 420, the Supreme Court cited May v. County of Juneau, supra, with “approval, saying: “Neither a deed of land nor an assignment of a patent for an invention carries with it a right of action for prior trespasses or infringements. Such rights of action are, it is true, now assignable by the statutes of most of the states, but they only pass with a conveyance of the property itself where the language is clear and explicit to that effect. 1 Chit. Pl. 68; Gardner v. Adams, 12 Wend. [N. Y.] 297, 299; Clark v. Wilson, 103 Mass. 219, 223 [4 Am. Rep. 532]; Moore v. Marsh, 7 Wall. 515 [19 L. Ed. 37]; Dibble v. Augur, 7 Blatchf. 86, Fed. Cas. No. 3,879; Merriam v. Smith [C. C.] 11 F. 588; May v. Juneau County [C. C.] 30 F. 241; Kaolatype Engraving Company v. Hoke [C. C.] 30 F. 444.”
I think that the language in the eases just referred to is more suggestive of a transfer of causes of action for past infringement than the wording in the assignment of February 11, 1929.
Plaintiff contends, however, that, if it be held that the general language used in the assignment is uncertain and not sufficiently clear and definite to transfer to Witwer causes of action for infringements prior to February 11, 1929, then, by resorting to the asserted oral agreement between Witwer and MaeLean in November, 1919, and a written declaration of trust executed by Witwer about March 1,1929, the intention of the par*43ties to the assignment to transfer such causes of action will clearly appear. Assuming that evidence dehors the assignment should be considered, I think that the evidence that we are referred to by the plaintiff cannot change the conclusion that the assignment does not and was not intended to transfer to Witwer any cause of action for an infringement of the copyright prior to February 1,1920.
. I have early in this opinion mentioned the fact that the only evidence establishing the November, 1919, agreement between Witwer and MacLean in which it is claimed that the equitable right to the story was vested by Street & Smith, Ine., in Witwer was the testimony of the plaintiff, Mrs. Witwer. It was given entirely from memory ten years after the conversation between the two men took place. Coming completely as a surprise to defendants, they could not rebut it during the trial, but correspondence between Witwer and his attorneys with Street & Smith, Inc., at about the time when it is claimed the oral trust was created, as well as just before and some months after the assignment was obtained, that was subsequently discovered by defendants in New York and used by them on thé petition for rehearing in the court below, and that is in the record before us, but that I do not consider necessary to set forth in this opinion, is at such variance with Mrs. Wit-wer’s testimony concerning the time and terms of any agreement between Witwer and Street & Smith, Ine., concerning any retrans-fer by the publishers to Witwer of stories that he had sold to them, that no certainty exists relative to any such agreement. Under these circumstances the claimed agreement does not elucidate or clarify the terms of the assignment of February 13, 1929. And less helpful to the construction of the assignment contended for by plaintiffs is the declaration of trust executed by Witwer about Mareh 1, 1929, and the circumstances surrounding its execution. The genesis of this instrument is interesting. On February 13, 1929, the then attorney for Witwer called on Street & Smith, Ine., in New York City, and obtained from them the assignment. The document was prepared by this lawyer. No other document was executed at that time. The day following, Street & Smith wrote a letter to the attorney addressing him in New York, and also telephoned to him there. In the letter they stated:
“In looking over the copy of the assignment of copyright which was handed to you yesterday, which was intended to convey to Mr. Witwer the copyright in his story, ‘The Emancipation of Rodney,’ which was published in the Popular Magazine for November 20, 1925, we find that the title of this story was not mentioned, but simply the Popular Magazine.
“As the intention was, of course, to convey to Mr. Witwer only the copyright covering his story, please return the two eopies of assignment, and we will give you corrected eopies at once.”
The attorney did not return the assignment. He brought it to Los Angeles, Cal., and on Mareh 1,1929, in Los Angeles, wrote to Street & Smith, acknowledging receipt of the corrected assignment that they sent on February 14th, stating in his letter:
“The Assignment of the entire issue of the Popular Magazine published November 20th, 1925, was sent by me to the copyright office in Washington for recordation immediately after its receipt by me on February 13, 1929.
“After consulting the authorities, I am convinced that any -lesser assignment might seriously jeopardize my client’s rights to recover for infringement, because a copyright is not divisible and it is doubtful whether the assignment of a portion of a copyright is valid for any purpose.”
