130 F. 460 | U.S. Circuit Court for the District of New Jersey | 1904
This is an application for a preliminary injunction, and has been heard on bill, answers, and affidavits, the answers being sworn to and used as affidavits.
It appears that, early in 1875, A.- & C. Black, of Edinburgh, Scotland, began the publication in Scotland of the work entitled “The Encyclopaedia Britannica, a Dictionary of Arts, Sciences and General Eiterature, Ninth Edition.” In the same year, the copyright laws of this country not then furnishing protection to foreign authors or publishers, one Joseph M. Stoddart, Jr., trading under the name of J. M. Stoddart & Co., of Philadelphia, began the publication of the same work in this country. Some time between 1875 and 1879, the exact time not being shown, the Blacks entered into an arrangement with Charles Scribner, trading as Charles Scribner’s Sons, of New York, for the publication in the United States of the Edinburgh edition of the work. Suits were instituted about 1879 between the Blacks and Stoddart, and between Scribner and Stoddart, which led to an agreement dated March 24, 1881, “between Joseph M. Stoddart, Junior, doing business at Philadelphia, Pennsylvania, as J. M. Stoddart & Co., and Charlés M. Scribner, doing business at the City of New York as Charles Scribner’s Sons.” This agreement, after reciting that Stoddart “was
Previous to the date of this agreement, articles included in the edition published by Scribner had been written by American authors, and copyrighted, under the following titles, viz.: “Galveston,” “Georgia,” “Horace Greeley,” “Hayti,” “Homestead,” “Honduras,” “British Honduras,” “Illinois,” and “Indiana.” Between the date of the agreement and April 6, 1888, the following articles, also included in the Scribner edition, were written by American authors, and copyrighted, viz.: Articles on “Modern History and Present Distribution of North American Indians,” “Indian Territory,” “Lafayette,” “Abraham Lincoln,” “Henry W. Longfellow,” “Louisiana,” “Maine,” “Maryland,” “Massachusetts,” and “United States, Part 1, History and Constitution.” These articles were originally .published in book or pamphlet form, and the titles to the copyrights are now, by means of sundry assignments, vested in the complainant, the Encyclopaedia Britannica Company, a corporation of Illinois, which also owns and publishes the edition formerly owned and published by the Blacks.
In 1890, Richard S. Peale, of Chicago, commenced the publication of another American edition of the Encyclopaedia Britannica. He obtained for it, he says, in the places of the copyrighted articles above mentioned, other articles by other authors on the same subjects. These last-mentioned articles, he further says, were printed and inserted in his edition “exactly as written by the authors.” The defendant the Werner Company has succeeded to the rights of Richard S. Peale in the American edition formerly published by Peale, and that company, and the other defendant, the American Newspaper Association, both being New Jersey corporations, are now engaged in publishing and selling that edition, which still includes the articles alleged to have been written in 1890 for Peale.
The complainant insists that the articles written in 1890 for Peale, and now included in the defendants’ edition, are infringements of its copyrights. The primary evidence of the infringements must be found, if found.at all, in comparisons of the two sets of articles.' And these comparisons must be made by the court, or by a master to whom such duty has been referred. The comparisons of expert witnesses may very properly be received in evidence, but only as aids to the court. This
The articles on the remaining seven subjects cannot be so excluded. As to each of them the proofs contain verified copies of the complainant’s copyrighted article and of the alleged infringing article of the defendants. These relate to the subjects “Georgia,” “Homestead,” “Honduras,” “British Honduras,” “Indian Territory,” “Lafayette,” and “Louisiana.” Much aid has been had in the work of examining these articles by the comparisons contained in the proofs, and the opinion now reached is that the articles on the last seven subjects named, published in the defendants’ edition, were modeled after, and to a very substantial degree taken from, the copyrighted articles on the same subjects contained in the complainant’s edition.
