
    PETERS v. BORST.
    
      N. Y. Supreme Court, Fifth District, Circuit and Special Term;
    
    
      November, 1889.
    1. Services ; collateral literary worTc.] A college or similar institution is not, without evidence of agreement therefor, entitled to the result of literary labor' of its professor, prepared by him for publication, although its preparation was incidental to his duty as professor, and aided by the facilities enjoyed by him as such.
    2. Literary property; replevin for manuscripts.] In a controversy between the director of an observatory and his assistant as to the ownership of a manuscript “ Star Catalogue,” upon which both had labored, it appeared that the director conceived the plan, selected the sources, made the discriminations necessary, and to him the correctness of the work was due; that the executive ability in working out the plan was that of the assistant. After the work had made much progress the assistant carried on the preparation of manuscript away from the observatory, and to an extent which he concealed from his principal, and finally claimed the whole as his property. Held, that those parts which were prepared by or under the supervision of the principal, or which were chiefly made up by copying from them, belonged to the principal, and he was entitled to recover possession of them from the assistant.
    
    Trial by the court.
    
      Christian H. F. Peters brought this action against Charles A. Borst to recover chattels. It was tried before the court without a jury, by consent of parties.
    The chattels sought to be recovered are written matter, in book and manuscript, designed for publication as a work to be known as a “ Star Catalogue.”
    Both parties have taken part in the accumulation of the materials for, and the preparation of the work, and each party claims the work as belonging to himself.
    The plaintiff is seventy-five years of age, and is director of the Litchfield Observatory, connected with Hamilton College, at Clinton, N. V. He first became connected with that observatory about 1858.
    The defendant is thirty-six years of age. He graduated from Hamilton College, in June, 1881, and then became assistant to the director of the Litchfield Observatory, and remained in that position until the trouble between the parties as to the “ Star Catalogue ” began, about the first of January, 1888.
    The plaintiff, in 1850, while at Constantinople, and before he came to this country to reside, first conceived the idea of preparing and publishing a “Star Catalogue.” He then began to accumulate the material for the work, using the book known in this ease as Exhibit 1. This book was used for this purpose before and after he came to this country and became connected with the Litchfield Observatory, and down to the year 1862. The book then became substantially filled with materials, about 7,800 star positions having been entered therein.
    The plaintiff then began to use for the same purpose a second book, known in this case as Exhibit 2, and materials were accumulated therein, by himself and his assistants, Mr. Porter and defendant, until in 1884, when there had been entered in this book about the same number of star positions as in the former book.
    In 1884, or in 1885, the first effort was made to put these and other materials in shape for publication of the work to be known as a “ Star Catalogue.” The manuscripts known in the case as Exhibits 4 and 5 were prepared before August 1, 1883. The manual labor of preparing these two exhibits was performed mostly by defendant.
    The star positions in Exhibits 1 and 2, or some of them, were inserted in Exhibits 4 and 5, and other star positions not in Exhibits 1 and 2 were also inserted in Exhibits 4 and 5.
    Then, later and before December, 1887, another manuscript, known in the case as Exhibit 6 was prepared, the manual labor thereon being performed mostly by defendant and one or two of his sisters. The star positions entered in Exhibit 6, were taken from Exhibits 4 and 5, and from other sources.
    A number of star positions were entered by plaintiff from time to time upon several sheets of manuscripts, and were used in the preparation of Exhibits 4, 5 and 6, or some of them, and these sheets are known in the case as Exhibit 8.
    These Exhibits 2, 4, 5, 6 and 8, are the chattels which are the subject of this action.- Exhibits 2 and 8 may be regarded as materials accumulated from time to time by plaintiff, for the work; Exhibits 4 and 5 may be regarded as a first edition of the work, and Exhibit 6 as a second edition of Exhibits 4 and 5.
    Other manuscripts were prepared by defendant prior to and after Exhibits 4, 5 and 6, which are also exhibits in the case, but to which no claim is made by plaintiff.
    The real question involved in the case, is, whether the work to be known as the “ Star Catalogue,” which was being prepared for publication, was understood by the parties to be the work of the plaintiff, the labor performed upon it by the defendant, being so performed by him as the assistant of, and under the direction of the plaintiff; or whether the work was understood to be the work of defendant, the assistance rendered by plaintiff being gratuitous and advisory to defendant merely.
    This question is involved in some doubt and uncertainty by reason of the conflicting evidence of the parties with reference to it, and a careful examination of the evidence is necessary, in order satisfactorily to determine where the truth lies.
    It would have been more agreeable to the court, and perhaps more satisfactory to the parties, to have had the verdict of a jury upon this question ; and if the real condition of the case had been appreciated by the court when the trial began, the court would not have been likely to dispense with the services of the jury. The duty of determining this question of fact, has, however, been assumed and undertaken by the court, and the duty must now be performed.
    
      E. JD. Mathews and Elihu Soot, for plaintiff.
    
      William Kernan and Francis Reman, for defendant.
    
      
       See note at the end of this case.
    
   Williams, J.

I am not inclined to hold the book and manuscripts in question, or any of them, or the work intended to be published as a Star Catalogue,” belonged to the Litchfield Observatory, or to Hamilton College. There would, it seems to me, be a great injustice in holding that for the very small compensation paid to and received by the plaintiff since he became connected with the observatory in 1858, the observatory or the college, acquired the right to have and appropriate the results of his literary labors as an author during all the years. His employment might have been made upon the condition that whatever he should produce as an author should become the property of his employer, and then all the works he produced would have belonged to the observatory or the college, but I do not find any evidence warranting the finding such an agreement was ever made. The same suggestion is applicable to the defendant as to any work performed by him as an author. The results of such labors I can not hold to belong to the observatory or college. These suggestions seem to be in accordance with well settled principles of law. In Wood on Master and Servant, it is said, page 198, “ If a servant makes an improvement in machinery, or invents a machine, the master is not entitled to the patent as against the servant, unless the servant was hired for that purpose.”

In Hapgood v. Hewitt, 119 U. S. 226, it was held: An employe of a corporation could not be compelled to convey to the corporation title to letters patent obtained by him for an invention made while he was in its employ, it not appearing there was any agreement the corporation was to have the title to the invention, or to any patent he might obtain for it.”

In Burr v. De La Vergne, 102 N. Y. 415, it was held : <c One partner acquired no right or interest, legal or equitable, by reason merely of the copartnership relation, in an invention made by a copartner during the existence of the partnership, although the invention related to an improvement in machinery to facilitate the business of the firm, and although the inventor used the copartnership means in his experiments, and was bound by the copartnership articles to devote his whole time and attention to the firm business. But where by agreement between the copartners, the firm was to have a joint right in any inventions, the partner to whom a patent for such an invention was issued, might not claim the exclusive benefits thereof.”

In this case there seems to have been no agreement that any production of these parties as authors should be the property of the observatory or the college. The plaintiff acted as professor and teacher of astronomy in the college, and had the custody of the observatory and the instruments and property connected therewith, and the defendant acted as his assistant, and while the observatory and college might enjoy the benefits to be derived from having such men in their employ, men who might become eminent and distinguished by reason of the mental labor and results they achieved, it can hardly be claimed the observatory or college would become the owners of the works they might, as authors, produce and publish to the world. The property in these works, so long, at least, as they remain unpublished, belonged to the authors and to them alone. So that the real question to be determined here, is not whether the observatory or college was the owner of these chattels, the book and manuscripts in question, but which' one of these two parties was the owner thereof, and therefore entitled to their possession when this action rvas commenced.

In this view of the case, I think it must be said the book, Exhibit 2, was the property of the plaintiff and he was entitled to its possession. It was his in 1884, before the preparation of the other exhibits in question was made, and it is not claimed he ever gave it to defendant, or parted with its possession so as to prevent his demanding and being entitled to its return at any time.

We come then to consider the circumstances under which Exhibits 4 and 5 were made.

The plaintiff testifies that in 1884, he determined to prepare a “ Star Catalogue ” from the materials he had in the books, Exhibits 1 and 2, and such other materials as he might gather, and that he set defendant at work accordingly. That the star positions in Exhibit 1, were referred all to the epoch of 1850, and these went into Exhibit 4. That the star positions in Exhibit 2, were all referred to the epoch of 1875, and these went into Exhibit 5. That he, the plaintiff, selected other star positions from various periodicals, copying some himself, and marking or pointing out others in the periodicals to defendant, and directed these to be put into-Exhibits 4 and 5; and some nine hundred star positions he, plaintiff, determined himself, and directed them to be put in Exhibits 4 and 5, by defendant. He gives in more or less detail the books and periodicals and sources from which, and the manner in which, he selected the star positions, which he directed defendant to insert in these Exhibits 4 and 5. That he looked over the various sheets of Exhibits-4 and 5 from time to time, and corrected the entries therein, and ail this was continued as they had time and opportunity down to the summer of 1886, just before the college commencement. That then he, the plaintiff, observed the pages of these two, Exhibits 4 and 5, were getting too crowded by reason of the insertion of matter between the lines, and talk was had about copying the exhibits so as to give them' more room, and getting some one outside to do this manual labor, the plaintiff to pay $100 for the work. That the plaintiff suggested a student; Hollister by name, as a person to employ, and defendant afterwards said Hollister could not do it, but his, defendant’s sister, would do the work, and that plaintiff assented to this, saying defendant could then supervise the work a little.

