238 F. 1 | 6th Cir. | 1917
These are, respectively, appeal and cross-appeal from the decree of the District Court, entered in purported compliance with our mandate on the former appeal. 190 Fed. 927, 111 C. C. A. 517, and 198 Fed. 369, 117 C. C. A. 245. By our second opinion, certain details, both as to the"form of the injunction and as to the accounting liability, were committed to the trial court for decision. In the court below there was then a reference to a master, who made findings of fact bearing upon these special questions so reserved, as well as upon the amount of the profits or damages to be paid. Exceptions to the master’s report embodying these findings were overruled and the findings confirmed. The controversy as to profits and damages was compromised and settled, but a decree determining the precise •scope of the injunction was entered, against the objection of plaintiff that it did not go far enough, and the protest of defendants that it went too far.
“Consequently tlie defendant’s employment of the word * * * can Rave but one result, and that is not to correctly identify the thing itself, but to mislead the public as to its source.”
We are satisfied to dispose of the error alleged in this respect without examining the sufficiency of the argument just stated. Plaintiff’s effort to reshape the litigation as to these three small dictionaries is belated. No satisfactory reason appears why the fact that these dictionaries are so nearly identical with the “Twentieth Century” and so far removed from the 1847 Webster’s was not observed long before. With ample opportunity for knowing this fact, plaintiff was satisfied to file this bill, resting on the inconsistent theory that these dictionaries were like the Imperial, which had been adjudged to be a revision of the 1847 Webster’s, and to prosecute the case on that theory through our courts for four years. The ne\y theory is so obviously an afterthought, designed to overcome the partially disappointing construction which we gave to the decree in the First circuit, that only an extraordinary
“That the name ‘Intercollegiate’ was adopted by defendants as a name for this dictionary, with the intention of using it to mislead and deceive purchasers. I find, therefore the name ‘Intercollegiate,’ as used by defendants, is, of itself, a violation of complainant’s rights.”
Upon exceptions, this finding was confirmed; but, in the final decree, completely formulating the injunction, this subject was not mentioned.
Not only would we be strongly inclined to accept the concurrent finding of the master and the district judge, but we think they were right. “Webster’s Collegiate Dictionary” was published under that name by the Merriam Company, in 1898. In its special field it became well known and largely used. The defendants’ “Webster’s Intercollegiate Dictionary” was published in 1907. It was of the same, general size, form, and style, and intended for the same class of purchasers. It is true enough that “Collegiate” is inherently descriptive; but whatever doubts there might be about the propriety of attributing a secondary meaning to “Webster’s Dictionary” alone cannot extend to the collocation of the three words, “Webster’s Collegiate Dictionary.” It is the natural inference, as it is the finding of the master, that during the period of nine or ten years this phrase would come to be taken as referring to the Merriam book. It was the only one of that name, and it was one upon which — though this is probably not important — the copyright had not expired; and it is a fair assumption that defendants .could have only one purpose in rejecting the many names appropriate for a book of this particular size and utility and adopting the one which so clearly would produce an impression that it was the well-known book of almost identical name. Such difference as there is between “Collegiate” and “Intercollegiate” only indicates the desire to vary without distinguishing. We think the injunction should forbid the defendants from using the title “Webster’s Intercollegiate Dictionary!’ upon or in connection with any book of the general class of the Merriam “Webster’s Collegiate Dictionary.”
3. The defendants’ appeal is based on the position that they performed their full duty by printing their names in the ordinary manner
We reached the conclusion (198 Fed. 375, 117 C. C. A. 245) that the decree in the First circuit rests at last on the theory that the name “Webster’s Dictionary” not only had its primary meaning of reference to the edition of 1847, upon which the copyright had expired in 1889, and to earlier ones, but that, as early as 1904, when defendants’ publication began, the term had acquired a secondary meaning as indicating the line of dictionaries then published by the Merriam Company. The tenability of this theory has been doubted; and, although the requirements of the present situation are fully met when we again find, as we must, that this is the theory which was adopted in the First circuit .as the basis of the decree there rendered, and which decree we are, in this suit, enforcing — only with such constructions as the additional facts make necessary — yet we are by no means satisfied that the theory is wrong in fact or in law. There are certain undisputed facts as well as inferences therefrom which have not been mentioned in the later decisions, and which, possibly, have escaped consideration — as indeed they did in our opinion in 198 Fed.