In the two articles on “Georgia,” the first fact to be noted is the striking resemblance between the headings to the several sections. In some cases they are identical, in others slightly changed in phraseology, but in all cases substantially the same. In the' bodies of the two articles there are numerous instances of the duplication of ideas and sentences. As illustrations, some parallel passages are hereunder given:
From Complainant’s Edition:
“Georgia has three distinctly marked zones, varying in soil, climate and productions. Her sea coast is similar to that of the Carolinas, being skirted by fertile islands, separated from the mainland by narrow lagoons or by sounds. This section is essentially tropical.”
“In the southwest the soil though light and sandy, produces cotton. In southern Georgia there are millions of acres of magnificent yellow pine forests of great value for house or ship building, and in these forests turpentine plantations have been opened. The live-oak, also valuable for ship-building purposes, abounds in the southeast of the State. The swamps afford cedar and cypress, the central region oak and hickory.”
“The higher branches of education are well represented. As early as
“This variation of surface gives Georgia three distinct zones, differing in soil, productions and climate. Low islands, separated by narrow necks from the mainland, skirt her sea coast and produce cotton of a superior quality, known as sea island cotton. This coast section with the adjacent islands is essentially tropical.”
“In the southwest the soil is light and sandy. Millions of feet of yellow pine, of great value in ship and house building, are ready to be used. In the southern part of the state turpentine manufactories have been opened up in the forests. In the southeast is the live oak, much valued in ship building, while the many swamps afford cypress, cedar and palmetto.”
“The higher branches are well provided for. As early as 1801 steps
_ In the two articles on “Homestead” there are numerous instances of similar passages. But two of them will be cited:
From Complainant’s Edition:
“In such a ease the original claimant will not be permitted to make another entry, as the law allows but one homestead privilege. It is essential that the person making a homestead entry should know that no one else has located upon the land and begun improvements as the foundation of a claim under the pre-emption laws, for such a claim would antedate his own. Having resided upon and cultivated his claim for five years, the settler is allowed two years more, but no longer, in which to make his ‘final proof.’ ”
“The first step in securing a preemption right is to go upon the land and commence ‘improvements.’ When this has been done, if the land is ‘offered’ — that is, if at some time it has been offered at public sale by proclamation of the President, or otherwise —the applicant, within thirty days from date of his settlement, must file with the district land office a declaratory statement setting forth his claim; and within one year from date of settlement he must appear before the registrar and receiver, and make proof of actual residence on and cultivation
“The original claimant is not permitted to make a second entry, as but one homestead privilege is allowed by law. It is important that the applicant making a homestead entry should know that no one else has located, and made improvements upon the land preparatory to a claim under the pre-emption laws, as such a claim, under the land laws, would antedate his own. After the applicant has resided upon and cultivated his claim for five years, he is allowed two years more in which to make ‘final proof.’ ”
“The first step in securing a preemption claim is to go upon the land, and begin to make improvements. When this has been done and the land is offered for sale,, by proclamation of the President or otherwise, the preemptor must file a declaratory statement with the District Land Office setting forth his claim, within thirty days. And within a year from the date of settlement, he must appear before the Registrar and Receiver, and make proof of his actual residence upon, and cultivation of the land. He will then be permitted to obtain
One cannot read these passages without observing, in each pair of them, not merely the numerous cases of identical phraseology, but the common sequences of thought contained in them. In the last two parallel passages, for example, the order of the subjects mentioned is the same, and is as follows: The first step in securing a pre-emption right, offering the land for sale, proclamation by the President, filing declaratory statement, appearing before registrar and receiver, making proof of actual residence, obtaining title to the land, proceedings where land has not been offered for sale, time within which final proof and payment maybe made, and proceedings where land is unsurveyed.
