In the November issue of Scientific American, Teller demonstrates "how to do a magic trick." The trick is "The Miser's Dream," and what is really interesting is the use of psychology--social and behavioral cues.
Moving on, Penn &Teller use the "saw the lady in half" illusion to demonstrate how easily the mind plays tricks on us.
This illusion has been the subject of several lawsuits, among them Goldin v. Clarion Photoplays, and Goldin v. R. J. Reynolds Tobacco. In Goldin v. Clarion Photoplays (202 A.D. 1; 195 N.Y.S. 455 (1922), the magician Horace Goldin obtained an injunction against the defendants, one of them a film producer; the film the defendants wanted to exhibit purported to show how a lady could be sawn in half. While the method might not have been exactly how Mr. Goldin did it, he claimed that the illusion was sufficiently close to his to deprive him of the fruits of his act, and he succeeded in demonstrating to the court that he had repeatedly obtained injunctions against others who had tried to infringe on his rights.
The following facts satisfactorily appear from the affidavits submitted on the motion. Plaintiff for twenty-five years last past has been engaged in the theatrical profession in this country and elsewhere throughout the world, presenting to the public in theatres and other places of amusement, new, novel and extraordinary productions more particularly known upon the stage as illusions or magic. The success of these illusions depends upon the inability of the average audience to grasp by observation the method employed by the performer, and their value, therefore, depends upon the degree of mystery in which the performer is able to envelop the means which he uses to accomplish the end.
Beginning in 1911 plaintiff was engaged in exhibiting an act which he had conceived some years before, known as "Vivi Section," which consisted of an illusion by which various parts of the human body were apparently severed therefrom and subsequently joined together. This act plaintiff produced himself, or it was shown under license granted by him, in Great Britain, Egypt, China, Japan and Java, among other countries. As the result of his experience with this act, plaintiff conceived the idea that the illusion would be more effective if an entire body were apparently separated into two parts and, after devoting a great deal of time and thought to the subject, he finally, in the year 1919, perfected such an illusion and offered it for exhibition by himself, under the name "Sawing a Woman in Two" or "Sawing a Lady in Half." It was offered at that time to one Ringling who was interested in circus shows as well as in the production of stage illusions.
In April, 1921, plaintiff entered into a contract with the leading vaudeville theatres in the United States under the direction of the Keith interests, for the production of the said illusion upon the stage, and since that time he has publicly presented the same in the leading vaudeville theatres in this country, either in person or through other performers, to whom he delegated the right to use the apparatus or other properties necessary. The act was produced in first-class theatres, the remuneration received by plaintiff under his contracts amounted in some weeks to more than $ 2,000, and he had reason to believe that he could secure bookings for the act for an unlimited period of time, as it was in great demand due to its drawing power and the apparent inability of audiences to grasp or explain the so-called mystery. The act has always been produced by plaintiff under the title "Sawing a Woman in Two" or "Sawing a Lady in Half" which he himself devised and first used, and these titles have become identified with plaintiff's name to such an extent that theatre managers and the public immediately connect the two.
As one of the results of plaintiff's success, many imitations of his act have been attempted to be given by other persons, and he has been compelled to apply for injunctions against the imitators; he has obtained such injunctions in the District Court of the United States for the Southern District of Illinois, the District Court of the United States for the Western District of Pennsylvania, and the Court of Common Pleas in Marion county, in the State of Ohio.
Plaintiff has continuously asserted his sole right to the production of the illusion in question and has advertised in the theatrical newspapers to that effect.