This First circuit litigation did not pertain, nor does this — except in rather a negligible degree, if at all — to that particular book upon which the copyright expired in 1889. There is much force in the thought thát a publisher who has enjoyed the monopoly of a book during a copyrighted period, and who, for that reason alone, is directly reached when the public thinks of the book, ought not to be allowed to prolong his monopoly in the same thing by immediate resort to the secondary meaning theory; but although the exact reproduction of the> edition of 1847 is covered by the language of both decrees, there an4 here, it is not the substantial thing in controversy. That edition disappeared from the market in 1864, or immediately thereafter, and for the next 25 years the revision of 1864 and its modifications exclusively held the field. This was followed by the revision of 1890, the “International.” These revisions of 1864 and 1890 produced books very different in general form and appearance from the edition of 1847. They —and especially that of 1890 — rcompared with the 1847 edition as an adult with a child. The defendants’ 1904 Imperial (or Universal) Die-
Even if it should be said that the edition of 1806, although unabridged, was such a different type of book that the expiration of the copyright in 1834 did not leave the public at liberty to use the name upon the book of an unabridged type, like defendants’ Imperial, it must be seen that the 1828 revision was of the same class as that of 1847, and the defendants’ book, the Imperial, is presumably related to that edition in the same way that it is to the 1847 edition, except, perhaps, in less degree. This 1828 copyright expired in 1870, so that, if we confine ourselves to a book of this specific class, we find that when defendants entered the field, the public had possessed full right to publish such a book under that name for 34 years, but had acquiesced in the exclusive occupancy of the field by the Merriams.
So far as .our opinion in 198 Fed. assumed that there had been a period of only 15 years before defendants’ appearance, in which a new and qualified right might be accruing to plaintiff on the secondary meaning theory, we overlooked the fact that the public right in this respect had been perfect ever since 1834, and that the bill of complaint did not plant plaintiff’s right solely upon the short recent period of use after the 1847 copyright expired, but rather upon the continued use ever since 1864 when the 1847 edition was withdrawn from the market.
These considerations tend to persuade that the life or death of the copyright monopoly in the contents of the book does not necessarily control the right to use the name by which the book was known, but that, when protection is sought against unfair competition with books which plaintiff has the sole right to publish, the case for the secondary meaning theory stands on the same basis as with regard to any other descriptive word. ,
We are not considering this question as an original one, nor undertaking its decision. We have so far reviewed it only to he satisfied that the decision in the First circuit was not so obviously wrong or unjust that we should confine tire enforcement of that decree most strictly and not allow its operation beyond its very letter. After such review, we see no reason to doubt that the decree in the First circuit against the “Imperial” stands as the' ordinary one against a defendant who has used a trade-name which, though descriptive, has, by long acquiescence, come to be identified only with plaintiff’s product, and which therefore, on well-settled principles, the defendant may use only if he effectively distinguishes, ■ nor to doubt that we should enforce the decree in the First circuit according to its fair meaning and effect, as being an application of this principle.
If, then, we assume that, where the plaintiff’s “secondary meaning” mark is his own name, and defendant is entitled to use that same name, the defendant must negatively distinguish, and that where plaintiff’s mark is of the same character, but defendant’s -name is wholly different, the use of defendant’s name will be a sufficient distinction, it is clear that the cases where plaintiff’s mark consists in a descriptive word must fall into one or the other class according to the circumstances of each case. Sometimes defendant’s name will sufficiently distinguish; at other times, and perhaps generally, it will not, but will even aggravate the misleading, as in Menendez v. Holt, 128 U. S. 514, 521, 9 Sup. Ct. 143, 32 L. Ed. 526, and in Jacobs v. Beecham, 221 U. S. 263, 272, 31 Sup. Ct. 555, 55 L. Ed. 729. The present case is not of the class directly reaching personal identity like the Hall Case; it is distinctly of the descriptive word class, and, while it has been said that the name had come to indicate that a book called thereby was published by the Merriams, this is largely true only in an indirect way. It had come to mean that the book was one of the regular series then being published by the house which alone, for at least 50 years,; had been publishing current revisions called by that name; but what the name of that house might be would be known only to a part of the public that received the broader impression.
