Merriam v. Famous Shoe & Clothing Co.

| U.S. Circuit Court for the District of Eastern Missouri | Sep 10, 1891

Thayer, J.,

(after stating the facts as above.) I have no doubt that defendant is entitled to use the words “Webster’s Dictionary” to describe the work that it is engaged in publishing and selling. Those words were used to dose ribe Webster’s Dictionary of the edition of 1847, and, as the copyright on that edition has expired, it has now become public property. Any one may reprint that edition of the work, and entitle the reprint “Webster's Dictionary.” The latter words, which appeared on the title-page and on the outer cover of hooks of the edition of 1847, have become public property, as well as other parts of the work. Defendant’s right to call the “Famous Reprint Edition” “Webster’s Dictionary” is as clear as the right of complainants to give that title to books of the edition of 1864, which they are now publishing.

I am also oí the opinion that no publisher can claim an exclusive right to make a hook of a certain form or size. The forms into which objects like books may he cast are likewise public property. The fact, therefore, that defendant’s hook is similar to complainants’ in size and form is in itself no ground i’or granting the relief sought.

The next matter to be considered is the charge that defendant uses the device of a hook, with the words “Webster’s Dictionary ” printed thereon, on its circulars, bill-heads, etc., in imitation of a like practice pursued by the complainants. In my judgment, no person engaged in publishing and selling a book or books can acquire an exclusive right to use the device of a book on letter-heads and bill-heads, or on wrappers or boxes containing books. The device in question, when used in that connection or relation, is not sufficiently arbitrary to constitute a valid trademark. When so used by a publisher or book-seller, such a device serves to indicate the kind of business in which a party is engaged, or it is descriptive of the contents of particular packages. Other persons engaged in the same business have the right to advertise their calling, or to describe the contents of packages, by the use of the same device. If a publisher or book-seller can acquire an exclusive right to use the device of a book on letter-heads, bill-heads, wrappers, etc., then a watch-maker might acquire the exclusive right to use the picture of a watch, a shoemaker to use the picture of a shoe, and so on throughout the entire list of occupations in which men are engaged. I conclude, therefore, that no relief can be granted merely because defendant has stamped the device of a book on its circulars and advertisements.

But in some other respects the bill, in my judgment, discloses adequate cause for complaint. In the “Famous Reprint Edition,” it seems that the defendant has omitted a portion of the preface contained in Webster’s Dictionary of the edition of 1847, so that the reprint fails to disclose on its face that it is in reality a copy of the edition of 1847, and not a copy of the enlarged edition of 1864. Furthermore, the defendant, by its advertisements, represents to the public, in substance, that the “Famous Reprint Edition,” now sold for $1.45 per volume, is a copy of a book that has been sold at from $12 to $15 per volume for the past 20 years; whereas the fact is that the edition of 1847 has been out of print during that period, and it is only the enlarged edition of 1864 of Webster’s Dictionary, with the supplements of 1879 and 1884 added, that has been on the market, during the period in question, at the price of $12 and $15 per volume. In view of these features of the bill', and the allegation that many people have been induced to buy copies of the “Famous Reprint” in the belief that they were copies of the edition of 1864 of Webster’s Dictionary, and in view of the averment that the reputation of complainants’ dictionary, which they have been at great trouble and expense to prepare and improve, has been thereby greatly damaged, and the sales thereof largely decreased, I must conclude that, on the showing made, complainants are entitled to some form of equitable relief. If it be true that, by the means described in the bill, the public have been deceived, and the complainants have sustained damage, then the defendant has no right to suppress in the reprinted work all parts of the original publication which would show that defendant’s book is merely a reproduction of an old edition of Webster’s Dictionary, and at the same time make representations to the public, that are liable to be construed as an assertion on the part of defendant, that its cheap edition of the dictionary is the same book which complainants are publishing and selling. Wrongs of this description, whereby, through an artifice of any sort, the goods of one manufacturer become confused in the public mind -with the goods of some other manufacturer, may be redressed by a court of equity. Browne, Trade-Marks, § 48, and citations. It is unnecessary at this time to determine what form of relief should be administered, if the allegations of the bill are proven on final hearing. It may be that some change in the form of defendant’s circulars and advertisements will be all the relief that the circumstances of the case fairly warrant; or it may be that the proof will warrant an order that the defendant place a notice in their hook that it is a reprint of the edition of 1847 of Webster's Dictionary, with such additions as they may have made to it. This is a matter, however, to he considered on final hearing, when the exact nature of the injury, and the causes that mislead the public, are ascertained. It is sufficient to say at present that, on the showing made, the complainants are entitled to relief, and the demurrer to the bill is accordingly overruled.