The defendants are engaged in the motion picture business, the Clarion Photo Plays, Inc., being a manufacturer of such pictures, and the defendant Alexander Film Corporation being a producer thereof. The first named defendant has produced a motion picture film advertised by it under the title "Sawing a Lady in Half," which as has been shown is the title used for years by plaintiff in advertising his illusion and which has become connected and associated with his name in that regard. The second named defendant has acquired from the other defendants positives and negatives of the film, by purchase or otherwise, with the right to exhibit the same in the State of New York and elsewhere, and with the further right to license and contract with exhibitors to exhibit such film. While the details of the illusion purporting to be exposed by the defendants vary in some particulars from the manner in which plaintiff produces his illusion, the conclusion cannot be escaped that the purpose of the defendants in the making and exhibition of their picture is to unlawfully and unfairly take advantage of the success which has rewarded the plaintiff's initiative and to deprive him of the fruits of his ingenuity, expense and labor. The main object of the film in question is to portray the severing of a human being into two parts and the restoration thereof intact. Not merely have defendants imitated or copied the illusion of which plaintiff is the creator, but they have undertaken to give a title to their picture which is precisely the same title under which the plaintiff has continuously produced his act. The defendants claim that plaintiff is not the creator of a new and unusual act and did not devise the illusion in question. But the evidence sought to be adduced in behalf of that contention is not convincing and by no means answers the plaintiff's claims. For example, defendants claim there is no novelty in the illusion because in the British Museum there is an Egyptian papyrus which contains an account of a magical seance given by a certain Tchatchaem-ankh before King Khufu, B. C. 3766, and wherein it is stated of the magician: "He knoweth how to bind on a head which hath been cut off," and in proof of this they refer to a publication called "Magic" written by one Albert A. Hopkins, and published in New York city in 1897. But upon examination of the said book it appears that the remaining part of the sentence in question is "he knoweth how to make a lion follow him as if led by a rope, and he knoweth the number of stars in the house (constellation) of Thoth," but while the author of the books suggests that the first of these alleged facts was accomplished by hypnotism and adds, "The decapitation trick is thus no new thing," he offers no explanation as to how it was accomplished.
Defendants further refer to pages 48 and 49 of the same publication wherein a trick is shown, known as "Decapitation," but this is accomplished by means of a dummy head and bears no analogy to the plaintiff's illusion nor is the other act described therein, apparently performed upon the body of a clown, in any way as complete a mystification nor carried to as successful a conclusion as the plaintiff's act. Great stress is also laid upon the description by Robert Houdin, in his "Memoirs" published in English in Philadelphia in 1859, of an illusion produced by one Torrini in Constantinople in the eighteenth century known as the "Two Pages." But, similarly, there can be found no resemblance between the methods employed to accomplish the result in the variations of this illusion which Houdin described and the means resorted to by the plaintiff.
Defendants furthermore refer to the Indian basket trick, but that bears no resemblance to the plaintiff's illusion. For obvious reasons the details wherein the various illusions differ in principle and method from plaintiff's creation will not be discussed herein.
The defendants further contend that their moving picture is not intended to expose the method by which plaintiff performs his illusion, but that it is a repetition of a method used by one Coutts, who claims to be an owner of an act which he has performed in vaudeville, known as "Sawing a Lady in Half;" but he has not shown that he had preceded the plaintiff in the creation of the act in question, or that it is anything save an imitation of plaintiff's act, with points of difference intended to save him if possible from the consequences of his simulation. While the defendants strenuously deny that plaintiff originated the act in question, it appears that Coutts' modification or imitation of plaintiff's methods is an adaptation of the method resorted to by one Selbit to produce the illusion in question and plaintiff has already obtained an injunction against Selbit to prevent his reproducing the act in question.
Furthermore, plaintiff produces certain affidavits which seem quite convincing that plaintiff really originated the illusion in question. Harry Houdini, a producer of magical feats and illusions since 1882, and president of the Society of American Magicians and of the Magicians' Club of London, states that so far back as his memory and records go, he is positive that he never witnessed a production of the illusion "Sawing a Woman in Half" by any one other than the plaintiff. He also swears that the performance of plaintiff and those attempted to be made by defendants in the motion picture are not materially different, and that defendants' production exactly reproduces the illusion of Selbit, who, as has been said, plaintiff has already enjoined in the Ohio State court. Houdini is the author of a book called "The Unmasking of Robert Houdin" and he verifies the claim that the illusion of the "Two Pages," described by Houdin, is impractical for modern production and could not now be presented upon the stage, and is distinctly different from plaintiff's act. Something more is required than merely the development of the theory of an illusion; to be successful, he swears, it must be so carried out as to completely deceive the public and by means which it cannot grasp.
Servais Le Roy, a professional magician for over thirty-five years, has been producing the illusion in question for many weeks under a license from the plaintiff for which he pays him the sum of $ 250 weekly, which, he says, is the highest royalty ever paid to a creator of an illusion or magical performance, this being due to the great success it has achieved in the theatrical field. Naturally, he recognizes plaintiff's right of priority or he would not be paying this amount. He also swears that the production of this motion picture film will ruin plaintiff's performance and prevent the booking of further dates.
