(257 F.) "Notice. "The 'Stark Trees' have been the product of the nursery business of the Stark family since the year 1816, and this nursery is still carried on by successors of the original Stark family at Louisiana, Missouri; that William P. Stark, is a member of that family and was connected for over twenty-five years with, and learned the business from, successors of the original Starks: that our business is conducted at Neosho, Missouri, and has no connection whatever with the nursery business of the Stark Bros. Nurseries & Orchards Company, at Louisiana, Missouri.” [3] But we are of the opinion that there was error in decreeing that appellee recover all gains and profits which appellants have derived or received by reason of the infringement of appellee's trademark, beginning March 11, 1914. Section 28 of the Trade-Mark Act of February 20, 1905, 33 Stat. 730 (section 9514, U. S. Comp. St. 1916), after prescribing that notice of the registration of the mark be given by affixing on the mark or label the words "Reg. U. S. Pat. Öff." which was not done by appellee, provides: "And in any suit for infringement by a party failing so to give notice of registration no damages shall be recovered, except on proof that the defendant was duly notified of infringement, and continued the same after such notice." As no notice was given by appellee to appellants of infringement of the registered trade-mark, although the words required by the statute were not printed on its trade-mark labels, until a few days before the institution of this action, no damages under this act can be recovered for an infringement of the registered trade-mark before that time in this action. The trial court in its decree limited the damages for infringing the trade-mark to that time, but as to the gains and profits held that the appellants are chargeable for unfair competition from March 11, 1914, when appellee had first complained. that appellants' advertising matter constituted unfair competition. As the jurisdiction of the court below depended solely on the fact that there was a federal question by reason of the registration of the trade-mark under the act of Congress, there being no diversity of citizenship, there can be no liability on the charge of unfair competition. prior to the notice under the Trade-Mark Act. To entitle one to recover in such a case, the unfair competition must be a part of the same transaction, to wit, a violation of the act of Congress, and liability thereunder. It must be an aggravation of the infringement of the registered trade-mark, to give the court jurisdiction to award. damages. A. Leschen Co. v. Bascom Co., 201 U. S. 166, 26 Sup. Ct. 425, 50 L. Ed. 710; Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446, 460, 31 Sup. Ct. 456, 55 L. Ed. 536; T. B. Wood's Sons Co. v. Valley Iron Works (C. C.) 166 Fed. 770; Ross v. H. S. Geer Co. (C. C.) 188 Fed. 731, 734; Electric Boat Co. v. Lake Torpedo Boat Co. (D. C.) 215 Fed. 377; Planten v. Gedney, 224 Fed. 382, 386, 140 C. C. A. 68, 72; U. S. Bolt Co. v. Kroncke Hardware Co., 234 Fed. 868, 148 C. C. A. 466; Mallinson v. Ryan (D. C.) 242 Fed. 951. In the case at bar the unfair competition only became a part of the same transaction as the infringement of the registered trade-mark, after the notice had been given, as appellee's trade-mark labels had not the words required by the act of Congress on them: "Reg. U. S. Patent Office." Had no notice been given by appellee, it could not have recovered any damages. This was expressly decided by this court in Rossmann v. Garnier, 211 Fed. 401, 407, 128 C. C. A. 73, 79. None of the authorities relied on by counsel for appellee is in point. In Jacoway v. Young, 228 Fed. 630, 143 C. C. A. 152, the infringed trade-mark label had printed on it the words "Registered U. S. Patent Office," therefore that was notice. Ludwigs v. Payson Mfg. Co., 206 Fed. 60, 124 C. C. A. 194, and Detroit Show Case Co. v. Kawneer Mfg. Co., 250 Fed. 235, 162 C. C. A. 370, were actions for infringement of patents, and it was held that a claim for unfair competition in connection with the sale of the infringing article, may properly be joined. But see Geneva Furniture Co. v. Karpen, 238 U. S. 254, 259, 35 Sup. Ct. 788, 59 L. Ed. 1295. Shrauger & Johnson v. Phillip Bernard Co. (D. C.) 240 Fed. 131, decided by Judge Wade, not only fails to sustain counsel's contention, but is an authority to the contrary. While Judge Wade makes the statement quoted by counsel for appellee, he proceeds: "In certain cases, where there was combined the charge of infringement, and also unfair competition, courts have held that, even though the claim of infringement was decided in favor of the defendant, the court still could retain jurisdiction upon the question of unfair competition; but the large majority of the cases are the other way." After reviewing a large number of authorities, he holds: "If a bill presented two separate counts, stating two separate and independent causes of action, one for a patent infringement, and the other for unfair competition, entirely independent of the infringement, I should hold that the cause of action for unfair competition should be stricken out. The court has no such jurisdiction conferred by statute, and the rule contended for relates rather to the practice of a court of equity, than it does to the jurisdiction of the court." When the case was at a later day finally heard before Judge Reed, he sustained a motion to dismiss the petition as to the claim for infringing the plaintiff's alleged trade-mark, and for unfair competition for want of jurisdiction. 