Company to whom he sold, lawfully conducted the manufacturing business at Fourvoirie, and, of course, were entitled respectively to sell their product here. They were entitled to state that they made it and the the place and circumstances of its manufacture. In short, they were not debarred from making a statement of the facts, including the appointment of the liquidator and the French Company's succession by virtue of his sale, provided it was made fairly and was not couched in language, or arranged in a manner, which would be misleading and would show an endeavor to trade upon the repute of the Monks' cordial. It is also to be noted that the words "Grande Chartreuse" form a part of the name of the French Company which it, and the defendant as its representative, had a right to use in lawful trade. But neither it, nor the defendant, was entitled to use the word "Chartreuse" as the name or designation of the liqueur it manufactured, and in any other use of that word, or in any reference to the Monks, in its statement of the facts it was bound by suitable and definite specification to make clear the distinction between its product and the liqueur made by the Monks.

These considerations, undoubtedly, led the court below to modify the decree by inserting the words-"unless so used as clearly to distinguish such liqueur or cordial from the liqueur or cordial manufactured by the complainants." But this insertion was made in connection with that portion of the injunction which related to the trade-mark, and this, we think, was error. It amounted, by reason of the juxtaposition with what preceded, to a permission to the defendant to use the trade-mark "Chartreuse" or that word as the name or description of its liqueur, provided it were distinguished from the liqueur of the Monks. This was inconsistent with the decree as to the ownership of the trade-mark.

The modification, in this form, should therefore be

struck out, but more completely to adapt the remedy to conditions disclosed, there should be inserted in the fourth paragraph of the decree in that portion which contains the injunction against unfair trade-a provision restraining the use of the word "Chartreuse" in connection with the sales of liqueur not made by the Monks, as the name of or as descriptive of the liqueur, or without clearly distinguishing it from the Monks' product.

The decree will be amended accordingly, as shown in the margin.1

After the decision by the court below, application was made by the complainants for an injunction against the use by the defendant, in connection with its liqueur, of the words "Pères Chartreux." The injunction was not granted, but, the parties having been heard, the court ad

14. It is further ADJUDGED, ORDEred and Decreed that defendant, its associates, successors, assigns, officers, servants, clerks, agents and workmen and each of them be and they hereby are perpetually enjoined from using in this country or in any possession thereof, in connection with any liqueur or cordial not manufactured by complainants, the trade mark "Chartreuse" or any colorable imitation thereof or the fac-simile signature of L. Garnier or any colorable imitation thereof or any of the trade marks above referred to or any colorable imitation thereof; and they and each of them are likewise perpetually enjoined from importing or putting out or selling or offering for sale, directly or indirectly within this country or in any possession thereof, any liqueur or cordial not manufactured by complainants in any dress or package like or simulating in any material respects the dress or package heretofore used by complainants-and in particular from making use of any label or symbol like or substantially similar to those appearing on "Complainants' Exhibit Defendant's Liqueur," being the bottle now on file as an exhibit in this Court—and from using the word "Chartreuse" in connection with the importing, pulling out, or sale of such liqueur or cordial, as the name of or as descriptire of such liqueur or cordial, or without clearly distinguishing such liqueur or cordial from the liqueur or cordial manufactured by the complainant-and from in any wise attempting to make use of the good will and reputation of complainants in putting out in this country any liqueur or cordial not made by complainants.

judged the defendant in contempt and imposed a fine. The order was reversed by the Circuit Court of Appeals, and the complainants have applied for a writ of certiorari, which is granted.

In the opinion of the Circuit Court of Appeals upon the appeal from the decree on the main issue, there were set forth two forms of labels which, it was suggested, might properly be used by the defendant, printed in any language. In the contempt proceeding it was shown that the defendant followed closely one of these forms, but used in place of the words "Carthusian Monks," as these there appeared, the description "Pères Chartreux."

In view of the language of its opinion, and the permission it implied, it is clear that the court rightly held that the defendant should not be fined for contempt. But, in saying this, we do not wish to be understood as approving the suggested forms of labels, for they seem to us objectionable in view of the arrangement of the inscription and the special prominence given to the words "Grande Chartreuse." Nor does the making of a fair and adequate statement as to the liqueur of the defendant, its origin and manufacture, require the use of the words "Pères Chartreux," and we are unable to escape the conclusion that such use, in the manner shown, was to serve the purpose of simulation, and to draw to the defendant's liqueur the reputation of that of the Monks, contrary to the provisions of the decree.

For the reasons we have stated, the order of the court below in the contempt proceeding is affirmed, but without prejudice to any future application.