Let us pause here in plaintiff’s story, and observe what defendant testifies as to this period, and what the other evidence in the case shows.

The defendant testifies that during the first year he was in the observatory, plaintiff advised him to undertake some special work, and publish it, for the sake of his reputation. That he then suggested the preparing of a 16 Star Catalogue,’* and called his attention to the materials he had accumulated in the book, Exhibit 2. That in the spring of 1884 he, defendant, made up his mind to undertake the work of preparing and publishing a “ Star Catalogue,” and when the plaintiff returned from Europe in April, 1884, they talked about it together. That he, defendant, began the work in May, 1884, and continued it until February or March, 1885, extracting star positions from circulars and journals and publications, arranging them in regular order, and making computations thereon, and in this work made and prepared the manuscripts presented and known in the case as Exhibits 22 to 45, both inclusive. That the plaintiff never saw these manuscripts, nor knew anything about them, until long after, in 1886, when he showed plaintiff one of them. That in March, 1885, he, defendant, prepared paper which he purchased and paid for himself, upon which to make the manuscript for the so-called first edition, for the epoch of 1875. That he put into this the star positions he had extracted from circulars, etc., and also star positions extracted from the book Exhibit 2, and this is the manuscript known in the case as Exhibit 5. That plaintiff, when he called his attention to Exhibit 2, at first, had told him he might use the star positions entered in it, and he did use them accordingly. That after preparing Exhibit 5, he, defendant, prepared the manuscript known in the case as Exhibit 4, entering therein star positions taken from the book Exhibit 1, and from the Geneva observations. That Exhibit 4 was then much smaller than Exhibit 5, and at his request the plaintiff called his attention to star positions in the Santiago observations, and marked some, and he, defendant, extracted those and a large number of others not marked and entered them in Exhibit 4. That he did much other work which he specifies, and points out errors and mistakes in Exhibit 1 and 2. That his work was thus completed down to August 1, 1885. That plaintiff never directed him to prepare Exhibits 4 and 5 from Exhibits 1 and 2, and had nothing to do with those manuscripts. That the first time plaintiff ever saw Exhibit 4, was in July, 1885, when he took it to plaintiff and asked him to look it over with him and see if he had any criticisms to make upon it; and that plaintiff did go over the manuscript with him, and made suggestions and corrections in it. That this was all done in one afternoon, and plaintiff had not seen this manuscript before— could not have seen it, because the manuscript had not been at the observatory, but at the defendant’s house in the village. That plaintiff never had seen Exhibit 5 before that time either. That Dr. Hall visited plaintiff in July, 1885, at the observatory, and he, defendant, then took some portions of Exhibits 4 and 5 to the observatory to show Dr. Hall what he was doing. That he showed Dr. Hall these portions of the exhibits in plaintiff’s presence, and asked his advice with reference to the work. That Dr. Hall looked them over, and gave him some advice with reference to the work; that defendant told him it was his personal work, and that he was doing it for his own reputation. That Dr. Hall said it would be an excellent work, and valuable, and encouraged him to go on with it. That plaintiff sat by during this interview, and made some suggestion himself about the work. That the computations of the' annual processions had not then been made, and defendant spoke about making them, and Dr. Hall advised him to do it. That his sister Emma, during the fall of 1885, and spring and summer of 1886, made the computations for both epochs, 1850 and 1875, and with the assistance of his sister Lucy, they were put into the manuscripts Exhibits 4 and 5, and these computations were in the manuscript, presented and known in the case as Exhibit 46. That there were 5,900 star positions in Exhibit 4, and over 8,000 in Exhibit 5. That his sisters came'to Clinton to live in April, 1884, and began their work on the manuscripts in the spring of 1885. That in the spring and summer of 1886, a second edition of Exhibit 4, the catalogue for 1850, was being made by his sisters. That the plaintiff never made any suggestion as to Exhibits 4 and 5 being crowded, but that in the summer of 1886, when the second edition for 1850 was being prepared, he remarked to'plaintiff that he was making it, and it was no small task, and plaintiff asked why he didn’t get some poor student to do such work, his, defendant’s time, was so valuable, and he replied his sisters did his copying. That no student’s- name was mentioned, and there was no talk about plaintiff’s paying $100 for the copying, at this or any other time.

Professor Burdick testifies that in 1885, just after Mr. Litchfield’s death, at the observatory, he had an interview with defendant; that defendant showed him the charts of the heavens, and talked about the reputation they had given the plaintiff, and spoke of observations in connection with the charts, and the computations in regard to those observations, and then said these were but a part of the work the plaintiff had done, and that he, plaintiff, had been for years -collecting star determinations and getting them in shape for publication, and he, defendant, was spending most of his time upon that work, and he, plaintiff, had in manuscript there what would give him, when published, greater reputation than the charts, and he pointed to the manuscripts upon the table before him, some sheets. He said the work was a compilation or collection of star positions which they had not observed ; that if Harvard University, or any other such institution, had a work of that kind, it would see that it was for its reputation that it be published, and that this, ought to be published ; that the plaintiff hoped to get funds-from Mr. Litchfield for the publication of it, and he didn’t know but the death of Mr. Litchfield would prevent the-carrying out of the plaintiff’s idea.

Professor Brandt testifies that, late in 1885, he was at the-observatory, and had an interview with defendant; that he then saw defendant working upon sheets of manuscript having the appearance of the sheets in Exhibits 4 and 5; that defendant said he was working on the catalogue, and explained the nature of work, saying it was not original work, but a compilation that required a great deal of care, accuracy and labor ; that witness observed he had before him foreign catalogues, especially the Astronomische Eachtrichten, some unbound numbers, and spoke to defendant about them, inquiring with reference to marks he observed upon them, if the plaintiff marked them ; that the defendant replied he did ; that witness then said he should think defendant would find difficulty in looking up the references, as he didn’t know much French, German or other languages, and defendant, replied he did, but when he got stuck the plaintiff fixed him up; that defendant then spoke of two other works of the-plaintiff’s, the Star Charts and the Solar Spot Observations, which he, defendant had copied, and said these three great works were enough to complete any man’s reputation; that defendant showed him the Star Charts, and spoke of the Solar Spot Observations, which he said he had copied, and said those two, with the catalogue, and he pointed then to-the manuscript which lay there, were enough to complete any man’s reputation ; that defendant said the plaintiff himself had paid the expenses of publishing the Star Charts, but that the publication of the catalogue and the Sun Spot Observations would be very expensive, and the plaintiff’s friends ought to bear that expense ; that defendant said the plaintiff had urged him from the very beginning to become familiar with French and German, but he had never had a start in them ; that witness subsequently saw defendant very frequently working upon the catalogue, and noticed that he had other books from which he was compiling, and sometimes saw him computing, and had conversations with him about the Star Catalogue,” subsequently.

Professor Chester testifies to an interview with defendant in February, 1888, in which witness asked him about plaintiff’s hiring Hollister, the student, to copy the catalogue, and defendant said that about Hollister’s copying the catalogue was all bosh, was a trick, that plaintiff knew better than that; that witness asked if plaintiff did speak to him, defendant, offering to give Hollister $100 to copy this catalogue, and defendant replied, certainly, but it was all a trick.

The defendant, in reply to the evidence of Professors Burdick and Brandt, testifies that he cannot remember the details of the conversations they testify to, but he must have referred to a catalogue of Zone Stars, to be published in connection with the charts of the heavens, if he spoke of a catalogue at all, as he never spoke of this Star Catalogue ” in question as the plaintiff’s work, at any time, or to any person. As to the evidence of Professor Chester, defendant denies, at least, all recollection of the details testified to by the professor, and denies he conceded the plaintiff offered to pay $100 for copying the catalogue.

Dr. Hall testifies defendant showed him the manuscript of the catalogue in question, in August, 1885; he thinks it was at the observatory; but he does not remember that the plaintiff was present, or took any part in the interview; that defendant asked him to examine the work and make such criticisms as he thought proper as ■ to its arrangement, and he did so; that he advised making new and larger sheets, and adding new columns ; that witness, after examining the catalogue, remarked that it contained a great deal of work, and in reply, defendant said it was his work, that plaintiff had advised him to take up and do some solid piece of work ; that defendant showed him, witness, a book (evidently Exhibit 2), and said plaintiff had given that to him to assist him in the work, and he was doing the work for the reputation it would give him. The plaintiff denies he was present or heard any such interview or took any part in it. Dr. Hall testifies he had known the plaintiff for many years, and before November, 1886, had talked with plaintiff, and had correspondence with him about the publication of a Star Catalogue.”