The attorney inclosed with this Mareh 1st letter the declaration of trust. The evidence shows that the assignment obtained by the lawyer on February 13, 1929, was sent from Los Angeles to Washington for recordation by another attorney on March 2, 1929, and that it was received for record in Washington on Mareh 7, 1929. It is clear from the circumstances and correspondence surrounding the execution of this declaration of trust that it was conceived solely by Witwer’s attorneys subsequent to the assignment, and that it was entirely a unilateral instrument. If any light whatever is shed upon the assignment by these subsequent circumstances, it is clearly to the effect that Street & Smith, Ine., intended to assign nothing but the copyright itself, and that only to a limited extent.
I think the assignment was sufficient to constitute Witwer the “copyright proprietor” subsequently to February 13, 1929, so as to invest him with the right to maintain suit for infringements occurring after that date without making Street & Smith, Inc., a party to the action. The reservation in the concluding words of the assignment, “except the right of magazine publication,” retained in the assignor rights of a mere licensee, who is, under our construction of the assignment, *44an unnecessary party to the infringement suit. This point is well disposed of by language in the opinion of the learned trial judge as follows: “Had Street & Smith, Inc., conveyed without the reservation, and then had Witwer assigned to it the right of magazine publication, we would have a situation exactly as the parties intended by this instrument, and entirely free of the objection urged by defendants. Why, then, should a similar situation not arise when the result is accomplished by the execution of one instrument instead of two? Suppose Street & Smith had assigned the right of magazine publication to some third party and then executed the instrument omitting the reservation, but with knowledge on the part of Witwer of the prior license, the assignment would then possess in fact the same asserted vice that it does now, but it would hardly be argued that Wit-wer in such a ease would not have the right to maintain the suit for infringement of * * * his copyright in no way relating to magazine publication.” (D. C.) 46 F.(2d) 792, 795.
My final consideration relates to the contention of defendants that the broad award of all the profits of the picture is under the circumstances shown by the record in this case so exorbitant as to be inequitable, and therefore that plaintiff should be allowed in lieu of profits such pecuniary relief as to the court shall appear to be just under section 25 of the Copyright Aet, as amended by Aet Aug. 24, 1912 (17USCA§ 25).
The part of the interlocutory decree that directs an accounting and awards profits requires each defendant to “render a full and true account and pay to the complainant Sadie S. Witwer, as administratrix of the estate of H. C. Witwer, deceased, any and all profits of whatever form or nature and howsoever accrued to or received or derived by each of them, directly or indirectly arising from any source whatsoever through or from or out of the production, presentation, exhibition, sale, lease or distribution of said motion picture photoplay, ‘The Freshman,’ from the 11th day of April, 1926, to the present time.”
My conclusion that the plaintiff has no right to recover for infringements prior to the date of the assignment of February 13, 1929, makes it unnecessary to further discuss the question of the cross-appeal or the monetary feature of the decree that awards to plaintiff earlier profits derived by any of the defendants from the picture. The question for decision on the amount of money recovery is thus reduced to whether or not the plaintiff is entitled to any award of all the profits made by the defendants.
There is no claim by the plaintiff that any actual damages have been sustained or could be proved by reason of the infringement. The bill alleged no such damages and contained no prayer for the recovery of damages.
The sole relief sought by the complainant was an injunction to restrain defendants from infringing the copyright and an accounting from each defendant of all the profits and gains derived from the picture, and that the films of the picture be impounded and destroyed and also for reasonable attorneys’ fees and the costs of suit.
There are admissions in answers of defendants that establish the earnings of large profits from the picture, and the record shows that these profits commenced about six months after the picture was first commercially exhibited. It took that period of time for the receipts from the picture to recoup defendants for the cost of the picture that amounted to more than $330,000.
Plaintiff claims that, because no damages are sought or desired by her, and that only profits have been shown, a court of equity is circumscribed and restricted to grant or to deny the specific monetary relief prayed for in the bill, and that, inasmuch as an injunction restraining infringement is granted, it necessarily follows in this ease that plaintiff is entitled to all profits from the infringement and cannot be allowed damages in lieu thereof.
