Jewelers' Circular Pub. Co. v. Keystone Pub. Co., 274 F. 932

Jewelers' Circular Pub. Co. v. Keystone Pub. Co.

274 F. 932 | S.D.N.Y. | 1921

LEARNED HAND, District Judge

(after stating the facts as above). [1] First, as to validity: I think that the plaintiff’s book is clearly a “directory” or án “other compilation;” and as such it falls within section 5 (a) of the Copyright Act (Comp. St. § 9521 [a]). Under section 6 (Comp. St. 9522) it is not necessary in such cases that the matter compiled should itself be copyrighted; it may be in the public domain. Therefore it is altogether immaterial that the trade-marks themselves could not be copyrighted, or whether section 3 of chapter 301 of the Laws of 1874 still remains in force. If the trade-marks be “prints” at all, under section 5 (k) of the Copyright Act, I may assume that, being designed for use on articles of manufacture, they cannot be copyrighted. Royal Sales Co. v. Gaynor, 164 Fed. (C. C.) 207, was the case of a single print or label; it does not touch this case. J. L. Mott Iron Works v. Clow, 82 Fed. 316, 27 C. C. A. 250 (C. C. A. 7th), was, however, closer. There the copyrighted work was a trade catalogue, consisting of a collection of photographic illustrations of bathtubs and the like. It was denied protection chiefly on the ground that it was an advertisement, but also in part because it was thought to have no aesthetic quality. In both respects the case must be considered overruled by Bleistein v. Donaldson Lithographing Co., 188 U. S. 239, 23 Sup. Ct. 298, 47 L. Ed. 460, and it has been so treated subsequently. J. H. White Co. v. Shapiro (D. C.) 227 Fed. 957. See, also, Da Prato Statuary Co. v. Quiliani Statuary Co. (C. C.) 189 Fed. 90.

In any event, the plaintiff’s book was not an advertisement, and in so far as Miss Clark, the plaintiff’s draftsman, prepared free-hand drawings from the impressions of tire trade-marks, it cannot possibly be said that there was no element of aesthetic quality, whether it was bad or good, and however aesthetic quality is defined. In those instances in which the trade-mark owners sent on illustrations which could be directly transferred to cuts by photography, it might indeed be argued that J. L. Mott Iron Works v. Clow, supra, might still apply. Burrow-Giles Co. v. Sarony, 111 U. S. 53, 4 Sup. Ct. 279, 28 L. Ed. 349, left open an intimation that some photographs might not be protected, and this possibility was emphasized in J. L. Mott Iron Works v. Clow, supra. I think that, even as to these, Bleistein v. Donaldson Lithographing Co., supra, rules, because no photograph, however simple, can be unaffected by the personal influence of the author, and no two will be absolutely alike. Moreover, this all seems to me quite beside the point, because under section 5 (j) photographs are protected, without regard to the degree of “personality” which enters into them. At least there *935has been no case since 1909 in which that has been held to be a condition. The suggestion that the Constitution might not include all photographs seems to me overstrained. Therefore, even if the cuts be deemed only photographs, which in these supposed cases they are, still I think that they and the illustrations made from them may be protected.

[2] Second, as to infringement: Any directory is a compilation, without opportunity for variety in the statement of the facts recorded. All are free to repeat those facts, just because they are facts. Strictly, it might have been logical, therefore, to deny it any protection, till the statute expressly granted one. That was not, however, the law before the act of 1909 (List Publishing Co. v. Keller [C. C.] 30 Fed. 772; Sampson & Murdock Co. v. Seaver-Radford Co., 140 Fed. 539, 72 C. C. A. 55 [C. C. A. 1st]), and it could not be even argued afterwards. Yet in some way subsequent compilers must be allowed to state the same facts, and the question became what independent work they must do to acquire the requisite knowledge. Every one concedes that a second compiler may check bade his independent work upon the original compilation, but there has been some dispute whether he may use the original compilation after simply verifying its statements, or whether he must disregard the assistance of the original, except in subsequent verification. I do not find it necessary to determine that question in this case, or to decide whether there is a conflict between Sampson & Murdock Co. v. Seaver-Radford Co., supra, and Edward Thompson Co. v. Amer. Law Book Co., 122 Fed. 922, 59 C. C. A. 148, 62 L. R. A. 607 (C.C. A. 2d).