Letters written and sent by Dr. Hall, are produced in evidence. Dr. Hall testifies he is home secretary of the National Academy of Sciences. In a letter of March 21, 1886, he writes the plaintiff : “I have sent out notices of the meeting of the National Academy next month. Can you not come on and stay with us this year? If your catalogue is ready you might present it.” And in another letter of April 19, 1886, he writes: “ We are sorry yon cannot come on, and I was hoping that you would bring that catalogue, so that we might begin the printing next year, but next fall will do.” And in another letter of April 19, 1886, he writes: The autumn meeting of the academy is to be held at Boston, November 9, and I hope you will be there with the Catalogue of Stars.” And in another letter of October 8, 1886, he writes : If you put off the presentation of your ‘ Star Catalogue ’ it will delay the printing a year. I think you better present it, then work on it till December, send it to Prof. Marsh, and keep up your work on it until it goes to the printer, say next March.” Then following these letters, at the meeting of the National Academy, at Boston, in November, 1886; plaintiff, as Dr. Hall, who was present, testifies, read a paper entitled u Catalogue of Stars from positions in various Astronomical Periodicals,” and it was discussed; and defendant saw a report of this paper in the New York Tribune immediately after. Defendant testifies he read the report of the paper in the Tribune before the plaintiff returned home from Boston, and had some unimportant talk with him about it on his return home; that he then at first suspected plaintiff thought the work was his, but this suspicion was soon entirely removed by plaintiff’s paying no more attention to the catalogue. The Exhibits 22-46, which defendant testifies he made before Exhibits 4-5 were made, seem to be manuscripts in which the materials were accumulated in rough which went into Exhibits 4-5 afterwards.

I have thus as briefly as possible stated the claims of the parties, and referred to the evidence given in their behalf, as to the condition of things in 1886, when, plaintiff claims, talk was had about procuring Exhibits 4 and 5 to be copied, and a second edition thereof to be made. At that time but little work had been done on the catalogue by defendant’s sisters. They had made some computations, and inserted them in Exhibits 4 and 5, and, it is claimed, had begun, or were about to begin work on the new edition of Exhibit 4, but it does not appear that plaintiff then had any knowledge of this work done by them.

The defendant had done considerable work in accumulating materials for, and in preparing and putting these materials together in Exhibits 4 and 5; and the plaintiff had done more or less towards furnishing materials for the work, aside from the matter in Exhibits 1 and 2, and in directing or advising as to the work.

The great amount of labor done by defendant and his sisters, upon manuscripts, which have been produced upon the trial in considerable abundance, was performed subsequent to this time to which we are now referring. There is much in the evidence thus far in the case, to incline one towards the plaintiff’s claim that at the time referred to, the work in question was regarded by both parties as the work of plaintiff, rather than of the defendant.

The position of the parties is unfavorable to defendant’s claim made on the trial. The work was the idea, the conception of the plaintiff long years before, and ever since then he had been patiently accumulating materials for the work. He says in 1884 he concluded to put the work in shape, and th^t he set defendant at work upon it as his assistant. The defendant was merely an assistant, a beginner in the science of astronomy, and he seeks to claim the work of his chief his superior, as his own. The claim does not strike one pleasantly. The defendant is not satisfied to have credit given him for his part in the work; he wants the whole credit of the work, as his own. In order to support such- a claim as he thus makes, he should have quite satisfactory ■evidence of it. He puts his word, his evidence against the plaintiff’s and challenges the truthfulness of the claim made by him. He has little in the evidence to corroborate him, and considerable to contradict his claim. The evidence of Professors Burdick and Brandt is directly against him. They testify to express statements made by him in 1885 that the work was the work of plaintiff, and they give these statements in such detail as to leave little doubt but that defendant then understood the work to be the plaintiff’s, upon which defendant was working as an assistant merely. The defendant attempts to avoid the effect of their evidence by claiming he referred to another catalogue rather than this one; but their evidence is too clear, and is answered too vaguely by defendant, to permit of such an explanation. If they are truthful, the defendant could at that time have had no idea of appropriating this work to himself, or claim ing it as his own w'ork rather than that of the plaintiff. It is said his talk with Dr. Hall shows he regarded the work in August, 1885, as his own work. If he had such a talk, it would show, at least, that he was then claiming the work as his own; and if, as he claims, the plaintiff was present, and made no objection, it would show both of them so understood it. The plaintiff, however, denies he was so present, and Dr. Hall does not recollect he was ; so that doubt is thrown upon tlie evidence of the defendant that he was so present. But beyond this, the letters written by Dr. Hall to plaintiff in 1886, and the occurrence at the National Academy in Boston, in November, 1886, lead us to doubt the correctness of Dr. Hall’s remembrance of the interview he had with defendant. I am unable to perceive how Dr. Hall could have understood during 1886, that this work was defendant’s, rather than plaintiff’s, in view of his letters and the occurrence at Boston in the fall, with reference to the catalogue in question. His letters clearly indicated he regarded the catalogue as the plaintiff’s work in 1886. It does not appear anything occurred between August, 1885, and the spring of 1886, to change Dr. Hall’s opinion as to who was really the author of the work. It is very likely letters were written by7 plaintiff to Dr. Hall at the time Dr. Hall wrote his letters to plaintiff, and it would be strange if in such letters there was not more or less said with reference to this catalogue. None of these letters are produced. If Dr. Hall, in 1886, undei-stood defendant’s claim to the catalogue as he now testifies to it, how does it happen that nothing was said or written by him to plaintiff with reference thereto. Tire catalogue was evidently regarded by Dr. Hall as a work of considerable consequence, and he was writing to plaintiff all through 1886 about it as his work. If defendant, plaintiff’s assistant, had made such a claim to the work as his own personal work, as Dr. Hall now testifies to, how did it happen that the Doctor never mentioned this claim to the plaintiff. While it is not likely Dr. Hall intends to state anything untruly, still there is such an improbability in his evidence, viewed in the light of his letters, as to lead one to conclude his recollection of the interview of August, 1885, is at fault. More than this, the evidence of Dr. Hall a.nd his letters show clearly that plaintiff, all through 1886, must have regarded the work as his rather than the defendant’s. Dr. Hall was not writing the letters, designating the catalogue as plaintiff’s work, based upon his talk with defendant in 1885, in which defendant stated it was his own personal work. These letters of Dr. Hall must have been based upon talks or correspondence with plaintiff, in which the work was spoken or written of as his, plaintiff’s work.

If the case rested alone upon the evidence so far as we have now examined it, there could be little doubt, I apprehend, as to the conclusion which should be arrived at.

We should, however, examine the remaining evidence, as to the years 1886 and 1887, until the trouble developed between the parties. One prominent feature of this branch of the case, on the part of the defendant, is the great amount of labor performed by the defendant, and more especially by his sisters. Only one of the manuscripts of this period, it is claimed by the plaintiff, • Exhibit 6, but other manuscripts in great abundance, were produced in court on the trial, and great labor had evidently been performed upon such manuscripts; and the claim and argument made by the defendant and in his behalf was and is, that all this labor would not have been performed if the defendant had understood the work was the plaintiff’s, rather than his own. It is not claimed the nature or extent of this labor was brought to the knowledge of the plaintiff. He was only shown some of the first sheets of Exhibit 6.

This argument was designed, and was liable, to have considerable effect upon the determination of the real issue involved in the case.

Very much of the labor in these years was performed before Exhibit 6 was prepared. What defendant calls second editions of Exhibits 4 and 5 were prepared. The second edition of Exhibit 4 is known in the case as Exhibit 20, and is said to contain more than 10,000 star positions. The work upon these second editions was mostly done by defendant’s sisters, who, under defendant’s direction, extracted star positions from various sources, made computations thereon, and entered the whole in the manuscripts ; and then, in 1887, between spring and fall, Exhibit 6, which defendant calls the third edition of Exhibit 4, was prepared. Some sheets of this were presented to, and examined and corrected by plaintiff, but defendant refused to present or submit to plaintiff the balance of the sheets of this exhibit. Considerable other labor upon the work was done during these years without the knowledge of the plaintiff, and finally, upon defendant’s refusal to bring back to the observatory the manuscripts which plaintiff did have knowledge of, the question of the interests of the parties in the catalogue was brought up and discussed, this trouble developed, and this suit resulted.

The plaintiff evidently regarded Exhibit 6 as the next work done on the catalogue after Exhibits 4 and 5, and supposed Exhibit 6 was made from Exhibit 4 and accumulations of materials from other sources,, after Exhibit 4 was prepared. All the plaintiff seeks to recover of these manuscripts are Exhibits 4 and 5, which he was directly connected with the preparation of, and Exhibit 6, which he understood was made up largely from Exhibit 4 by the merely manual labor of copying, and for which labor he had agreed to pay the $100. The other manuscripts were made without his knowledge, and are, therefore, not important to be considered here, except as to their effect upon the question in issue, by reason of the great labor performed upon them.