Section 25 of the Copyright Aet as far as it is applicable to this case reads: “If any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable : (a) To an injunction restraining such infringement. (b) To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or in lieu of actual damages and profits such damages as to the court shall appear to be just, and in assessing such damages the court may, in its discretion, allow the amounts as hereinafter stated, * * * and in the case of the infringement of an undramatized or nondramatic work by means of motion pictures, *45where the infringer shall show that he was not aware that he was infringing, and that sueh infringement could not have been reasonably foreseen, sueh damages shall not exceed the sum of $100; * * * and sueh damages shall in no other ease exceed the sum of $5,000 nor be less than the sum of $250, and shall not be regarded as a penalty. But the foregoing exceptions shall not deprive the copyright proprietor of any other remedy given him under this law, nor shall the limitation as to the amount of recovery apply to infringements occurring after the actual notice to a defendant, either by service of process in a suit or other written notice served upon him”
It is clear to me from the grammatical construction of section 25, as well as from the plain meaning of words in it, that an equity court is thereby invested with discretion in copyright infringement cases upon granting an injunction to administer sueh monetary relief as appears to the court to be just under the particular facts and circumstances of the suit. This construction of the section is also substantiated when its historical development is considered.
The claim of plaintiff that the “in lieu” clause in the section gives the court power to award a fixed amount only in suits where damages are sought, as distinguished from those where only profits are demanded, is contrary to and ignores the ordinary meaning of the statutory language, “in lieu of actual damages and profits.”
Furthermore, the proposition that a suitor by demanding certain relief in an equity pleading can control the conscience of the chancellor and thereby prevent him from entering the decree that the equities of a case require does not impress one forcefully. The correct principle is aptly stated in David v. McRae (C. C. Wash.) 183 F. 812, 814, as follows: “The court is not restricted in granting equitable relief by the label which the complainant adopts for his pleading, nor by the phraseology of his prayer, but may render a decree for the land of relief appropriate to the facts alleged and proved.”
I think it is unreasonable to conclude that a suitor is to be denied just money relief under this statute simply because he does not in his bill of complaint allege damages, but prays only for an injunction and an accounting of profits. Although profits may be shown to have been received by the infringer, they may be wholly insufficient to discharge the pecuniary detriment sustained by the complainant. On the other hand, and as I think exists in this case, an award of all the profits resulting from an infringement, although the only money relief asked in the bill, may be so disproportionate to the injury to complainant and so excessive in amount as to be inequitable and unjust. It is clear that Congress intended by section 25 to adequately provide for both of these situations and to enable the court to meet the exigencies of each case by the exercise of sound judicial discretion in awarding pecuniary redress to the copyright proprietor in addition to in-junctive relief.
Plaintiff argues that the provision in (b) of section 25, “But the foregoing exceptions shall not deprive the copyright proprietor of any other remedy given him under this law,” makes it mandatory on the court to always award profits to complainant where he asks for them alone and does not seek or show damages. This argument emasculates, if it does not destroy, the important expression employed by Congress earlier in (b) of the section, “or in lieu of actual damages and profits [italics mine] such damages as to the court shall appear to be just.” Every part of the statute shall be considered in arriving at a proper construction of it, and, unless necessary, an interpretation that renders a part meaningless should be avoided. Congress intended to make dear that, while the court in the exercise of sound discretion could fix arbitrary damages in lieu of actual damages and profits, the copyright proprietor shall not by reason of such exercise of discretion by the court be deprived of sueh other remedies as injunction, impounding, and destruction of infringing material, attorney fees, and costs that are provided for in the Copyright Law. 17 USCA §§ 25, 27, 36 and 40. Sueh a construction of the Copyright Act renders all component parts of it effective and eliminates any unnecessary inconsistency in its provisions.
An examination of the history of section 25 discloses that prior to the Copyright Act there was no direct statutory authority for awarding profits to a suitor in cases of copyright infringement of a story by dramatizing it, and not until 1912 were motion pictures and photoplays specifically made the subjects of copyright legislation. It is significant that at the same time that motion pictures were so classified the provisions for fixed arbitrary damages in lieu of actual damages and profits in infringements of undram-atized and nondramatie works by motion pictures were added to section 25. This manifests an intention to deal with infringement *46eases involving motion pictures in a different manner than had been employed with regard to other and earlier infringing instru-mentalities. The differentiation was apparent and necessary, because at that time motion pictures were all silent, and, while a plot or story structure could be plagiarized or pirated by the cinema, it was of an entirely different character than infringements of literary works by the spoken drama. It is reasonable to infer that the national Legislature had these differences in view when it framed the arbitrary damage provisions in section 25 and also made allowances in the section for innocent and unintended infringements by means of motion pictures, and intended thereby to enact a statute that would enable the court of equity to adopt its processes to meet the specific requirements of concrete eases independently of the precise demands of suitors.
