129 F. 761 | U.S. Circuit Court for the District of Massachusetts | 1904
(after stating the facts). In this case, after a full hearing of the parties and their witnesses, the master has made an ample, detailed, and complete report, embodying a careful analysis of the testimony. We have copied this report in full, as it, with the bill in equity, constitutes the record; and so we need not recite its details.
The master has found that the damage to the complainant, by publication of the defendant’s book, will be, in the loss of the sale of its copyrighted book, a sum not exceeding $450. He finds further that the damages to the complainant’s business which will result from the publication of a rival directory, such as the defendant’s book, will be much greater, and will be of such a nature that they cannot be estimated at law, and will be in that sense irreparable. He further finds that the defendant has expended in compiling, printing, and binding its proposed directory between $35,000 and $40,000; that the issue of the injunction prayed for by the complainant will probably result in the total loss of this investment; that the advertisements inserted in the book have been inserted under a contract providing for payment when the book is published, and the total amount so paid for advertising is many thousand dollars; that the book, if published, will be of substantial value. He states the leading question of law which arises in the case, namely: Is it lawful, in the preparation of a diiectory, to copy, verify, check, and correct copyrighted information, with intent to reproduce it, save as corrected, in a competing book? And he says that this question is one which does not appear to be settled by any express and controlling decision. He then refers to the leading English and
Since the presentation of this report, our attention is called to Dun v. International Mercantile Agency (C. C.) 127 Fed. 173, a case just decided, in which Judge Lacombe says:
“It is not disputed that defendant made use of complainant’s book in preparing its own publications. Thanks to such use, it discovered the names of individuals, firms, and corporations engaged in business, and therefore desirable for inclusion in its book, which names had apparently not been discovered by the investigations of defendant’s own canvassers, nor found in some other publication. The names thus obtained from complainant’s book aggregated certainly hundreds, possibly thousands. Was this an unfair use of the complainant’s book? Had this question been presented to this court a year ago, the answer might not improbably have been in the affirmative. Such use of another’s compilation was approved in Moffatt v. Gill, 86 Law Times Rep. 405, but that decision was not controlling here, and for reasons assigned in Colliery Engineering Co. v. Ewald (C. C., Oct. 9, 1903) 126 Fed. 843, it was thought that its conclusions were harsh and inequitable. Nevertheless, propositions which work hardship to the individual are sometimes sustained on grounds of public policy, and the opinion of the Court of Appeals of this Circuit in Thompson Co. v. American Lawbook Co. (July, 1903) 122 Fed. 922 [59 C. C. A. 148, 62 L. R. A. 607], expressly approves the doctrine of Moffatt v. Gill. In view of that decision, which is, of course, controlling here, injunction cannot be granted upon the undisputed facts.”
It will be seen that this case, which is the latest American authority, approves and confirms the doctrine of Moffatt v. Gill, in which the court said:
“You cannot, where another man has compiled a directory, simply take his sheets, and reprint them as your own; but you are entitled, taking the sheets with you, to go and see whether the existing facts concur with the description in the sheets, and, if you do that, you may publish the result as your own.”
See, also, Pike v. Nicholas, L. R. 5 Ch. 251, and other cases cited and commented on in Coppinger on Copyrights (3d Ed.) p. 201.
It seems to us that there is strong reason for holding that the publisher of a new directory has a right to take an old directory, and be guided by it to original sources of information, and that if, so guided, he goes to those sources of information and obtains facts, he may publish those facts, even though they consist of names and addresses which are identical with those published by the old directory. But upon this motion for a temporary injunction it is not necessary, nor fitting, for the court to pass upon this question. The master has wisely reported that it is not conclusively settled. We have pointed out also that he has found that there has been infringement, and that the damage to the complainant from the publication of the defendant’s work may be, in a sense, irreparable. But these findings, if sustained by the court, do not necessarily lead us to the conclusion that an unlimited interlocutory injunction should be granted. We have pointed out also the finding with reference to the effect upon the defendant if the injunction is granted as prayed for.
Jt is the business of a court of equity to inquire not only whether serious and irreparable damage is to be done to the complainant if the tem
“On an application for an injunction pending suit, it is proper for the court to consider the harm that would be done to the complainant by refusing such an order, in comparison with the damage that might be sustained by the defendant in consequence of granting the same.”