Whatever the interest of plaintiff was to be in the catalogue, it is not disputed but that the defendant would have actual credit and reputation for whatever he actually did in labor upon the work. He could not have the credit or reputation of having conceived the idea of such a work, because that would not have been true. He could not have the credit or reputation of having himself selected the sources from which the stars were to be extracted, because that would not have been true. He could not have the credit and reputation of the nice discrimination in selection of star positions for the catalogue, and the absolute correctness of the work, because that would not have been true. The conception of the work; the original selection of the sources from which star positions were to be selected ; the nice discrimination as to the star positions to be selected or retained in the work when published ; the absolute correctness of the work were due to the plaintiff and his great knowledge and experience. But the great labor upon the work, the executive ability displayed in working out the conception of such a work, the untiring industry exhibited in preparing it for publication, were defendant’s, aided by his sisters, and all the credit and ability exhibited in these respects, belonged, not to the plaintiff, but to defendant, and could not have been properly taken from the defendant. It is possible that for just the credit and reputation in connection with the work, that the defendant was really entitled to, he would not have performed the work hellid by himself and his sisters upon the catalogue. But it was all he was entitled to in any event. The world will deal with all of us justly, when it gives us credit for just what we have done. It will deal with some one unjustly when it gives some one credit for what he has not done.

If the great labor performed upon this catalogue by defendant and his sisters is to be regarded as evidence that defendant considered the work as entirely his own personal work, still it could not be regarded as evidence the plaintiff, who had no knowledge of this great labor, secretly done, so regarded it. Whatever defendant’s understanding with reference to the work may have been originally, it is not improbable that, at some time as early as 1886, he determined to claim the work as his own, and that, from that time on, he so arranged and carried on the labor as to give color to his claim; hut if the plaintiff still regarded the work as his, and did not voluntarily surrender it to defendant, then no amount of labor thereafter performed by defendant or his sisters, without plaintiff’s knowledge, could operate to deprive plaintiff of his interest in the work, or to legalize or justify defendant’s attempted misappropriation of the work to himself. It seems to me very doubtful if plaintiff, down to the time the trouble developed, had any idea of surrendering to defendant his own interest in the work, or had any idea that defendant claimed the work as his own personal work, to the exclusion of all interest of plaintiff in, or credit or reputation, for, the work. All plaintiff now asks for is to have whatever of interest, credit or reputation, belongs to him, in connection with the work. It appears to me the effort of the defendant is to appropriate to himself •credit and reputation which does not properly belong to him, but to the plaintiff.

In 1887, the plaintiff was in Europe for some months, and some letters passed between the parties. Of these a number have been produced and put in evidence, and one or two of plaintiff’s letters have not been produced or put in evidence by defendant. None of these letters refer very clearly to the issue we are considering. In his letter of May 9, 1887, plaintiff wrote from Paris: “ I have worked pretty steadily at the National Library, which indeed is very rich in MSS. Shall finish to-morrow.35 Then, in his letter ■of May 25, 1887, plaintiff wrote from Flensburg: “ I regret that I forgot in my last to ask you how far we have in our observatory the Geneva Observations. I had forgotten it. At Paris I met the present director of the Geneva Observatory, Mr. Gautier, and he promised me to send us all the following years that are wanting in our library. Therefore, I beg you to give me at early convenience, notice which is the last year of those observations we have. In the mornings I am busy in putting in order the copious notes for the old 1 Star Catalogues5 I took at the Paris Library, etc.” Then defendant, in a letter written May 7, 1887, said: I have taken the stars out of the remaining volumes of the Nacktrichten and have them reduced. I am working at the reductions of the Geneva and Konigsburg stars. I hope you will come across those of Geneva for 1850. The work with the class will prevent my getting on quite so fast as I otherwise would with this work. Still I hope to have it ready so you can write the preface when you get back. It will be rather pleasant to turn from this work to your original observations.” And then in a letter written June 11, 1887, defendant said: “ The Geneva Observations in the observatory library are from 1841-1849, inclusive. It will be good to have the observations for the year 1850, to complete what we have from Cambridge, of the Geneva stars. You will remember that year was lacking in the volume Professor Pickering sent. The later numbers of the different journals have quite a number of new star places. As soon as I get through with the class, I will have more time to complete the reductions.” And then in another letter, written July 16, 1887, defendant said: “ Since the term closed I have turned my atten tion entirely to the reductions, and am now at the Geneva stars, so those you sent came in just at the right time. I am glad to get back entirely into the observatory, and forget, as far as possible, all the annoyances outside. I will be very glad when you get back.”

These extracts, it will be seen, give us little light with reference to the understanding of the parties as to the catalogue in question. The defendant carefully kept from plaintiff the fact that he and his sisters were engaged in the great labor now presented in court, and that he and they were working thereon late into the night. His letters to plaintiff rather carry the idea he had had but little time for the work, but at last, the term of college being closed, he would have more time to devote to this particular work.

I am at a loss to understand why, during these years, defendant was so carefully concealing from plaintiff the manner and extent to which he and his sisters were pushing' this work, consistently with the honesty of his claim that plaintiff understood the work was his, defendant’s, own personal work. If plaintiff did so understand it, why was defendant so careful to keep everything away from him : why were all the manuscripts carefully kept away from the observatory ? Why all this secrecy ? If defendant had formed the design to claim the work as his, without the consent of plaintiff, and knowing plaintiff regarded it as. his, then I can understand why the work, while being pushed so vigorously by defendant and his sisters, was kept so carefully concealed from plaintiff.

I have given considerable time and consideration to this case, because it is an important one and an unpleasant one, and I have desired1 to arrive at a correct conclusion, one that should do justice to both parties; and I can, as a result of my labors, arrive at but one conclusion, and that favorable to the plaintiff. Fortunately, it is1 not often we have to deal with such controversies as this, in which the real question in issue relates, not to money considerations, but to the credit to be given parties for scientific or literary productions. It seems to me, as I have already suggested, that justice can only be done in such a case, by giving to each party credit for just what he has done with reference to the work in question. In doing this, we have little trouble in this case. There can be little doubt that this work was conceived by the plaintiff. For over thirty years he kept it in mind, and was patiently gathering material for it. There can be little doubt but plaintiff’s mind directed the sources from which largely the materials for the work should be taken, as the work progressed, up to the year 1886, at least. And that his discriminating examination and correction of the manuscripts, Exhibits 4 and 5, gave them their really great value. Evidently the defendant then came to believe himself competent to go on alone, if not to criticise and correct his former master and teacher. And from that time on the work grew in size, in volume, under defendant’s and his sister’s rapid executive skill and labor. That it continued to be as valuable, as correct, we must be permitted to doubt. On the trial the defendant exhibited to the full extent his appreciation of his own ability, especially in his rather sweeping and severe criticism of the plaintiff’s work-The effect of this upon the court was not favorable to the defendant’s case. The plaintiff has given his whole life to his chosen work—has become eminent in the astronomical world. The defendant only a few years ago began the study of astronomy. His growth, in his own estimation, at least, has been very rapid, and now so soon, he feels himself fully competent to criticise and correct his old. master and teacher. We have all been young men, and some of us have since grown older, and we realize that young men are aspiring, and often know more when they are young, than they do when they are grown somewhat older. Real, true ability ordinarily is modest and unassuming, has respect for age and eminence won by long years of study and labor.

I am impressed in the examination of this case with the truthfulness of the plaintiff’s claim, that he regarded this catalogue all along as his own work; that he never consented to surrender it to the defendant; that he intended to give defendant full credit for all he did upon or with reference to it; but that the defendant, as he became familiar with the work and learned how to manage its details, conceived the design of appropriating the whole work to himself, and depriving the plaintiff of all credit for, or reputation growing out of it. That then it was that he threw into the work all his executive ability, and that of his sister, with a view to overwhelming the plaintiff, and creating the impression and belief in the public mind, that it was- his own personal work, with which the plaintiff had practically nothing to do. In this view I must hold the exhibits in question, including Exhibits 4, 5 and 6, were, at the time of the commencement of this action, the property of the plaintiff, rather than the defendant, and that plaintiff is entitled to recover them in this action.

In view of the evidence in the case, as to the value of the papers, I can not fix this value very definitely, but I should say Exhibit 2 was worth $250, Exhibit 4 and 5 each $500, Exhibit 6, $1,000, and Exhibit 8, $10, making in all $2,260.

Damages for detention will be fixed at the amount of interest on above values, from time of commencement of action.

Formal decision will be prepared by plaintiff’s counsel, and be submitted" to defendant’s counsel for approval as to form, and then to me for signature. Bequests will be passed upon at the time of signing decision.