247 Fed. 547, 550. Gains and profits made before notice was given under the TradeMark Act, in the absence of a label bearing the inscription prescribed by the act of Congress, are independent of the act of Congress, and can only be recovered under the rules established by courts of equity in actions for unfair competition. Such an action cannot be maintained in a national court in the absence of a diversity of citizenship. As was held in Standard Paint Co. v. Trinidad Asphalt Co., supra: "The opposite parties to the suit are citizens of different states, and while this diversity of citizenship was not necessary to give the Circuit Court jurisdiction of the case in so far as it involved the validity of the trade-mark, it was necessary to give the court jurisdiction of the issue of unfair competition." (257 F.) Other questions have been discussed by counsel, and have received our careful consideration, but we do not deem it necessary to pass on them in this cause. The decree of the court below will be modified, by adding to the injunction clause the words hereinbefore set forth, and that the appellants be charged with the gains and profits made by them by reason of the unfair competition arising from the infringement of appellee's registered trade-mark, and the damages, if any, which appellee has sustained by reason thereof since the beginning of this action. The costs of this appeal will be taxed, two-thirds to the appellants and one-third to the appellee. BALBAS v. UNITED STATES et al. (Circuit Court of Appeals, First Circuit. April 5, 1919.) 1. CRIMINAL LAW 1129(1)—APPEAL-ERRORS ON FACE OF RECord. 2. INDICTMENT AND INFORMATION 125(19)—DUPLICITY-ESPIONAGE ACT. An indictment under Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), alleging in one count that accused had caused and attempted to cause insubordination, etc., was not duplicitous, simply alleging two modes of committing one offense, especially in view of Rev. St. § 1024 (Comp. St. § 1690), relating to joinder of counts. 8. WAR 4-ESPIONAGE ACT-ELEMENTS OF OFFENSE. An indictment under Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), charging the commission of the first offense set out therein, willfully making or conveying "false reports or false statements with intent to interfere with the operation or success of the military or naval forces of the United States, or to promote the success of its enemies," must allege that statements made by defendant were false and willfully made. 4. WAR 4-ESPIONAGE ACT-ELEMENTS OF OFFENSE. An indictment charging a publisher with the commission of the second and third offenses set out in Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), need only allege that publications caused or were an attempt to cause insubordination, etc., or that they obstructed the enlistment or recruiting service of the United States, and that they were willfully made with such intent; it being immaterial whether statements in the articles were false or not. 5. WAR 4-ESPIONAGE ACT-INDICTMENT. Under Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), where articles published by defendant were set forth at length in indictment, it was not necessary to specify particular statements in them by which it was alleged the defendant committed the offense with which he was charged. 6. INDICTMENT AND INFORMATION 140(1), 150-SUFFICIENCY OF INDICTMENT -QUESTION FOR COURT. In a prosecution under Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), whether language used by defendant in newspaper articles was apparently adapted to create an offense became, on demurrer and a motion to quash, a question for the court. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes 257 F.-2 7. WAR 4-ESI TONAGE ACT. A newspaper article, disclosing that the defendant, the publisher, as one of 288 residents of Porto Rico who had declined American citizenship, was opposing what he regarded as an unwarranted application of Selective Service Act (Comp. St. 1918, §§ 2019a, 2019b, 2044a-2044k) to them, held insufficient to show that defendant by its publication caused or attempted to cause insubordination, mutiny, disloyalty, and refusal of duty, or obstructed the enlistment or recruiting service of the United States, or that he intended so to do, under Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c). 8. WAR 4-ESPIONAGE ACT-INDICTMENT-SUFFICIENCY. A newspaper article, complaining of Selective Service Act (Comp. St. 1918. §§ 2019a, 2019b, 2044a-2044k), or constructions thereof by the provost marshal of the United States, held not so apparently free from language adapted or calculated to create insubordination, etc., or to obstruct the enlistment or recruiting service with the intent. etc., that court could · have sustained a demurrer to counts of an indictment setting it forth a a violation of Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c). 