Historical Pub. Co. v. Jones Bros. Pub. Co.

231 F. 638 | 3rd Cir. | 1916

McPHERSON, Circuit Judge.

The bill in this case puts the jurisdiction of the court below on two grounds: (1), Diversity of citizenship; and (2) the copyright statutes of the United States. • The action was brought on August 15, 1913, by the Jones Publishing Company and the Review of Reviews Company, and charged the Historical Publishing Company and certain individuals with infringement and threatened infringement of two copyrighted hooks. The title of the first may be summarized as “Ridpath’s School. History of the United States”; the title of the second is “Columbus and Columbia.” The offending publications are charged to infringe the two copyrights conjointly, but in any event no question of misjoinder either of parties or of subject-matter has been raised. The somewhat complicated facts are detailed in Judge Thompson’s opinion, and we need not add much to his statement, although we are obliged to disagree in part with his conclusions. After a hearing on pleadings and proofs, he dismissed the bill altogether as to the individual defendants, and (as far as the School History is concerned) dismissed it also as to the corporation defendant, the Historical Publishing Company, “for lack of proof of title in said plaintiffs at any date prior to the filing of the bill.” As far as “Columbus and Columbia” is concerned, he sustained the bill, enjoined the Historical Publishing Company from printing, publishing, selling, etc., certain infringing books, and ordered an account for damages and profits. Both parties have appealed, and the first subject for consideration is the defendant’s motion to dismiss the plaintiffs’ appeal.

[1] The motion rests upon the authority of Ex parte National Enameling Co., 201 U. S. 156, 26 Sup. Ct. 404, 50 L. Ed. 707, and need not be discussed at length, as we have had occasion recently to examine and decide the same question in Ward Baking Co. v. Weber Bros., 230 Fed. 142, - C. C. A. -. The opinion in that case will be reported in due season, but we may restate briefly what was there decided, namely: That section 129 of the Judicial Code allows a plaintiff to appeal, if an injunction be refused or dissolved by an interlocutory order or decree (thus remedying the situation presented in Ex parte National Enameling Co.);‘ and that the partial dismissal of such a bill as the one before us is the clear equivalent of a refusal. The motion to dismiss is therefore overruled.

[2] 1. We think the plaintiffs’ appeal must be sustained. It is true that no evidence was offered to prove that the Jones Company’s title to the copyright of the School History antedáted the bill, and of course, therefore, no previous conduct of the defendant would be an infringement in fact. But we think 'the court below overlooked the precise situation presented by the pleadings and proofs. In paragraph VI the bill distinctly avers that the plaintiffs had title at the date of filing, and the answer expressly admits this averment. If, therefore, the evidence shows that the defendant was then threatening to infringe the copyright, the plaintiffs were entitled to protection, although no actual infringement had as yet taken place. One of the objects of an injunction is to restrain the future commission of injurious acts, 'for a suit at law is the appropriate remedy for acts that' have already been done. If authority be needed for so elementary a proposition, it may be found in Woodworth v. Stone, Fed. Cas. No. 18,021, Page, etc., Co. v. Land (C. C.) 49 Fed. 936, Canton Steel Co. v. Kanneberg (C. C.) 51 Fed. 601, and National Meter Co. v. Thomson Meter Co. (C. C.) 106 Fed. 531.

[3, 4] On this point of threatened infringement the District Court has no occasion to consider the evidence, and we have therefore examined it, and are satisfied that at the time of filing the bill the plaintiffs had reasonable ground to anticipate that the defendant was about to interfere with their right. In view of the express admission in the answer, the attempt that is made to attack the plaintiffs’ title cannot be considered. We have also considered the alternative defense that, even if the plaintiffs’ title in August, 1913, be assumed, they did not have an exclusive copyright in the School History. This defense is based upon a written agreement;—alleged to have been made in 1892 or 1893, but not produced and not satisfactorily accounted for—under which the defendant claims a license to do the acts that we have referred to as a threatened infringement. The District Judge did not make a definite finding on this subject, but evidently he was not impressed by the evidence, and we share the opinion he intimates. There are several sufficient objections to this defense, but we content ourselves with pointing out that in 1892 the American Book Company was the owner of the copyright, and that the right of the plaintiffs and’ the def endant to make any agreement concerning it was not explained. We feel justified in disregarding the oral evidence on this subject, and in holding that an injunction should have been awarded, but re-' stricted in scope as hereinafter stated.

[5] 2. With reference to “Columbus and Columbia” we see no occasion to add anything to what the District Court has so well said. But we think the scope of the injunction'is somewhat too wide. The infringing matter is contained in a red volume entitled “Ridpath’s History of the United States,” and in a six-volume publication entitled “History of the United States and Dictionary of Events—Ridpath.” But, as it also appears that only part 3 of the fed volume, and volumes II and HI of the other publication, are made up of the infringing material, and as part 3 and volumes II and III can apparently be separated from the other material, we think the injunction should be confined to the parts that infringe. Wc see no reason why the defendant should not he permitted to rearrange these publications if it should see fit to do so, omitting the offending matter, and to sell the noninfringing pages for what they really are, namely, the work of other hands than Ridpath’s. This modification will no doubt be made on application to the court below.

[6, 7] We agree with the court below in holding that the agreement of October 25, 1912, vested the equitable title to “Columbus and Columbia” in the Jones Company, and therefore gave that company a sufficient interest in the pending bill. But, even if such a title did not pass, the Review of Reviews Company would then continue to be the owner of the whole title, and of course would be authorized to sue. And in this connection we may repeat that no question of misjoinder was raised by the pleadings, and therefore cannot be raised now.

At present we have nothing to do with the disposition that may be made of the plates that have been seized.

The result of both appeals, therefore, is to reverse the decree on No. 2076, and to direct the issuing of an injunction as to the first copyright, and on No. 2071 to affirm the decree as modified in accordance with this opinion.