NOTE ON THE SEPARATE RIGHT OF AN EMPLOYE TO THE VALUE OF HIS EXTRA SERVICES, AND HIS MENTAL PRODUCTS.

The case in the text well illustrates one phase of some new applications of the doctrines of equity to the relation of master and servant, or, as I should perhaps now say, of employer and employed.

During the life of the present generation the enhanced importance of contracts of employment and agency, the tendency to specialization of function in all commercial, mechanical and intellectual pursuits, and the increased pecuniary value of mental products, have given rise to what may be termed a new branch of this part of our law, viz., the rules which should be applied to determine the right, as between employer and employe, to those incidental results of labor which come in part from the unpromised time or faculties of the employe, and. in part from the directions and facilities afforded by the employer.

These rules, not yet fully settled, are of importance both •in advice and in litigation on such questions when in controversy, and in drawing contracts of employment and agency.

The underlying principles recognized or assumed by the course of decision are :

1. That the direct use and benefit of all the time and service which the employe stipulated to render belongs and must be freely and in good faith secured to the employer. (Cases 1-6.)

2. That the parties may stipulate, expressly or impliedly, for partial or for specific services, and if the contract is so restricted the employe is not bound to go beyond his stipulation. (Case 3.)

3. That if he does go outside of such a specially stipulated service, the mere fact of rendering a different or larger service in lieu of that stipulated for does not necessarily imply a contract to pay a larger compensation. (Cases 6-14.)

4. If he performs extra- service at the special request of his employer, besides fulfilling completely the service stipulated for, the mere fact of the stipulated relation does not conclude him from recovering extra compensation for the extra service, if, as matter of fact, a promise to pay can be implied from the request for and acceptance of the extra service. (Cases 6, 12.)

5. If the employment stipulated for is in the making of improvements, designs or compositions in aid of the employer’s products, the literary property and privileges which the patent and copyright .laws secure to the employe as an inventor, designer or author, are for the benefit of the employer. (Cases — .)

6. On the other hand, a contract for entire time and service, does not necessarily preclude the employe from claiming as against third persons the privileges conferred by the patent and copyright laws on inventors, designers and authors. (Cases 11-23, 31-34.)

7. These privileges may be stipulated for by the employer as part of the service to be secured to him; but if there is no such stipulation expressed or implied, these privileges belong to the inventor or designer, etc., provided they have not been made by means of a breach of duty; and with this qualification, that in the absence of evidence to the contrary there is an implied license to the employer to use in his business the inventions and designs made by his employe in the course,and with the facilities of the employment. (Cases 11-28, 31-34.)

8. Equity will so deal with the parties by compelling assignment, or enjoining use, as to carry into effect the fair intent of their contract and secure the resulting rights even though the statutory forms prescribed for transferring patent rights and copyrights have not been adopted. (Cases 35-39.)

Notes of Oases.

1. Engagement for full time, ete., requires obedience to orders.] Defendant, under a written contract, employed plaintiff to solicit advertisements for him, plaintiff “ to give all his' time and his best efforts to the business,” for a specified weekly salary. Defendant ordered plaintiff to report to him every morning at nine o’clock, and again between- five and six o’clock p. m., and report the work done each day. Plaintiff, having disobeyed such orders, was, after warning, discharged. Held, in an action for a wrongful discharge, that it was error to instruct the jury to find whether such orders were reasonable, since plaintiff had no legal interest in the way in which he should dispose of his time, and that the complaint should, have been dismissed. Tullis v. Hassell, 54 N. Y. Super. (J. & S.) 391 ; 8 N Y. St. Repr. 108.

2. Under a contract of employment providing that the plaintiff was to “give his undivided time and services in our business, as we may direct,” and such services consisted in traveling over the country and selling goods, a direction to go to a certain city, take a room and sell in and from it, Held, within the contract, and his refusal to do so a cause for discharge, and forfeiture of pay since last pay day. Waters v. Davies, 53 N. Y. Super. Ct. (J. & S.) 39.

3. Special service, and absence when worlc is not provided.] Jackson v. Hill, Q. B. Div. June, 1884, Law Times, June 28, p. 160. Defendant was engaged by plaintiffs “as a practical working mechanic in developing any ideas they, the said firm, may wish to carry out, and as far as possible to himself originate and carry out ideas and inventions suitable to the business of said firm.” Other clauses indicated that this special service was the only one in view. He was now sued for absenting him■self, and his defense was that they were only giving him work as a common mechanic. The court of first instance held that he was wrongfully •absenting himself ; but the Queen’s Bench Division, (Day and Smith, JJ.) reversed this decision, holding that he was not bound to do the work of a common mechanic, but only the work of a mechanic in developing ideas and inventions; and therefore he was justified in •absenting himself when the employers did not supply him with work •of that character.

The prosecution in this case was under the English Workman act 1875, and is not an unqualified authority as to the right of an employe to absent himself and still be entitled to wages, under common law principles.

4. Business time ; self-service, and vacations.] In the case of Ætna Life Ins Co. v. Erlich, Mo. 1884, 13 Ins. L. J. 383, is a well reasoned opinion ,by Hon. Seymour D. Thompson, on the interpretation' of a contract for entire time and energies in a business agency ; and the effect of engaging in other “side lines,” and of taking long vacations.

5. Voluntary promise of extra commission.] Plaintiff, an employe of a firm of druggists, and owner of a certain recipe, was told by one of the firm, voluntarily, that he would allow him a royalty upon all sales of the article made from the recipe, whereupon plaintiff sold the article in the store, giving the firm the benefit of the profits. Held, in an action to recover the royalty, that the contract was void for lack of consideration, the employers being entitled to plaintiffs services. Lamar v. Russel, 2 Southeast. 467.

6. Is extra compensation implied for extra service ?] Wilford v. Devin, 43 Iowa, 559. Action to recover for extra services. Plaintiff was employed by defendant as man-of-all-work, at a weekly salary ; during the defendant’s sickness plaintiff took care of him alternate nights and alternate Sundays, receiving pay for his services upon Sunday, but none for those rendered at night, nor was there any agreement respecting them. Plaintiff having recovered for the extra services at night in the court below—held¡ that the verdict should not be disturbed.

7. McCarthy v. Mayor, 96 N. Y. 1. Action to recover for extra work. Plaintiff engaged at an agreed price per day, with knowledge that the nature of the services required ten hours work each day, and that such had been the custom in the work. He continued in such, employment two years, laboring ten hours each working day, and sometimes more ; he received his wages at the agreed price at regular-periods without objection or claim for extra compensation, giving receipts purporting to be in full up to date. Held, that an employer is-not liable under and by the “ Eight Hour Law ” (L. 1870, c. 885), to an employe hired by the day, for labor beyond the statutory time unless-it was provided for in the contract of employment; and that the circumstances justified a finding that the extra services were rendered without any expectation or understanding, express or implied, that extra compensation was to bé paid therefor, and that plaintiff was not entitled to-recover.

8. McGovern v. Western R. R. Co., 28 How. Pr. 493. Action to-recover for extra services. The plaintiff was employed as a night watch during week days. Under an agreement with a sub-agent of defendants, he performed service every night during the week. The acts of the-sub-agent were disapproved by the general agent of defendants, and the-plaintiff notified. He continued in the employment without any extra pay. Held, that the employe, having continued in the employment and accepted wages, could not recover for such extra services, but must, be deemed to have waived his claim therefor.

9. Fraser v. United States, 16 Ct. of Cl. 507. Action to recover for extra services. The supervising architect of the treasury having been, suspended, Fraser, the present claimant, was directed by the secretary to take charge of and perform the duties of the office. He was at the-time superintendent of a building in course of erection, and was receiving a stipulated per diem compensation. The supervising architect received the salary of the office for the period of his suspension. The" claimant received during the same period his per diem allowance. This action was brought for the salary of the office while he performed its duties. Held, that the claimant was entitled to no pay for his services beyond his eight dollars per day.

10. Moffat v. City of Brooklyn, 1 N. Y. Supp. 781. Action for extra services. Plaintiff, an employe of the city of Brooklyn, was assigned by the board of health to the duty of “ inspecting plumbing work.”' Another employe having resigned, he, by direction of the board, performed such] employe’s duties of “ inspecting plans,” in addition to his. own, without any agreement for extra compensation. Subsequently plaintiff, having received his regular salary, resigned, and brought suit for the extra services rendered. Held, that, before plaintiff could recover, he must establish that defendant agreed to pay him for such extra services, in addition to his regular salary; and, as .he did not request the trial court to find such facts, he could not, on appeal, complain that no such findings were made.