Different considerations govern the Imperial (or Universal). This was put out to compete with plaintiff’s International which (with its variations^ had been the only Webster’s Dictionary of this class, in quarto form and unabridged, upon the market for fourteen years. It had been produced by plaintiff at great expense, and it had very high reputation for its literary merit, distinct from and beyond anything contained in former revisions. As applied to this subject-matter — the only substantial thing there involved — we interpret the judgment of the First circuit as a finding that the portion of the public which constituted prospective purchasers for that class of dictionary had come to understand that “Webster’s Dictionary” meant Webster’s International, published by the Merriams, and desired to buy that book, and was liable to be deceived if it was offered anything else, superficially similar, dressed with the same distinguishing name — even though it would not know the difference between the Merriams and Ogilvie as publishers, or get any effective warning by seeing Ogilvie’s name on the title page. From this point of view the case is tire typical one where the special notice is necessary, to the same extent and for the same reasons as in the Hall and Waterman Cases.
The same reasons which justify the notice upon the Imperial-(or Universal) apply to- the smaller dictionaries. For a long period before the defendants put these out, the -special class of dictionary users, to whom they appeal, had been familiar with the several abridgements of the same class published by plaintiff and called “Webster’s Collegiate/’ “Webster’s Fligh School,” etc. The value of these books de' pended upon their reputation for the skill with which they had been prepared for their intended use; and, by giving to their own books the name by which the others were known, the defendants appropriated a part of the reputation of plaintiff’s books. The periods of ex-
We find in Merriam v. Syndicate, 237 U. S. 618, 35 Sup. Ct. 708, 59 L. Ed. 1148, nothing inconsistent with these considerations. It is there held that “Webster’s Dictionary” was so descriptive a term that it could not be registered as a trade-mark under the law of 1881; whether it could be registered under the law of 1905 by virtue of an acquired secondary meaning was held to be a question not within the appellate jurisdiction of the Supreme Court. It is not to be supposed that the Supreme Court intended to decide indirectly the very question it refused to consider.
It results that the decree below will be modified by extending the injunction so as absolutely to prohibit on defendants’ books the name “Webster’s Intercollegiate” or any other name so similar to “Webster’s Collegiate” as to tend to deceive the public concerning the identity of the book, and by narrowing the injunction soas wholly to exempt from its operation any mere reprint of the 1847 edition which bears the name of the defendants on the title page as publisher in the usual form; and the decree in all other respects will be affirmed. No costs will be awarded in this court, on either appeal.
There have been large sales of some of the smaller forms by the American Book Company and by Ivison, Blakeman, Taylor & Co., but these were printed under the Merriam, copyrights of date later than that of 1847, and from the Merriam plates; they carried the Merriam name on the title page and the Merriam copyright marks; and they were, in substance, published by the Merriams in partnership with the others named. They do not negative public acquiescence in an assumption of exclusive right.
Where an article is put out under a trade-name which, although it must be called descriptive, is yet also something more than merely descriptive, and where the public is free to compete in the same article and in the same name, but for a long period refrains from both, this seems to the writer the ideal soil in which the secondary meaning may grow into effective existénce. The name points to one maker only, without confusion or uncertainty, and it is a sure “badge of origin.” One of the opinions in the Cellular Clothing' Case, [1899] Appeal Cases, pp. 326, 343, cited with some approval in the Malted Milk Case, 85 L. J. B. 338, and by this court in Kellogg Co. v. Quaker Co., 235 Fed. 657, 666, - C. C. A. -, disparages the effect of that use which is associated with noncompetitive goods. In the Kellogg Case, at least, the words in question were so far the obviously apt words for concise description as to require the strongest case of deliberate acquiescence in exclusive appropriation in order to maintain the theory of secondary meaning, and in such a case, the'strictest rule may well be applied. In the present case, adopting defendants’ definition of “Webster’s Dictionary,” there has long been competition in the article itself, and even the rule of the Cellular Case would not reach it.
In the June Case, 163 U. S. 169, 204, 16 Sup. Ct. 1002, 41 L. Ed. 118, the or del required the notice to show that the article was “made hy defendant, as distinguished from” plaintiff, or was “the product of defendant, and therefore not the product of” the plaintiff; but in the companion case (Singer Mfg. Co. v. Bent, 163 U. S. 205, 207, 16 Sup. Ct. 1016, 41 L. Ed. 131) the order required notice that the machine was “the product of the defendant and not the manufacture of” the plaintiff.
The Century and the Standard, though “Wester’s Dictionaries” (defendant’s brief), have not found it necessary to taire that name. The Imperial Dictionary was first published by Dr. Ogilvie, and claiming to be a revision of Webster’s 1847, in 1859. Forty-five years later, the defendant Ogilvie’s revision, no more but rather less “Webster’s” than the Imperial always had been, became “Webster’s Imperial.”
<§^>For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes
gsiFor other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes
<5&wkey;Eor other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes