64 F. 360 | U.S. Circuit Court for the District of Southern New York | 1894
It must be regarded as settled law in the United States that an author has no exclusive property in a published work except under some act of congress, and then only when he complies with the provisions of the act. Wheaton v. Peters, 8 Pet. 593; Banks v. Manchester, 23 Fed. 143, affirmed 128 U. S. 244, 252, 9 Sup. Ct. 36. A reporter can have no copyright in the opinions? delivered by the court or in the syllabi prepared by the- judges. Wheaton v. Peters and Banks v. Manchester, supra: Banks v. Publishing Co., 27 Fed. 50; Nash v. Lathrop, 142 Mass. 29, 6 N. E. 559. A reporter may acquire a valid copyright for the headnotes, footnotes, tables of cases, indexes, statements of fact and abstracts of the arguments of counsel, where these are prepared by him and are the result of his labor and research'. So he may have a copyright for a digest or synopsis of judicial decisions and the selection and arrangement of cases relating to a particular branch of the law. The copyright protects only the original work of the reporter. Myers v. Callaghan, 5 Fed. 726, 10 Biss. 139; Id., 20 Fed. 441, affirmed 128 U. S. 617, 9 Sup. Ct. 177; Connecticut v. Gould, 34 Fed. 319; Gray v. Russell, 1 Story, 11, Fed. Cas. No. 5,728; Davidson v. Wheelock, 27 Fed. 61; Drone, Copyr. 159, 160. The compiler of a digest has no monopoly of the opinions, decisions and syllabi prepared by the courts and judges, even though he has previously published them in copyrighted pamphlets. These opinions, decisions and syllabi are free alike to all digesters. But when notes suitable for use in a digest have been prepared from these common sources of information and properly secured by copyrights a subsequent compiler in the same field is not permitted to avail himself of this original work, and save time and labor for himself by copying from the property of others. He may use the copyrighted matter as a guide in the preparation of his own work to verify its accuracy, or detect erroi’s, omissions or other faults, but in all other respects he must investigate for himself. He may take the original opinions and prepare from them his own notes, “but he cannot exclusively and evasively use those already collected and embodied by the skill and industry and expenditures of another.” Banks v. McDivitt, 33 Blatchf. 163, Fed. Cas. No. 961, and cases cited; Gray v. Russell, supra; Drone, Copyr. p. 394.
Where the pirated portions can be separated from the portions not subject to criticism the injunction should go not against the entire work, but against the infringing portions. The doctrine of “confusion of goods” which has sometimes been.invoked to suppress an entire publication is not applicable where the infringing portions can be pointed out and separately condemned. Banks v. McDivitt, supra; Lawrence v. Dana, 4 Cliff. 1, 84, 85, Fed. Cas. No. 8,136; Mawman v. Tegg, 2 Russ. 385; Greene v. Bishop, 1 Cliff. 186, 203, Fed. Cas. No. 5,763; Little v. Gould, 2 Blatchf. 165, 186, Fed. Cas. No. 8,394; Story v. Holcombe, 4 McLean, 306, Fed. Cas. No. 13,497; Publishing Co. v. Keller, 30 Fed. 772; Farmer v. Elstner, 33 Fed. 494; Drone, Copyr. pp. 527, 530.
Apply these principles to the ease at bar. The complainant has
The master to whom the question of infringement was referred lias, with great diligence, compared the suspected paragraphs pointed out. by the complainant with the alleged corresponding paragraphs in the copyrighted works, and has rejiorted 303 in-sí anees of piracy. The court has examined the master’s report sufficiently to be convinced that it is a conservative report, and, without reviewing his work in detail, accepts it as establishing the fact that the above number of paragraphs infringe. As the defendant’s digest contains about 38,000 paragraphs the infringement thus established is considerably less than 1 per cent. At the trial, for the first lime, complainant presented some 700 additional paragraphs which it asserted to be infringements. Assuming as to these that the same proportion of pirated paragraphs should be established as in those submitted to the master, still 1he infringing matter would amount to less than 3 per cent. In this connection it should he remembered that the complainant has-had the defendant’s book in its possession for two years. As the result of two years’ examination, assuming that lhe court should find with the' complainant upon every one of the paragraphs pointed out by it as infringing its copyrights, the total pirated matter would amount to less than i per cent. It must, of course, be conceded that a large part of the defendant’s book, having been compiled from other publications and from syllabi prepared by the courts, is not covered by the complainant’s copyrights.
The situation-then is this: Matter proved to be piratical, about five-eighths of 1 per cent. Other designated matter, alleged to be piratical, between 1 and 2 per cen t. Matter not affected by the complainant’s copyrights, about 28 per cent. Regarding the remaining portions of the work, — about 70 per cent., — no direct proof is offered. The defendant contends that this 70 per cent, must be presumed to be innocent until proved to be guilty. The complainant, on the contrary, insists that it must be presumed fraudulent from the
The learned counsel for the complainant argues the cause as if the defendant was, in effect, reproducing the copyrighted pamphlets of the complainant and was. endeavoring to supersede and supplant these publications. It is thought that such is not the case. The defendant does not publish reports, except of selected cases, and the bill does not charge that these infringe the complainant’s copyrights. The book with which the defendant’s digest actually competes is the complainant’s digest. The defendant’s digest in no way suit-plants the copyrighted reports. Indeed, by advertising them extensively, it would secan that it musí, assist in extending tlieir sale. It appears to the court that fids is an important distinction which should, not be lost sight of. It is not a case where, as in Callaghan and Myers, the defendant’s books were published in order that they might be substituted for the complainant’s books; where the paging, order of cases, statements of facts, etc., were intended to be similar. In short, it is not a case where in every volume there are unmistakable indicia that the defendant worked from the copyrighted portions of the complainant's volume and intended to produce an almost identical book. In a case like Callaghan and Myers the fact that the infringer •worked from the copyrighted books is, of course, a most important factor, but in the case; of an index or a digest the compiler is not guilty of bad faith in using the book that he is digesting. He must use this book. Not only should a digest tell, in brief, what has been decided, but it should also inform the reader where the decision is to be found in full. This of necessity requires an examination of the reports. To prepare a digest without such an examination would be an impossibility. A digest prepared only from the manuscripts of the judges would be a ludicrous excrescence which would not be harbored in any library. It would be about as valuable as a city directory which contains the names of the citizens, but omits to mention where they reside. As the complainant, by reason of its large facilities, is able, as a rule, to place the decisions of the courts before the profession in advance of other publishers, it is obvious that .any one who makes a true and useful digest of “the year’s grist” must examine the complainant's publications. If the complainant’s contention is correct, that a digester may not take a “copyrighted book in his hands,” the making of digests is at an end. The court is unable to perceive how mala ides can be imputed to the defendant because, in making an annual digest, it uses the reports which have been published during the year.
Without pursuing the subject further it is thought that the complainant must be contented when it has maintained and vindicated its privileges under the law of copyright; that the defendant should be punished to the extent that it has been guilty of an infrac
As the complainant stated at the argument that it did not require the court to make any comparison of the additional paragraphs, before referred to, with complainant’s publications, or any finding in relation thereto, it follows that the complainant is entitled to a decree for an injunction and an accounting, limited, however, to the paragraphs reported by the master, with costs.