11. —or for use of invention.] Solomon v. United States, 22 Ct. Cl. 335. Action for the value of use of a patent invented by an employe in the course of his employment. The chief o£ the bureau of engraving and printing was officially assigned to the duty of devising an internal-revenue tax-stamp. He produced a stamp previously devised by himself while chief, and perfected with the means and appliances of the bureau. He stated to the commissioner of internal revenue that for these reasons he should charge nothing for the invention. Subsequently he resigned his office and took out a patent. It was assigned to the claimant in consideration of an antecedent indebtedness. He sent a letter to the commissioner of internal revenue relating to compensation. The commissioner made no reply, and the government continued to use the stamp. Meld, that no royalty could be recovered, and that there was no presumption of an implied contract, notwithstanding the fact that the invention of the stamp was made before the officer was assigned to the duty of devising one.

12. Deane v. Hodge, 35 Minn. 146; s. c., 59 Am. 321. A. was first a director of a corporation, then its president, and then its patent director. No salary was attached to the latter office. The corporation used certain patents owned by A., and, for such use, compensation was claimed. There was no evidence of a contract, nor of any express license The model, which was inexpensive, was made by the workmen of the corporation, which also advanced the fees of the attorney who procured the patent, and A. did not at the outset give notice of his intention to claim royalty. Held, that a finding that he was entitled to a royalty was justified, and that a contention that, from his relationship to the company, a license to use the patents without charge should be implied, was untenable. Plaintiff was not necessarily precluded from recovering a reasonable compensation for the use of such patents by reason of his relationship to the company; but such relationship, with other circumstances, was for the jury to consider in determining the question whether the license to use the patent should be implied to be for or without compensation.

13. Employe's suggestions.] Agawam Co. v. Jordan, 7 Wall. 583. Suit to restrain the infringement of a patent.

G., the original patentee, employed W. as a workman in his machine shop. When G. had nearly completed his.machine, he adopted and added to the machine certain devices suggested by W., and during an experiment, apparently at first successful, promised W. “ half of what we can make ; ” but afterwards, when the experiment failed, told W. his device “ wasn’t worth a cent.” But subsequently, by an addition of Ms own, W.’s device was made eminently useful, and became a part of the macMne.

Held, that the inventor who first perfects a machine, and makes it capable of useful operation, is entitled to the patent; that persons employed, as much as employers, are entitled to their own independent inventions; but where the"employer has conceived the plan and is engaged in experiments to perfect it, no suggestion from an employer, not amounting to a new method of arrangement, which, in itself, is a complete invention, is sufficient to deprive the employer of the exclusive property in the perfected improvement.

14. Pennock v. Dialogue, 4 Wash. (C. Ct.) 538. Action for the infringement of a patent for the manufacturing leather hose, the improvement consisting in securing together the edges by metallic rivets and burs, instead of stitching. The patent covered a double row of rivets, and it was shown that the idea of the second row of rivets was adopted at the suggestion of the mechanic constructing the machine. Held, that such a suggestion was not an invention or improvement for which a patent could be obtained, nor could it invalidate the patent for the thing to which it was applied.

15. Employe's improvement of invention without employer's knowledge.] Berdan Fire-Arms Mfg. Co. v. Remington, 3 Pat. Off. Gaz. 688. Suit for the infringement of a patent. Held, (1) that an improvement which becomes necessary in the manufacture of a patented implement in order to overcome a difficulty growing out of a departure from the form of the model, and which is introduced into it by the workmen without the knowledge of the patentee, cannot be appropriated by him as his invention, (2.) If such an improvement is embodied by the assignees of the patentee in a re-issue, they cannot recover upon it against others who use it.

16. Employe's invention or discovery.] Damow v. Eastwick, 14 Fed. Rep. 40. Bill to obtain the benefit of a review of the evidence before the commissioner of patents, where two parties made application for letters patent for the same invention.

Defendant was a chemist in the plaintiff’s employ, and carried on experiments at the expense of plaintiff and at his request, leading to the discovery of a new process. Held, that the employe was entitled to a patent for the process, as against his employer.

17. Clark v. Fernoline Chemical Co., 23 St. Rep. 964. Action for services. The plaintiff was employed by the defendant in the capacity of a chemical expert. While so employed the plaintiff made some discoveries connected with chemicals and obtained patents therefor. Upon Ms refusal to assign the patents to defendant, the latter discharged him. Held, an employer acquires no right or title to discoveries made by an employee while working as a chemist in their employ, and with their material, but only aright to use the same.

18. Continental Wind-mill Co. v. Empire Wind-mill Co., 8 Blatchf. 295. Suit for the infringement of a patent of an invention made by plaintiff's assignor while in the defendant’s employ.

B. entered the employment of E., a corporation manufacturing windmills, under an agreement for a salary, and that, in regard to any patentable improvements he might make, he should receive §500 for such improvements. While in such employment, B. made certain improvements in wind-mills, using the time and tools, etc., of E., and made and sold for E. wind-mills embodying such improvements. He applied for a patent for such improvements, but, before it was granted, he left the employment of E. After the patent was granted, he assigned it to C., another corporation manufacturing wind-mills, in which he was a director and manager. Held, that C. could not maintain a suit in equity for infringing the patent.

19. McClury v. Kingsland, 1 How. U. S. 202. (The leading case.) Action by assignees for the infringement of a patent granted to plaintiff’s assignor while in the employ of defendant.

The inventor was an employe in the manufactory of defendant, and, while receiving wages, made experiments at the expense of his employer, and had his wages increased in consequence of the useful result of the experiments. He made the article invented, and permitted his employer to use it, no compensation for its use being paid or demanded ; and afterwards, during the employment, obtained a patent. Held, that these facts would justify the presumption of a license to use the invention.

20. Herman v. Herman, 29 Fed. 92. Bill to enjoin defendant from the use of a patent invented by plaintiff’s husband, and patented in her name. The inventor, while employed by a manufacturer as superintendent, had been accustomed to prepare new designs for the use of defendant’s business, for some of which he had obtained patents, and this was part of his employment and duty; he designed the “Daisy Hood” and applied for a patent therefor, the solicitor’s charge for which was paid by defendant, and defendant, for several months manufactured the design under the inventor’s superintendence and by his permission, and without further compensation to him than his salary. The inventor, having quit defendant’s employ, assigned the patent-right in the design to his wife, and organized a new firm for the manufacture of the design, to which his wife assigned the exclusive right to use the patent-right. Held, that a grant, license, or privilege to use the design was implied from the contract and relation of the parties, and that a preliminary injunction should not be granted.

21. Barry v. Crane Brothers Manuf’g Co., 22 Fed. R. 396. Bill in equity seeking an injunction and accounting by reason of alleged infringement of a patent issued to complainant. Complainant, while a foreman in defendant’s factory, secured a patent for a tool which he introduced, and continued to use in the factory, with no claim for compensation, and no express agreement on the part of the defendant to pay Mm. Complainant conducted his experiments and manufactured • the tools at defendant’s expense. Held, that complainant could not recover, but that defendant had acquired the right to use the tools so manufactured and introduced. An employe cannot introduce his patented device into his employer’s business without his employer's consent, and without a special agreement to pay him, and afterward demand royalties, or profit and damages for the use of such device, especially where the invention has been developed and brought to a practical condition at the expense of the employer.

22. Fuller & Johnson Mfg. Co. v. Bartlett, 68 Wis. 73; s. c., 31 Northwestern Sep. 747. Action to enforce the specific performance of ■an alleged implied contract to assign to the plaintiff an invention made by the defendant while in the employment of the plaintiff, and commenced before procuring patent.

Defendant, an employe of a manufacturing corporation, knowing it was about to bring out a new machine, voluntarily disclosed his ■conception of an invention of a superior machine; and, under the direction of the company, and with its materials and workmen, and at its expense, voluntarily went to work to perfect and construct such machines, and to aid in putting them on the market. Held, that an •agreement by him to absolutely assign the invention to the company would not be implied ; but that the company was entitled to a license from him to manufacture the machines at its then works perpetually, and to sell the same anywhere in the market, free from any liability for royalties, etc.

[There is an elaborate opinion citing the following cases and reviewing some of them: Gayler v. Wilder, 10 How. 493; Railroad Co. v. Trimble, 10 Wall. 379 ; Hendrie v. Sayles, 98 N. S. 546; Wesmeth v. Calvert, 1 Wood. & M. 39 ; Continental Wind-Mill Co. v. Empire Wind-Mill Co., 4 Fish. Pat. Cas. 428; 8 Blatchf. 295; Wilkens v. Spafford, 3 Barn. & A. 274; Hammond v. M. & H. O. Co., 92 N. S. 724 ; Seaman v. Aschermann, 51 Wis. 678; Appleton v. Bacon, 2 Black, 699; Binney v. Annan, 107 Mass. 94; Andrews v. Fielding, 20 Fed. Rep. 123; Hapgood v. Rosenstock, 23 Fed. Rep. 86; Stammer’s Appeal, 58 Pa. St. 155 ; McClurg v. Kingsland, 1 How. 202; Whiting v. Graves, 3 Barn. & A. 222; Chabot v. American B. H. & O. Co., 6 Fish. Pat. Cas. 71; Hapgood v. Hewitt, 119 N. S. 226; affirmed in 11 Fed. Rep. 422; Agawam Co. v. Jordan, 7 Wall. 602, 603; Collar Co. r. Van Dusen, 23 Wall. 563 ; Blandy v. Griffith, 3 Fish. Pat. Cas. 615; King v. Gedney, 1 MacArthur Pat. Cas. 444; Jolict Mfg. Co. v. Dice, 105 Ill. 649.]