Carl Rosinni, also a stage magician for more than twenty years, makes affidavit that the plaintiff was the first person to conceive this particular illusion and to produce it upon the stage, and that he was present in the machine shop of Howard Thurston, the well-known magician, when plaintiff was constructing for Thurston the apparatus with which the latter was to produce the act under plaintiff's license. He swears to the identity of the act of plaintiff and that sought to be shown by defendant.
Joe Dolan, a vaudeville performer for twenty years and an exhibitor of magical feats and illusions, swears that no other theatrical performer or magician had produced this illusion known as "Sawing a Woman in Half" prior to plaintiff's presentation thereof. He avers that the act shown by the defendants and claimed to have been performed by Coutts has been taken directly from that of Selbit, hereinbefore referred to.
Adelaide Herman, the widow of Alexander Herman, makes affidavit that her husband never produced the act in question, and during her connection with his performances, which lasted over thirty years, she never heard of such an act being performed.
Harry Thurston, a stage magician, makes affidavit that the illusion "Sawing a Woman in Half" is the sole invention of the plaintiff, who, at various times, in his presence, built, improved and perfected his original idea of the illusion in Thurston's workshop at Whitestone, L. I. For the privilege of using the illusion he allowed plaintiff to build the original outfit at his workshop and paid him about $ 2,000 in cash and labor to assist in completing the original equipment.
It is shown that as the result of the motion picture in question attempting to expose or explain the manner in which plaintiff performs his illusion, it is deemed by the management of the Keith circuit, whereon plaintiff has exhibited the same for a long time, to have the effect of depreciating the value of plaintiff's act to such an extent that, as they have advised plaintiff in writing, it would render plaintiff's act absolutely valueless, since the very mystery or trick of the act would be gone; and, therefore, if the defendants' picture is exhibited in the same towns where the said Keith circuit had booked plaintiff's act, they notified him that it would be necessary for them to cancel his act therein.
Upon the facts disclosed by the affidavits herein, plaintiff has satisfactorily established that he is the originator of the illusion in question, which has achieved a great success under the title devised by him of "Sawing a Woman in Half" or "Sawing a Lady in Half," and that his creation of the illusion has been so universally recognized that the title thereof is in the public mind associated with his own name. The result of his ingenuity and skill has been to produce for him very large financial returns, with a reasonable prospect of their continuance for a long time to come.
The defendants have availed themselves of the very same title as that devised by plaintiff and have made use as well of an imitation or modification of his act which apparently produces the same result, and the effect of which on the public is to produce the same illusion as that which plaintiff produces. The affidavits lead irresistibly to the conclusion that the defendants have simply sought unfairly and unjustly to profit by plaintiff's success, by adopting the name which he gave to his illusion and by copying his methods, an unfair competition and unreasonable interference with plaintiff's rights which the courts should and will prevent.
The order appealed from should, therefore, be reversed, with ten dollars costs and disbursements to appellant, and the motion granted, with ten dollars costs, upon plaintiff giving an undertaking, the amount of which will be provided for by the order.
Settle order on notice, and both parties may present a memorandum therewith giving their views as to what the amount of such undertaking should be.
What's interesting here, among other things, is the number of witnesses that Mr. Goldin brings to testify to the fact that he is the creator of the illusion. He brings in Houdini and Harry Thurston, both hugely famous. He brings forward the fact that he successfully enjoined P. T. Selbit, who would have been his competitor at law, from performing the illusion, even though there is some question as to whether he or Selbit actually created the illusion. He demonstrates that other magicians (e.g. Servais Le Roy) have licensed rights to perform the illusion from him. The defendants have not shown the the method they use is one derived independently of him (this is the importance of the discussion of the "Coutts method.") Thus he persuades the court to grant him the injunction. The standard for granting an injunction is extremely high: the plaintiff must show 1) irreparable harm and 2) likelihood of succeeding on the merits. Goldin shows that: that if the method is revealed, the trick will be worthless (Le Roy's testimony).
But in the R. J. Reynolds case (22 F. Supp. 61(1938)), Goldin lost. Why? He had patented the box used in the "Sawing a Woman in Half" illusion. R. J. Reynolds, as part of an advertising campaign, was explaining magic tricks on posters, and on other ephemera, and this trick was one of the illusions it explained. Mr. Goldin sued, claiming unfair competition, and asked, once again, for an injunction and damages. The court ruled that by patenting the illusion, he had in essence explained the illusion.