The decree is reversed and the cause is remanded with directions to enter a decree in favor of the complainants, amending the decree entered in the Circuit Court in accordance with this opinion; and the order in the contempt proceeding is affirmed without prejudice to any future application.

221 U.S.

Syllabus.

AMERICAN LITHOGRAPHIC COMPANY v.
WERCKMEISTER.

ERROR TO THE CIRCUIT COURT OF APPEALS FOR THE SECOND CIRCUIT.

No. 115. Argued April 10, 1911.-Decided May 29, 1911.

The forfeiture for infringement of copyright prescribed by § 4965, Rev. Stat., is not only for every copy found in possession of the infringer, but in the alternative for every copy by him sold. Where a distinction is plainly made in an act of Congress prescribing penalties as to different classes of the offense, the court need not search for the reason for making the distinction but must give it effect. Under § 4965, Rev. Stat., no penalty for infringement can be recovered with respect to prints, photographs, etc., except for sheets found in defendant's possession, and there cannot be two actions as to the same copies, one for replevin and the other for penalty; but with respect to paintings, statues and statuary an action can be brought for penalties on copies sold by the infringer and not included in those replevied in another action. Werckmeister v. American Tobacco Co., 207 U. S. 375; Hills v. Hoover, 220 U. S. 334, distinguished.

The authority to issue writs conferred on courts of the United States by § 14 of the Judiciary Act of 1789, and § 716, Rev. Stat., includes the authority to issue subpoenas duces tecum; and it was not the purpose of § 724, Rev. Stat., to interpose an obstacle with respect to the issuance of such subpoenas.

The act of July 2, 1864, c. 210, § 3, 13 Stat. 351, now Rev. Stat., § 858, removing disabilities of witnesses on account of being parties to the action removed whatever obstacle existed as to issuing subpoenas duces tecum to parties.

Section 860, Rev. Stat., providing that no pleading or discovery obtained from a party or witness by means of judicial proceeding shall be used against him in any criminal proceeding, relates to using the evidence in a subsequent proceeding.

A corporation defendant in a suit to enforce penalties under § 4965, Rev. Stat., for infringment of copyright is not entitled under the Fourth or Fifth Amendment to object to the admission of evidence of entries in its books produced under a subpœna duces tecum. Wilson v. United States, ante, p. 361.

Argument for Plaintiff in Error.

221 U. S.

THE facts, which involve the construction of § 4965, Rev. Stat., are stated in the opinion.

Mr. Wm. A. Jenner for plaintiff in error:

Section 4965 is a penal statute, and prosecutions under it, although civil in form, are essentially criminal prosecutions. See Backus v. Gould, 7 How. 798, 811, construing the sixth section of the act of February 3, 1831, corresponding to § 4965. Bolles v. Outing Co., 175 U. S. 262, 264; Werckmeister v. Am. Tobacco Co., 207 U. S. 375, 381.

Discovery, i. e., production of books and papers, will not be ordered in chancery in aid of an action to enforce penalties. See 2 Story's Eq. Jur., §§ 1319, 1494; 2 Daniel's Ch. Pl. & Pr. 1557; 2 Beach, Mod. Eq. Jur., § 871; 2 Story, Eq. Jur., § 1494; Horsburg v. Baker, 1 Pet. 232; Boyd v. United States, 116 U. S. 616, 631; United States v. Saline Bank, 1 Pet. 100; Counselman v. Hitchcock, 142 U. S. 563.

The exemption has always been allowed in actions for penalties under the copyright and patent laws. Atwill v. Ferrett, 2 Blatchf. 39; Johnson v. Donaldson, 18 Blatchf. 287; 1 Daniel's Chancery Pr., 4th Am. ed., 563; Story's Eq. Pl., § 575; Snow v. Mast, 63 Fed. Rep. 623; Daly v. Brady, 69 Fed. Rep. 285. Section 724 has been applied to exempt from production in penalty cases against corporations. United States v. National Lead Co., 75 Fed. Rep. 94.

The compulsory production of defendant's books and the obtaining of evidence therefrom in support of plaintiff's case was error, and the rights of plaintiff in error under Rev. Stat., §§ 724 and 860 were violated by the compulsory production of its books and the compulsory reading in evidence by Mr. Eddy, its treasurer, of entries therefrom. The subpoena duces tecum was not rightfully available to the plaintiff to obtain production of books in a penalty action. Section 724 governs the production of books in an action at law. Under & 724 defendant could not rightfully be compelled to produce its books. As to