23. An artist who is employed by the United- States to engrave a chart, of which the original manuscript was the property of and furnished by the government, has no right of copyright in the engraved plates or impression therefrom. 7 Op. Att. Gen. 656.

24. Surreptitious copying of patterns, plates, &c.] In Tabor v. Hoffmann, N. Y. Ct. of Appeals, 1889, to appear probably in 116 or 117 N. Y. plaintiff sued to restrain defendant from manufacturing and selling pumps made from patterns copied and designed from the patterns ■designed by the plaintiff. The complaint also asked damages.

The trial court found as facts that the plaintiff was the inventor and owner of what is known as Tabor’s rotary pump, and that he manufactured the same for sale; that he had spent much time, study, thought, labor and money to make and perfect patterns from which to manufacture the pump; that the patterns were never thrown upon the market or given to the public prior to the commencement of this action. That one Francis Walz, a pattern-maker, surreptitiously made a set of patterns, from measurements taken from the plaintiff’s patterns while they were in his possession for repairs ; that such measurements were taken and duplicates made without plaintiff’s consent or knowledge; that they were made for the defendant, who payed Walz therefor; that before the commencement of this action the defendant had commenced to manufacture pumps from such patterns so obtained, and that he knew that Walz had made the patterns from measurements taken from the plaintiff’s patterns, without plaintiff’s knowledge or consent.

Held, that as it appeared that the rival pump could not be so well or easily made from patterns produced from the pumps sold as from patterns copied from the original patterns, which latter were adjusted to allow for various shrinkages in casting, the defendant should be enjoined.

25. Murray v. Heath, 1 B. & Ad. 804. Action for damages. Defendant being employed by plaintiff to engrave plates from drawings belonging to plaintiff, took off from the plates so engraved by him a number of proof impressions which he retained for his own use. The defendant afterwards became bankrupt and the proofs of which he had so possessed himself were advertised by his assignees for sale. Held, that neither he nor his assignees were liable by the 17 G. 3, c. 57, to an action for having disposed of pirated prints without the consent of the proprietor, inasmuch as that statute applied to impressions of engravings pirated from other engravings and not to prints taken from a lawful plate.

17 G. 3, c. 57, c. 1, enacts that any person who shall within the-time there mentioned, engrave, or copy, etc., any prints, or publish, sell or otherwise dispose of any copy of any print which has been engraved in Great Britain, without express consent of the proprietor, shall be liable to an action at his suit.

26. Patent taken out after termination of service.] Hapgood v. Hewitt, 119 N. S. 226; affirming 11 Federal Rep. 422. Demurrer to bill to compel defendant to transfer to plaintiff as assignees, letters-patent for an invention made while in the employ of plaintiff’s assignors, but not patented until after the termination of the employment.

Defendant was employed by a corporation (plaintiff’s assignors) to-devote his time and skill to devising and improving plows manufactured by it. During regular working hours, with the aid of officers and other employees of the corporation, and at the expense of the corporation, he-invented a sulky plow, which was manufactured and sold by the corporation. After his employment terminated, he secured a patent on, the invention. Held, that the bill could not be sustained, because it did not set forth any agreement between the employee and the corporation that it was to have the title to the invention, or to any patent he-might obtain for it; that it only enjoyed a right to the use of the-invention, which was not assignable.

The opinion says in effect that persons are not deprived of the right to take out patents for their inventions by being in the service of others, unless they have been hired and paid to exercise their inventive faculties for their employers.

A contract, by which one person agrees to pay a sum of money for the time, labor and skill of another for a given period, gives the employer no right to an assignment of a patent that has been issued to the employee for an invention made during the period of his employment.

27. Special contracts for mental products.] Wilkins v. Spafford, 1 Holmes, 274. An employer contracted for the exclusive use and benefit of the employe’s inventive faculties and inventions during his term of service. Held that he was entitled to an exclusive license for the-use of the machines during the existence of the patents, and any extension, renewals, or re-issues of the same.

28. Heine v. Appleton, 4 Blatchf. 125. On motion for a preliminary injunction. The plaintiff, an artist, accompanied an expedition to-Japan, fitted out by the U. S. Government, as a master’s mate, with the understanding that all sketches and drawings he might make were to-be the exclusive property of the government. These sketches and drawings were¡ on his return, incorporated, with his consent, in a report of the expedition made to the navy department, and Congress ordered a large number of copies of the report to be published for distribution. Afterwards, the plaintiff undertook to obtain a copyright for some of the prints and engravings so incorporated in the report of the navy department. Motion denied. Held (1), that he was not author or proprietor of the prints and engravings in such a sense as to be capable of acquiring an exclusive right to the same after they had been given to the public. (2.) That even if, in this case, the plaintiff were the proprietor of the copyright of the prints and engravings in question, he had been employed and paid by the defendants to prepare some of the prints for publication by them, and he could not now be allowed to ask that the sale of the prints he had so prepared should be stopped by injunction.

29. Trade Auxiliary Co. v. Middlesborough Protective Asso., L. R. 40 Chan. Din. 425. The three several proprietors of three several periodicals jointly employed a person to compile for them lists of registered bills of sale and deeds of arrangement, on the terms that the copyright was to belong to the three proprietors. The three periodicals were registered under the copyright act. The compiling of these lists required skill, and involved a good deal of labor and expense. Defendant association copied and circulated among their own members so much of these lists as related to their own neighborhood, which was a very small part of the whole. The three proprietors sued to restrain this proceeding. 'Held,, that the copyright act was not to be construed as confining the copyright of a proprietor of a newspaper to articles composed on the terms that the copyright should belong to and be paid for by him alone ; that each of the three proprietors had an interest in the copyright of the lists ; that, having registered his periodical he had a right to sue to restrain infringment ; and then that association could not escape on the ground that it had copied only a small portion of the lists. Trade Auxilliary Co. v. Middlesborough, etc. Protective Asso., L. R. 40 Ch. D. 425.

30. Annin v. Wren, 44 Hun, 352 ; s. c., 8 N. Y. State Rep. 852. Action to compel the defendant, G. W., to assign certain letters patent for an invention in hand-trucks issued to him as the assignee of W. C. W., his brother, who, claiming to be the inventor of the improvements, had applied for letters patent.

The plaintiff was engaged in the manufacture of iron trucks and wheelbarrows, and employed the defendant to apply himself personally to the development of the truck and wheelbarrow business. The defendant during such employment made drawings of proposed improvements in the manufacture of the trucks and wheelbarrows, and secretly made application for letters patent, which he assigned to his brother George, who obtained them with full knowledge of any rights which the plaintiff might have thereto. Appeal from judgment for plaintiff sustained. Held, that the patent belonged to the plaintiff by the agreement, as it was the result of investigation under the contract for defendant’s services for purposes of investigation and invention.

31. Burr v. De LaVergne, 102 N. Y.415. Action to compel defendant to transfer and assign to plaintiff one-half the interests held by the former in certain letters patent, and for an accounting, etc.

Appeal from judgment of the Gen. T. Supm. Ct., which affirmed a judgment in favor of plaintiff, entered on a decision of the court on trial at Special Term.

The parties were copartners, and defendant agreed with a third person, M., to bear the expense of experiments and testing an invention, for a one-half interest therein. Defendant and plaintiff then agreed that the firm should bear the expense, and each of them should have an equal interest in the contract with M. The experiments were accordingly carried on at the firm’s expense, various inventions were made, and patents therefor issued to defendant and M. jointly, and one to defendant alone. Defendant claimed, in this action, that the patents were not within the agreement, as the inventions covered by the patent were not the inventions of M. alone, but of M. and defendant jointly. Held untenable; that, while it was to be assumed that the patentees were joint inventors, as between defendant and plaintiff the inventions were to be considered as those of M. alone, and that plaintiff was entitled to an interest in all the patents, including the one issued to defendant .alone.

32. Binney v. Annan, 9 Am. R. 10 ; s. c., 107 Mass. 94. Bill in equity praying for a decree to compel the assignment of letters patent, etc.

The inventor of a machine employed a mechanic to perfect the machine, procure a patent for it, and assign the patent to him. The mechanic procured the patent, but refused to assign it. Demurrer to jurisdiction overruled, and held that the court would compel the assignment.

