200 A.D. 532 | N.Y. App. Div. | 1922
The action is brought to restrain the defendant from the use of the words “ Drawing Made Easy,” as a title to a book sold by the defendant, on the ground of unfair competition and infringement of plaintiff’s trade-mark. The plaintiff, about 1918, published a
The first defense stricken out was to the effect that one Lutz in 1912 published and copyrighted a book and pamphlet entitled “ Drawing Made Easy,” and continued its publication and sale until 1921. It is further alleged that in 1921 Lutz enlarged his book and gave the defendant the right to publish and copyright it, and the defendant copyrighted it in August, 1921. This is the book the title of which has been held to be illegally used.
I see no justification for the plaintiff’s claim to the exclusive right to use the words “ Made Easy ” in connection with the book on drawing. The plaintiff does not claim to be the originator of the name, but his whole claim is based upon the facts that he published his series of books in 1918 and procured a trade-mark thereupon. The effect of this order is to hold, where this book, sold by the defendant under the name of “ Drawing Made Easy,” was published and coprighted from 1912 to 1921, and a second edition published and copyrighted in 1921, under the same name, that the plaintiff by attaching the name to a series of books which he published for the first time in 1918 has an exclusive right to the use of that name. No authorities are cited to this proposition, but authorities are cited to the general proposition that where one is the original user of a name to his book he may enjoin its subsequent use by another party as unfair competition. The difficulty is that these authorities do not reach the question here for decision. The plaintiff cannot, by securing this trade-mark, prevent the defendant or the defendant’s predecessor from using a title which is attached to a book that the defendant’s predecessor published long before the plaintiff adopted the name and which he copyrighted, nor does it prevent his use of the name in a subsequent edition of the same book. In order to recover it has been held that the plaintiff must have an exclusive right to the use of the name by reason of prior adoption, and .unless he can show such exclusive right it seems clear that his securing a trade-mark therefor gives him no greater protection.
The first defense which has been stricken out alleges this prior use and copyright of the book being sold by the defendant in 1912 and the use and copyright by the defendant himself under authority from the original user in 1921 of the second edition of the book.
There are cases which hold that the title of a copyrighted book is not protected by the copyright, but an examination of these cases will show that in each of them the plaintiff was the author or owner of a play based on the original use of the name. The cases present an attempt to protect the first user. The case at bar is an attempt to destroy the right of the first user.
It is claimed on behalf of the plaintiff, however, that this order may be sustained because these defenses may be shown under a general denial. But the difficulty is that the complaint in the action nowhere alleges a prior use of this name by the plaintiff, and nowhere negatives the fact that the name had been used by the defendant and others prior to this so-called trade-mark upon which it rests its claim. In any event, where there is doubt whether matters alleged may be proven under a general denial, it is clear that the court should not strike out the special defenses from the answer, because the facts alleged may certainly properly be shown, and whether under a denial of the plaintiff’s right, or under an affirmative defense, it matters little.
The order, therefore, striking out these defenses must be reversed, with ten dollars costs and disbursements, and the motion denied, with ten dollars costs.
Clarke, P. J., Dowling, Page and Greenbaum, JJ., concur.
Order reversed, with ten dollars costs and disbursements, and motion denied, with ten dollars costs.