In Trow Directory, etc., Co. v. Boyd (C. C.) 97 Fed. 586, Judge Lacombe said:
“Nevertheless an injunction to the full extent prayed for by the complainant would, if issued now, be practically a judgment in advance of trial, which would work irreparable injury to the defendant, while it seems as if the complainant might be sufficiently protected by a bond and an account of sales.”
In West Publishing Co. v. Lawyers’ Co-op. Pub. Co. (C. C.) 53 Fed. 265, Judge Coxe said:
“It is the duty of the court in all these cases to take into consideration the situation of both parties, and not to issue the writ except in the plainest cases, where the result will be irreparable injury to defendant, without corresponding advantage to plaintiff.”
In Sargent v. Seagrave, 2 Curt. 553, Fed. Cas. No. 12,365, Judge Curtis said:
“The court looks to the particular circumstances to see what degree of inconvenience would be occasioned to one party or the other by granting or withholding the injunction.”
In Spottswoode v. Clarke, 2 Phil. Ch. 157, the chancellor said:
“Here is a publication which, if not issued this month, will lose a great part of its sale for the ensuing year. If you restrain the party from selling immediately, you probably make it impossible for him to sell at all. You take property out of his pocket and give it to nobody. In such a case, if the plaintiff is right, the court has some means, at least, of indemnifying him by making defendant keep an account, whereas, if the defendant be right, and he is restrained, it is utterly impossible to give him compensation for the loss he will have sustained. And the effect of the order in that event will be to commit a great and irremediable injury.”
Dron on Copyright, p. 516, says:
“The question of granting a preliminary injunction is affected by many considerations. It depends chiefly on the extent of the doubt as to the validity of the copyright, and whether it has been infringed, the damage which will be sustained by the plaintiff if the injunction is withheld, and the injury that will be done to the defendant if it is granted. The court will exercise its discretion in following that course which appears most conducive to justice to both parties.”
See, also, Coppinger on Copyright (3d Ed.) p. 269.
In Ladd v. Oxnard (C. C.) 75 Fed. 703, Judge Putnam, in this circuit, has fully considered the subject which is now before us. At page 732 he considers the question of what loss is “irreparable,” within the meaning of the law. He cities Parker v. Woolen Co., 2 Black, 545, 17 L. Ed. 333, where the word “irreparable” is held to cover cases “where the loss of health, the loss of trade, the destruction of the means of subsistence, or the ruin of the property must ensue.” In the case last cited,
“But the law vests in no other individual holding an official position, whether executive, legislative, or judicial, a power more extensive and more capable of evil, as well as of good, without defined rules either as to the law or the facts, than that which a single judge is so often asked to exercise in the manner asked in the case at bar. In view of this fact, and further in view of the varying and inconsistent expressions in relation to the proper occasions for exercising this power, the only true safety is in saying that a temporary injunction ought never to be granted in a case of new impression, like this at bar, if it be possible to effectuate justice in any other way. * * * The case fails to impress the court with the necessity of granting the complainants, for their protection, an unconditional interlocutory order. The respondent is not charged with attempting in any way to pass off his publication for that of the complainants. Indeed, not only the title page and the short name given the respondent’s book, but also its size and style of binding, prevent any probability of one being mistaken for the other. There is therefore no threatened injury to come from a counterfeiting of that character, so that we can apply the fact, which is matter of common knowledge, that publications of this peculiar character rely for their acceptance on the reputation of the compilers and publishers, and the circulation of them must ordinarily be the same, whether protected by copyright or not. The court must therefore presume that, while the respondent’s publication might obtain some circulation for which he may be liable to account to the complainants in the way of profits, yet such circulation would probably be in addition to any which the complainants would secure, even if they maintained a monopoly, and consequently not of such character as to cause them a substantial loss of trade.”
In the case at bar we are governed largely by the considerations which prevailed in this circuit in the case which we have just cited. It is the duty of the court to take a course most conducive to justice to both parties to the controversy. In this attempt we grant a conditional order, which we think will best subserve the ends of justice. It is ordered that there will be an interlocutory decree for an injunction as prayed for, unless the defendant on or before the 10th day of May, 1904, file a bond to the complainant, with sureties approved by the clerk, in the penal sum of $5,000, conditioned for the payment of any sum, except costs, which may be finally decreed against the defendant in this court or on appeal, and keep an account of sales of directories made by it