At or about the time defendant introduced to the public the advertisement complained of, it appears that only two magicians were employing the trick or illusion in America with permission of the plaintiff. One of these exhibited it occasionally for charity and without payment to the plaintiff; the other was licensed to use plaintiff's patented device for a consideration. The evidence does not show with any degree of definiteness that the other discontinued the act because of the defendant's advertisement. In fact, the contrary appears; i.e. that this other magician did continue to perform the act in question even after the advertisement was published. Aside and apart from any other consideration, the plaintiff has failed to show any loss or damage as a direct result of defendant's acts. Assuming, therefore, that plaintiff did have the exclusive right to possess the trick or illusion in question, no actual damage is shown to have resulted from the alleged disclosure of this trick or illusion by the defendant.
Now what has the defendant done? It has caused to be published a pictorial advertisement for "Camel Cigarettes" portraying a stage performance in which it appears that a professional magician has just succeeded in sawing a woman in half. Upon a raised platform on the stage an oblong box has apparently been severed into two parts. From one-half of the box the head and hands of a woman protrude. From the other half a woman's feet protrude. The picture is entitled "Sawing a Woman in Half." Beneath the picture appears the words "It's Fun To be Fooled * * * It's More Fun To Know." To the left of these last-mentioned words and beneath the picture the word "Illusion" appears. Beneath the word "Illusion" in fine print appears the following: "A large packing case is exhibited on a raised platform. A young woman climbs into the box. Head, hands and feet protrude, and are held by spectators while the magician takes a crosscut saw and, which the help of an assistant saws through the center of the box and apparently through the woman." Below the fine print and in large type of the same size as the word "Illusion" is found the word "Explanation." Beneath the word "Explanation" in fine print there follows: "One method of performing this illusion requires the presence of two girls in the box. One girl curls up in the lift half of the box with her head and hands protruding. The other girl is doubled up in the right half of the box with only her feet showing. Nobody is sawed in half." Beneath the so-called "Explanation" is a picture of a pack of "Camel Cigarettes." The advertisement also contains among other things the following: "Cigarette advertising, too, has its tricks. Consider the illusion that 'Flavor' can be achieved by some kind of magical hocus-pocus in manufacturing cigarettes. Explanation: Just three factors control the flavor of a cigarette. The addition of artificial flavoring. The blending of various tobaccos. And the quality of the tobaccos themselves. Quality is by far the most important."
The name of the plaintiff does not appear in the advertisement. The technical details to the performance of the trick or illusion are nowhere disclosed. Plaintiff's patented device is not described. Apart from the fact that the so-called "Explanation" states that one method of performing this illusion requires the presence of two girls in the box, one at either end, there is no disclosure. Certainly no one in the audience is naive enough to believe that the subject is actually severed into two parts, especially when the magician walks between the two halves of the box after the apparent severing, as the testimony discloses. The average person would know that one way of performing the illusion would be to use two girls. To put this fact in print under the word "Explanation" is but to state the obvious. There is therefore in my opinion no disclosure of any unknown or unascertainable fact. In my judgment it cannot be seriously maintained that the fine print beneath the word "Explanation" appearing in the advertisement is really such a disclosure as would destroy the value of plaintiff's illusion, assuming that plaintiff does have the sole and exclusive right to the performance, display and control of the trick. On those facts alone plaintiff's claim cannot be sustained.
In addition, testimony adduced at the trial shows that the plaintiff obtained a patent, No. 1,458,575, in the United States Patent Office, on June 12, 1923, for an illusion device, nearly ten years before defendant's advertisements were published. On pages 1 and 2 of the specification of the patent appears the following: "In the operation of the device, preparatory to the exhibition, a person is concealed in the lower box 1. The covers 8 are thrown open and the panels 10 and 15 removed. A second person may now be lowered in the box in sight of the audience, his or her head projecting from the opening 14 and his feet from the openings 16. As part of the stage business, the demonstrator may pretend to hypnotize this person before lowering him into the upper box, explaining to the audience that nothing that may happen to him can hurt him in this condition. The panel 10 is then slid down into position and the person's arms put through the openings 11; and, for better effect, they may be held out by an assistant to the operator performing the trick. The panel 15 is also inserted, and the covers 8 are closed and locked by the locks 9. As soon as the covers 8 are lowered, the person in the upper box, while that end of the box is away from the audience, draws his feet from the openings 16, back onto the foot rests 26, so that this person is entirely in the right-hand box section. The first person concealed in the lower box then pushes his feet through the two sets of doors 3 and 6 and puts them in the place of those of the first person. Prior to this substitution the upper box can be lifted in its entirety, with the second person therein, to make it appear that there is no deception."