38. Callahan v. Myers, 128 U. S. 617; 32 Lawy. ed. 547; 9 Sup’m. Ct. Rep’r. 177 ; 28 Cent. L. J. 115. The official reporters of the decisions of the supreme court of Illinois, authorized a law-publishing house to take out a copyright for the volumes. Held, that the copyright was valid ; the reporter being the “author,” within the meaning of the copyright laws, of such matter in the volumes as was the result of his intellectual labor; and that it was immaterial that he was the recipient of compensation from the State for his services as reporter.

34. Ownership of boohs used by officer.] By devoting books and papers appertaining to the office of street commissioner of the city of New York to the uses of that office, the city, which originally owned, them, has consented to part with all its rights inconsistent with their use for the purposes of the office. The city has no right to possession of the books adverse to the officer, or to interrupt possession or use of them by him. Conover v. Mayor, etc. of N. Y., 5 Abb. Pr. 593.

35. Records of a corporation are presumptively its property if kept by an officer for its use. See, for instance, Sawyer v. Baldwin, 11 Pick. 492.

36. They are competent evidence as its records although the original volumes were purchased and are claimed as the individual property of a member. State v. Goll, 32 N. J. L. 285.

37. Brown v. Taylor’s Committee, 32 Gratt. (Va.) 135, overruling Bell v. Moon, 79 Va. 341. If A. writes an obligation to B. on the flyleaf of a book belonging to C., the paper belongs to C., but this fact, ■even in addition to the possession, is no evidence that the obligation belongs to C.

38. Author and annotator.] Literary property, even when secured by copyright, differs in many aspects from property in personal chattels, and the tenure of the property is governed by somewhat different rules; but the difference in the nature and tenure of the property is much greater before copyright is taken out, and while the right to that protection for the same remains entirely inchoate. Title to the notes or improvements prepared for a new edition of a book previously copyrighted may, in certain cases, be acquired by the proprietor of a book from an employe, by virtue of the contract, of employment, without any written assignment; but, when so acquired, the tenure of the property depends upon the terms of the contract. Where the contract was that the proprietor of the book should take the exclusive right to the contributions for two successive editions, together with the right to copyright the same for the protection of the property;—Held that this was not a mere license, but the inchoate right of copyright unquestionably passed to the proprietor of the book. [7 Wall. 683; 2 Story, 564]. Lawrence v. Dana, 4 Cliff. 1; s. c., 2 Am. L. T. N. S. 402.

Where the editor of a second subsequent edition of an annotated work makes notes which may be separated and distinguished from those contained in the original, he is entitled to a copyright for them; but if they are so connected with the original that they cannot be separated, they infringe the original, lb.

39. Gratuitous service.] Where services in editing and preparing a book for publication were, by agreement, gratuitous as to two editions thereof, held that the contributions of the editor became the property of the proprietor of the work just as effectually as if the editor had been paid for his work on those editions, and the title to the same vested in the proprietor of the original work, as the labor was done, to-the extent of the gift, subject to the trust in favor of the donor as-necessarily implied by the terms of the arrangement.

Delivery was made as the work was performed, and the proprietor of the book needed no other muniment of title than what was acquired when the agreement was executed. II).

The proprietor needed no assignment from the contributor, because the contributor had no title to the contributions, nor any inchoate right of copyright in the editions of the work. Lawrence v. Dana, 4 Cliff. 1; s. c., 2 Am. L. T. N. S. 402.

40. Collaborateurs.] French v. Maguire, 55 How. Pr. 471 (Supm. Ct. Sp. T.). Motion to continue an injunction order restraining the theatrical performance of the play known as “ Diplomacy,” an unpublished drama, of which the plaintiff alleges himself to be the exclusive-owner. The drama was originally written by a Frenchman and called “ Dora;” he assigned it to an Englishman who hired two playwrights to translate and adapt it to the American and English stage under another name, and who then assigned it to the plaintiff. Motion allowed. Held, that, to protect a person in the possession of an unpublished manuscript of this description, the law does not require that it shall be-the exclusive work of one individual. It may be that of one, or many acting in co-operation, and whichever may be the case, the right is substantially the same, and equally entitled to the protection of courts of justice. The same reasons that will induce security to the individual will extend it to all whose joint action may contribute to the result finally attained.

41. Partner's invention.] Slemmer’s Appeal, 58 Pa. St. 155. Action by three of the partners against the other, who was the inventor, to compel an assignment of the patent obtained by the latter for his-invention used by the firm, and made by him as a member of the firm, and while engaged in the business of the firm. Held (reversing judgment for plaintiffs) that defendant, as the inventor, was the lawful owner of the patent in his own right, and the firm only entitled to a license to use the invention; yet held, further, that the plaintiffs were jointly and severally entitled to such license.

42. Statutory requirement of assignment not applicable.] The U. S. statute requiring assignment of patents to be in writing refers only to patents in existence, and does not serve to prevent a partner from compelling a copartner who takes out a patent in his own name for an. invention equitably belonging to the firm, to assign it to the firm. Burr v. De La Vergne, 19 Weekly Dig. 573.

43. Where literary matter is prepared by one person for another, and a copyright obtained by the person for whom the service has been performed, such copyright is valid, notwithstanding the absence of a written assignment by the person who prepared the matter. [Reviewing several cases], 1st Circ. (Mass.), 1869, Lawrence v. Dana, 4 Cliff. 1 ; 2 Am. L. T. N. S. 402.

44. Liability as to infringements on third ■persons.] Taylor v. Gilman, 24 Fed. Rep. 632. Action for the infringement of plaintiff’s copyright, by the agents of the defendant.

Defendant’s agents had exclusive control of his tea business, which included advertising it properly. The plaintiff had copyrighted a chart consisting of a title-page and three pages of tabulated election statistics. The agents of defendant reprinted the chart, substituting for the matter on the title-page, an advertisement of defendant’s business—but without the knowledge of defendant. Held, that there could be no recovery from the principal.

45. Thornton v. Schreiber, 124 U. S. 612. Qui tam action under Rev. Stat. § 4965, in relation to copyrights. Defendant was employed by a business house, and held a principal place in the establishment. He occupied the same building with them, which was subject to their ■control; he was entrusted by his employers under their direction and on their behalf with the custody and possession of printed copies of a copyrighted photograph, printed in violation of the provisions of Rev. Stat. § 4965. Held, that defendant had not such possession of them as would entitle the proprietor of the copyright to proceed against him for a forfeiture of one dollar for every sheet under that section.

46. Remedies.] As to the relative jurisdiction of State and federal ■courts, in actions affecting inventions, and the right to royalty, see Dale Tile M’f’g. Co. v. Hyatt, 125 U. S. 49 (and cas. cit.), where also will be found the opinion of the court of appeals of this State, of which there is only a memorandum in 106 N. Y. 651. Continental Store Service Co. v. Clark, 100 N. Y. 365.

47. There is a remedy in the State courts for the protection of literary property by injunction before publication, independent of the copyright laws and the remedy thereon in the federal courts, see Hoyt v. Mackenzie, 3 Barb. Ch. 320 ; Palmer v. De Witt, 47 N. Y. 532; affl’g 2 Sweeney, 530.

48. Nichols v. Marsh, 28 N. W. Rep. 699. Action to compel defendants to convey to plaintiff the right to use a certain improvement, -for which defendants claimed to own a patent. Plaintiffs claimed that defendants contracted to transfer to them a certain patent right owned, by defendants. Defendants had, previous to such action, begun an action againt plaintiffs in the United States courts, for the infringement of the patent in question, and this action had not been determined. The.defendants sought to set up that action as a bar to the suit brought by plaintiffs. Held, that the point in consideration was not involved in the prior suit, and was not one of which the federal court had peculiar jurisdiction, and that, therefore, such action was not a bar.

49. Evidence.] For the mode in which to prove an assignment express or implied, see Abb. Trial Brief on the Facts, 61, etc. ; its-abandonment, Id. 63 ; the intent of the parties, Id. 194, etc. ; timespent in service, Id. 268.

50. Action for interfering with employment.] The liability of a third person who attempts to divert the service of an employe is considered at much length by Mr. John H. Wigmore in 21 Am. L. Rev. 764.

51. In the case of an apprentice, employed by the defendants, without the consent or knowledge of his master, the master is entitled to his earnings, whether the defendants did or did not know that he was an apprentice. [1 Ves. Sen. 83, 48; 1 Salk. 68; 1 Comyn on Contracts, 224, 225.] In case of a hired servant, the employer must have notice, to make himself answerable. [2 Lev. 63 ; 1 Black. Comm. 429.] James v. Le Roy, 6 Johns. 273. Compare Lewis v. Trickey, 20 Barb. 387.

52. Using employer's name on sign.] Van Wyck v. Horowitz, 39 Hun, 237. Action to enjoin defendant. The defendant, who had been hired as a watchmaker and clerk by the plaintiff, a jeweler, having left his employment, opened a store a few doors from that of the plaintiff, and set up a sign “A. Horowitz, late with J. P. Van Wyck ” (the plaintiff.) Held, that the plaintiff could not restrain him from using his. (plaintiff’s) name on the sign.  