The plaintiff cites the case of Dam v. Kirk La Shelle Co. (C. C. A. 2) 175 F. 902, 41 L. R. A. (N. S.) 1002, 20 Ann. Cas. 1173, to the point that the trial court had no discretion, and that an award of profits by it was a necessary incident to the injunction granted in the court below. The Kirk La Shelle Case was decided in the trial court before the passage of the present section 25 of the Copyright Act on March 4, 1909, and at a time when the statutes contained no such provisions as they now contain authorizing the court to award a fixed amount in lieu of actual damages and profits. All of the earlier suits in which profits had been allowed were brought under general equity jurisdiction and in accordance with the historic methods of chancery courts (Belford v. Scribner, 144 U. S. 488, 12 S. Ct. 734, 36 L. Ed. 514; Callaghan v. Meyers, 128 U. S. 617, 9 S. Ct. 177, 32 L. Ed. 547), and cannot be made applicable to this suit which was brought under the express authority of a statute that invested an equity court with plenary power to exercise discretion in awarding fixed damages in lieu -of actual damages and profits. The inapplicability of Dam v. Kirk La Shel-le Co. to this suit is clearly shown by the statements in • the main opinion of Judge Noyes in that ease as follows: “Unless the complainant is entitled to all the profits arising from the production of the play, she is, as a practical matter, entitled to no pecuniary recovery at all. * * * If in a case like the present an author can not hold the theatrical company as his trustee and accountable for all the profits from the play, then it necessarily follows that all copyrighted but undramatized books and stories may be appropriated and used with impunity.”
Such a condition suggested by Judge Noyes is no longer possible, because by the express terms of section 25 substantial pecuniary relief is provided for, although profits are disallowed and no actual damage can be shown.
In Turner & Dahnken v. Crowley, 252 F. 749, 754, this court was reviewing an award of damages made by the trial court under the second paragraph of (b) of section 25 of the Copyright Act which provides for a fixed allowance of $1 for each infringing copy of a song that is made by, sold, or found in an in-fringer’s possession. The complaint asked for an injunction, profits, and damages. It was proved that a copyrighted song had been infringed and 7,000 infringing copies were found in the possession of the infringer. The complainant was awarded $7,000 or $1 for every infringing copy. In reversing the decree the court said: “Appellee offered no proof of actual loss or of profits, but we gather from the testimony that at a retail price of 15 cents a copy for the song the profit to the plaintiff would not have exceeded 8 cents per copy. If, therefore, the plaintiff had received 8 cents per copy upon 7,000 copies found in the possession of Turner & Dahnken, her total damage would have been $560, which we think would be a fair estimate. Plaintiff said that she expected and authorized orchestrations of her song to be used, but did not authorize use of it as made by defendant. The allowance of $7,000, or $1 per copy of the song and music, seems to have been based upon the view that $1 per copy is a fixed sum, to be allowed under any circumstances of infringement after notice. But, as we do not so construe the law, the duty of the court was to award damages as justified by the nature and circumstances of the ease as developed upon the trial.”
The principle of Turner & Dahnken v. Crowley that the trial court has discretion under section 25 to make an award commensurate with “the nature and circumstances of the case as developed upon the trial” is applicable to this suit, notwithstanding that the demand of plaintiff is solely for profits instead of other monetary solace as an incident to the injunction.
My conclusion is that, under all the facts, circumstances, and equities of this case, any award of all the profits is inequitable and should not be allowed to the plaintiff. Although I agree with the court below that the *47picture copies material and substantial parts of tbe story and thereby constitutes infringement, I do not think that one is the counterpart of the other; in fact much of the value and merit of the picture has no relation whatever to the story, and many of the episodes and sequences in the picture are in no way suggested by Witwer in the story.