Certainly this is a clear and detailed expose of the secret to the public by the plaintiff himself. Any one who cares to can rightfully and lawfully procure a copy of said patent, containing a full detailed and diagramed explanation of the trick, upon request made to the United States Patent Office.
Furthermore, the claims which the plaintiff makes in his patent are all limited to an "Illusion Device." He claims a monopoly only on the apparatus for performing the trick. He could make no exclusive claim to the illusion itself. Fearful that some one might honestly and lawfully discover the manner or method by which he created the illusion and then lawfully duplicate his apparatus and lawfully perform his trick the plaintiff has sought protection under the statute for what he could protect; namely, the apparatus. To this he has been granted an exclusive monopoly.
Defendant has made no use of plaintiff's patented apparatus. It has merely pictured in connection with and as a part of its advertisement an ordinary oblong box cut into two parts. The interior or the structure of the box is not shown or explained.
The testimony further shows that the illusion of "Sawing a Woman in Half" was published, pictured and explained in 1927 in a book by one Gibson, a witness at the trial. This was more than five years before the appearance of defendant's advertisement. The picture in defendant's advertisement does not differ materially from the picture in Gibson's book. Only one girl, however, is used in the version of the illusion employed in Gibson's book. The trick was also disclosed in magicians' publications at various times prior to the publication of defendant's advertisements.
Plaintiff is attempting in this suit to protect what he mistakenly claims to be his sole and exclusive secrect. He maintains that he has a property right in the secret, and that it cannot be taken from him and used by another to the other's advantage and to his detriment. Plaintiff claims that his discovery is in the nature of a trade secret, and, as such, it is entitled to protection. It is undoubtedly true that trade secrets have been recognized as property rights from a comparatively early date, but closer examination of the cases dealing with the protection afforded trade secrets shows that there was some trust contract or confidential relationship between the party claiming the exclusive right to the secret and the party sought to be enjoined from making use of such secret, or between the party seeking the injunction and a person from whom the defendant improperly obtained knowledge of the trade secret. Nims-Unfair Competition and Trade Marks, Third Edition, p. 403....
It must be remembered that the "secret process or formula or whatever else the secret may consist of, ceases to be treated as a 'property right' as soon as a third party, through his own efforts, or investigation or through any other fair means obtains knowledge of the other's secret," and that "an honest discovery and knowledge of a secret formula or any other trade secret may justify its use in trade even though the business of another, who had discovered and used it previously, is injured thereby."...
The plaintiff and the defendant are total strangers to each other. Prior to the commencement of this suit they had no business contacts. The parties are engaged in entirely different endeavors. They in no way come into competition with each other. No trust, employer-employee, contract, or confidential relationship is shown to exist, nor is it shown that defendant, improperly, unlawfully, or illicitly procured the secret of the illusion from plaintiff's possession.
Having elected to rely upon monopoly by procuring a patent on "An Illusion Device," plaintiff abandoned his secret to the public. Having patented his apparatus for performing the illusion, he published the secret of the illusion. That which up to the time of the issuance of the patent was a secret ceased to be such upon the granting of the patent, for the patent is itself a publication of the secret.
As was stated in Boyden v. Burke, 14 How. 575, at page 582, 14 L.Ed. 548: "Patents are public records. All persons are bound to take notice of their contents, and consequently should have a right to obtain copies of them."
Even assuming, therefore, that the defendant did disclose the secret of the illusion in the advertisement complained of, it did not reveal to the public any thing or any fact of which the public was not already deemed to have knowledge.
I am of the opinion that the plaintiff cannot secceed either on the law or on the facts, and therefore that the complaint should be dismissed. This opinion shall serve as the court's findings of fact and conclusions of law required by Equity Rule 70 1/2, 28 U.S.C.A. following section 723. Submit a decree accordingly.
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