9. CRIMINAL LAW 371(1)-ESPIONAGE ACT-PUBLICATIONS-EVIDENCE In a prosecution under Espionage Act June 15, 1917, tit. 1. § 3 (Comp. St. 1918, § 10212c), where the intent of the defendant by publication to commit the offense of causing or attempting to cause insubordination, etc., was one of the issues submitted to the jury, publications of the defendant in earlier issues of his paper were admissible in evidence to show that defendant had no unlawful intent. 10. WAR 4-ESPIONAGE ACT-PUBLISHING ARTICLES TO CAUSE INSUBORDINATION AND OBSTRUCT ENLISTMENT-ELEMENTS. In a prosecution under Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), it was not only necessary to prove beyond a reasonable doubt that the defendant willfully published newspaper articles with the intent to cause insubordination, etc., or to obstruct the enlistment and recruiting service, but also that this intent had been carried into effect by language adapted to produce these results. 11. WAR 4-ESPIONAGE ACT. Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), in referring to the influencing and disloyalty, etc., in the military forces of the United States, should not be construed so broadly as to include the influencing of all the able-bodied men in Porto Rico, especially those who had renounced American citizenship, whether they were within the class who were obliged to register or not. 12. WAR 4-ESPIONAGE ACT-SUFFICIENCY OF EVIDENCE. In a prosecution under Espionage Act June 15, 1917, tit. 1, § 3 (Comp. St. 1918, § 10212c), evidence held insufficient to sustain a finding that defendant published newspaper articles willfully, with the intent to create insubordination. mutiny, etc., or obstruct the recruiting or enlistment service of the United States. Appeal from the District Court of the United States for the District of Porto Rico; Peter J. Hamilton, Judge. Vincente Balbas Capo was convicted of a violation of the Espionage Act, and he brings error. Reversed and remanded. Boyd B. Jones, of Boston, Mass. (Henry G. Molina, of San Juan, Porto Rico, on the brief), for plaintiff in error. Thomas J. Boynton, U. S. Atty., of Boston, Mass. (Alonzo H. Garcelon, Sp. Asst. U. S. Atty., of Boston, Mass., on the brief), for defendants in error. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes (257 F.) Before BINGHAM and JOHNSON, Circuit Judges, and ALDRICH, District Judge. JOHNSON, Circuit Judge. This is a writ of error to review a fina! judgment of the district court of Porto Rico, imposing a fine of $1,000 and imprisonment for the term of two years upon the defendant below, upon each of four counts in an indictment in which the defendant was charged with violation of title 1, § 3, Act of June 15, 1917, c. 30, 40 Stat. 219 (Comp. St. 1918, § 10212c), known as the Espionage Act. There were six counts in the indictment. In the first and fourth counts the defendant below was charged with having committed the offense created by the first clause in the Espionage Act, viz.: The willfully making or conveying false statements with intent to interfere with the operation and success of the military and naval forces of the United States, to the injury of the United States. The fourth count was quashed upon motion of the defendant, and the jury returned a verdict of not guilty upon the first. In the remaining four counts he was charged with committing the second and third offenses created by the following clauses in the act: "And whoever, when the United States is at war, shall willfully cause, or attempt to cause, insubordination, disloyalty, mutiny, or refusal of duty, in the military or naval forces of the United States, or shall willfully obstruct the recruiting or enlistment service of the United States, shall be punished by a fine of not more than $10,000 or imprisonment for not more than twenty years, or both." In the second count he was charged with having committed the offense of causing and attempting to cause insubordination, etc., by "unlawfully, willfully, knowingly and feloniously publishing" in a certain paper or periodical, known as the "Heraldo de las Antillas," in the city of San Juan, Porto Rico, on or about the 27th day of October, 1917, certain false statements in the Spanish language, the English translation of which is as follows: "Recruiting in Porto Rico. "According to recent notices, the quota of recruits of Porto Rico which had been fixed at 12,000 men has been increased to 17,000, of which the first ones will be white and the rest colored. "It is said that the recruiting will begin within the first ten days of November next. "We understand that Porto Rico contributes to the National Army proportionally a larger number of soldiers than any other state in the Union, and larger than any other territory, as, for instance, Hawaii, which does not contribute any. "What do the politicians say to that, who attribute to themselves the monopoly of the defense of the people's interests? "They say nothing. "They are busy defending some positions that they have paid for." It was alleged in said count that— "The object and intent of the said words made, published and conveyed as aforesaid was to cause insubordination, disloyalty, mutiny and refusal of duty in the military and naval forces of the United States, peace and dignity of the United States." against the |