Quotations from the remaining articles do not seem necessary. It is sufficient to say that the proofs show such identities and resemblances of plan and language, and such common sequences of thought, between the two articles on each of the seven subjects, that no other opinion can be entertained than that very considerable portions of the defendants’ articles were taken from the.complainant’s articles. That opinion is confirmed by the fact that the defendants have produced the affidavit of the alleged author of each of the seven articles, and that, while each of them admits having written in 1890 one or more articles for Richard S. Peale without reference to- or use of the complainant’s articles, no one of them states that he wrote in its present form any one of the articles contained in the defendants’ edition. It is true that Peale says the articles furnished to him by these authors were printed exactly as they were written. But he stands alone in this statement. The convincing evidence furnished by the articles themselves overcomes his naked statement. Substantial identity, or a striking resemblance between the work complained of and that for which protection is claimed, creates a presumption of unlawful copying, which must be overcome by the defendant. Drone on Copyright, pp. 400,430. And what amounts to substantial identity is a question of fact, to be determined in each case by a comparison of the two works. Drone on Copyright, p. 408; Emerson v. Davies, 3 Story, 193, Fed. Cas. No. 4,436; Dawrence v. Dana, supra.
It is urged, in the first place, by the counsel for the defendants, that the act of the defendants in publishing the articles complained of during the pendency of the suit will not result in irreparable injury to the complainant, and therefore that a preliminary injunction ought not to issue. The answer to this objection is that, if the defendants have no right to continue their publications, the injury to the complainant is one for which damages awarded on an accounting or in a suit at law will furnish utterly inadequate redress. This is illustrated in the case of West Publishing Co. v. Lawyers’ Co-operative Publishing Co., 79 Fed. 756, 25 C. C. A. 648, 35 L. R. A. 400, where, in a case very like the one now in hand, the court, on final hearing, continued a preliminary injunction, ordered an accounting of profits, and, because of the impossibility of segregating the profits for the specific paragraphs there enjoined, ultimately gave a decree for six cents.
In the second place, it is said that a preliminary injunction ought not to be allowed because the defendants have a large capital invested and 1,500 or 2,000 men employed in their business, and that an injunction would do them irreparable injury. It is true that in cases of this nature the court will sometimes balance inconveniences, and withhold a preliminary injunction where its allowance will cast a burden upon the defendant disproportionate to the relief which its allowance will afford the complainant. But this'is not such a case. If the injunction be here allowed, the defendants may continue their business as soon as they shall have substituted for the articles now published by them other articles which do not infringe the complainant’s copyrighted articles.
In the third place, it is said that the provisions of the agreement between Stoddart and Scribner made on March 24, 1881, deprive the complainant of the right to maintain this suit. The argument is that Scribner, who, at the time of executing the agreement, was the record owner of certain of the copyrights, held those copyrights in trust for the Blacks, and that he agreed that no suit for infringement of any copyright, past or future, should thereafter be brought by him or by the -Blacks. But it will be observed that that agreement, the provisions of which material to this point have already been cited, does not show that Scribner had any authority to represent the Blacks, or that he attempted to do so. He was an importer and purchaser of the Edinburgh, now the complainant’s, edition; he was a party to the agreement in his individual capacity only; and he agreed that no suit should thereafter be brought by the Blacks “with his consent or co-operation.” Stoddart acquired no rights or privileges, under that agreement, from the Blacks. He did acquire thereunder certain rights from Scribner, but there is no proof that any of these rights were ever in any wise transmitted to either of the defendants.
Lastly, it is insisted that a preliminary injunction should not be allowed because of the laches of the complainant and its predecessors in title. To support this defense, reference has been made to the
In this case, there would be inequity in refusing to grant the relief prayed for. The objectionable parts of the defendants’ articles are so intermingled with the other parts that it is impossible satisfactorily to separate them. In all such cases the rule is to enjoin the publication of the whole of the literary'matter in which the piracy is found. Farmer v. Elstner (C. C.) 33 Fed. 494; West Publishing Co. v. Lawyers’ Co-operative Publishing Co., supra.
A preliminary injunction will be allowed, restraining the defendants, and each of them, and their agents and employés, until the further order of the court, from printing, publishing, selling, or offering for sale any volumes of the defendants’ edition of the Encyclopaedia containing in their present form any of the seven articles now included in that edition on the subjects “Georgia,” “Plomestead,” “Honduras,” “British Honduras,” “Indian Territory,” “Lafayette,” and “Louisiana.” The restraining order heretofore allowed must be vacated as to the remaining subjects.