[§] It appears to me quite enough that here the defendant copied the illustrations made by the plaintiff. If those were protected, to copy them would be to infringe. Suppose, for example, that, instead of describing the trade-marks pictorially, the plaintiff had done so verbally, the defendant would have been, of course, entitled to describe them anew, and it would, have made no difference that bis description and the plaintiff’s tallied to the letter. Still no one would contend, I, suppose, that he could lift the plaintiffs verbal description and use it bodily merely by getting it verified by the owner. In that case it would be obvious that he had copied the plaintiff’s work. Exactly the same thing was done here. The plaintiff’s illustration was not the trade-mark itself, but a picture of it, prepared by the plaintiff. The defendant was as much hound to make an independent picture of the object itself as he woidd have been obliged to make an independent verbal description. This obligation is quite independent of his right, if he have the right, to repeat any facts which he may first learn from a copyrighted work and later verify. Only the case of an ordinary directory can raise the question of such a right, because in a directory there is but one way to state the facts, and a subsequent compiler cannot copy the form of expression of the earlier, because there is no form. When, however, there is any such form, however intangible and difficult to distinguish as such, then the second compiler must depend upon his own resources to express the facts independently. He may not use the form. For the reasons already given, it seems clear to me that the “Index” was an infringement in respect of all the cuts used to print it, which were made *936from illustrations of the same trade-mark published in the plaintiff’s book. Even as respects those received direct from the trade-mark owners, they as little as any one else could use the plaintiff’s illustrations to make cuts. The defendant would be innocent as to these, but the infringement would exist notwithstanding. The fact that one owns a trade-mark gives him no right to copy a picture of that mark, nor can he give another the right to use the picture’s copy.

It follows that the defendant must be enjoined from publishing and distributing the trade-mark section of the “Index,” and must be directed to recall all those copies over which it has retained the right of recall. This must be done within 20 days after decree filed. The plaintiff may also have an accounting for damages, or I will fix them under section 25 (b), if they cannot be specifically proved. I assume that no accounting for profits will be asked, as I do not see how any could be proved. Allowances will wait for final decree.

[4] There remains a question under section 25 (c) and (d) and the writ of seizure. The defendant has already surrendered all copies of the “Index” in its possession under section 25 (c) and the Supreme Court rules. Section 25 (c), with the rules, is ancillary to section 25-(d), for I take it as patent that the “impounding” is only to assure the eventual destruction of the infringing articles. It appears to me significant that the only provision for the destruction of infringing copies is section 25 (d), which makes it one of the remedies against an infringer that he shall “deliver up on oath,” etc. Yet, under section 32 (Comp. St. § 9553), all piratical copies imported may be seized and destroyed in the hands of any one. Thus there is a distinction between a piratical copy not imported, which, if sold, is not subject to seizure in the hands of one not an infringer, and an imported piratical copy, which is.

The writ of seizure authorized by the Supreme Court rules as the proper procedure to enforce section 25 must, of course, be read upon the statute, and if I am right no marshal should seize any copies which had been -sold to persons not infringers; it must be remembered that use does not make one an infringer as in the case of a patent. In the case at bar the books were not sold, but were in effect lent to the defendant’s customers, subject to recall at its pleasure. Clearly, however, the customers had full possession of the books; they were bailees, entitled to beneficial use of the property, and not agents, acting on behalf of the defendant. The bailment under civil law would have been a commoda-tum, and not either a depositum or a mandatum.

Now, it is true that at first blush it might seem (the bailment being determinable at will by the bailor) that the writ of seizure might interrupt the bailee’s possession, precisely as it can the bailor’s. Yet it appears to me that this would be improper. The statute, which is highly penal, cannot be supposed to go further than it says, and it is expressly limited to infringers; all rights, including the right of possession by others, must be immune from violent interruption, unless there is express warrant for it. And so the possession of innocent bailees should be respected, because it is legal, and should be disturbed only under the terms of the agreement which created it. They are free to enjoy the piratical copies, subject to the reserved rights of the defend*937ant. If so, the plaintiff must work out its right to forfeit through the defendant’s right to recall the books, and will be enjoined from its proposed course of seizing these books in the hands of the defendant’s customers. There is an especial ground in equity for this, because, while such violence would be extremely disastrous to the defendant’s business, it could not possibly benefit the plaintiff if the defendant recalls the books within a short time.

Settle decree on notice.

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