The personality of Lloyd; the radio scenes in the Lamb home; the Lester Laurel episode and the recurring jig step; the crossword puzzle scenes; the station sequences; the automobile incidents; the auditorium scene with eat and kitten; Harold’s speech; the ice cream treat sequence; the scenes of Peggy sewing on buttons and at the hotel; the football practice scenes with their bulldog, tackling dummy, and comic appurtenances ; the purchase of the dinner suit; the tailor and dizzy spells; the cad’s unwelcome attentions to Peggy and the fight between Harold and the cad; the stretcher scene at the football game, as well as many other “gags” that are interspersed throughout the picture, have no possible relation to or connection with the story. It is true that the independently conceived portions of the picture are inextricably intermingled with the infringing material from the story so as to make impossible any segregation of it; nevertheless, consideration of the great amount of original matter in the picture should be had with other matters that will be presently mentioned in estimating the monetary relief to which the plaintiff is entitled.
The dormant and dilatory attitude of Witwer himself is a powerful reason for denying to him an award of all the profits of the picture. He knew at least several weeks before actual photographing of the picture commenced that the Lloyd organization was planning to make a college picture similar to his story at great expense. He had given them permission to use “gags” of his story that he had told him in making the picture, and, while it is true that immediately after the first public exhibition of the picture he served the Harold Lloyd Corporation with notice of plagiarism and commenced his suit in the state court about three months thereafter, he did nothing further to stop the exhibition or distribution of the picture until he filed this suit in the court below on April 11, 1929, about three and one-half years from the production of the picture. The delay was inexcusable and apparently intentional for the purpose of inducing defendants to exploit and popularize the picture so that enormous profits might be accumulated solely at their expense and for the sole benefit and advantage of the complainant. I think that the conduct of Witwer is equivalent to laches and is of such character as to preclude plaintiff from recovering all the profits from the picture.
The principle applicable to this situation is that declared by the Supreme Court in Johnston v. Standard Mining Co., 148 U. S. 360, 13 S. Ct. 585, 589, 37 L. Ed. 480, as follows: “Under such circumstances, where property has been developed by the courage and energy and at the expense of the defendants, courts will look with disfavor upon the claims of those who have lain idle while awaiting the results of this development, and will require * * * prompt assertion of plaintiff’s rights.”
See, also, West Publishing Co. v. Edward Thompson Co. (C. C. A. 2) 176 F. 833.
In connection with the question of money relief, it is proper to direct attention to the fact that no notice of infringement of any kind was served upon or given to defendants Harold Lloyd or Pathe Exchange, Inc., until service of process in this suit was made upon them, and, in the admeasurement of the pecuniary liability of defendants, this fact is of importance under (b) of section 25 of the Copyright Act (17 USCA § 25).
The interlocutory decree of the court below as far as it enjoins and restrains defendants Harold Lloyd Corporation, Pathe Exchange, Inc., and Harold Uoyd, and each of them, their licensees, agents, servants, attorneys, and employees, and all persons, firms, or corporations acting under or through them, from producing, reproducing, presenting, representing, issuing, reissuing, selling, leasing, distributing, giving away, or exhibiting the motion picture photoplay “The Freshman,” or any part or portion thereof in motion pictures or otherwise, and from causing the same to be produced, reproduced, represented, issued, reissued, sold, leased, distributed, given away, or exhibited in motion pictures or otherwise, and from producing, reproducing, presenting, representing, selling, leasing, distributing, giving away, or exhibiting in whole or in part in motion pictures or otherwise complainant’s story, “The Emancipation of Rodney,” or any colorable dramatization, imitation, or adaptation thereof, and that orders defendants Harold Lloyd Corporation, Pathe Exchanges, Inc., and Harold Lloyd, and each of them, to deliver up for destruction, and that orders the United States Marshal to destroy upon delivery to him all positive and negative motion picture films under defendants’ control or the *48control of any of them upon which is printed or reproduced or represented said motion picture photoplay “The Freshman” or any part or portion thereof, or any part or portion of the story “The Emancipation of Rodney,” and that awards attorneys’ fees and costs should be affirmed.
All other portions of the interlocutory decree should be reversed, and the cause remanded to the court below for further proceedings not inconsistent with the foregoing opinion.