Ladd v. Oxnard

75 F. 703, 1896 U.S. App. LEXIS 2821

• Court: U.S. Circuit Court for the District of Massachusetts
• Decided: April 16, 1896
• Docket: No. 707
• Status: Published

Opinion

PUTNAM, Circuit Judge.

The complainants have published annually for several years a book of credit ratings of the marble, granite, and stone dealers of the United States and Canada. The volume on which this hill was brought is that of 1894, which the case shows was delivered to 179 subscribers, the complainants receiving therefor $5,430. The stipulations between the complainants and subscribers on which the books were issued were that the book delivered to each subscriber was a loan, and was not sold; and that, if any copy was found in any other hands than those entitled to use it by permission of the complainants, the publishers might take possession of it, and thus all rights to its use by the subscriber would be annulled. The bill complains of infringement, and the present issue comes on an application for an interlocutory injunction.

The respondent claims that on its face the hill is demurrable, and that, on this hearing, be is entitled to the advantage of all the questions which could be raised on demurrer. We are disposed to yield that proposition, because, certainly, the court will not grant an interlocutory injunction on the face of a bill which it sees clearly could not he sustained on demurrer. The respondent, however, makes hut one proposition which can properly he called a "proposition of law.” He claims that, by reason of the special restriction on the use of the book to which we have referred, there never has been a publication, and that, therefore, the rights of the complainants are at common law. and not under the statutes, so that this court has no jurisdiction of this suit, both parties being citizens of Massachusetts. It should he said iu this connection that, while the nature of the use of the complainants’ hook was sought to be limited in the manner which we have explained, there was no limit placed by the complainants on the extent or number of persons to whom the book might be distributed under the conditions which they had provided. Though adapted specially for persons engaged in the trades of which we have spoken, yet even these are indefinite in number, and there is no evidence that the circulation was intended to be limited to them. In any view, it might be difficult to sustain this proposition, because, as the statute now stands, an author is compelled to complete his title to his copyright before publication, so there is at least one point of time, although it may be a very minute one, when the author, who has entitled himself to a copyright, is also entitled to look to the statutes of the United States for protection, notwithstanding he has not published. Indeed, it may well be questioned whether the mere fact that one has not published, and the consequential fact that he has a remedy at common law, deprive him of a concurrent remedy under the statute in the event that he has complied with all its requirements for obtaining a federal copyright. However, we do not rest the case on this point, because we are satisfied that there has been a publication.

The respondent cites on this point Scrut. Gopyr. § 106, and relies on the well-known cases in each of which there was a private circulation of manuscripts, or of printed books, and yet it was held that the common-law right of the several authors was preserved. Scrutton on'Copyright is far from precise on this topic, and it cannot be ascertained from what the author says that he intended to lay down a rule which meets the present case. The,instances where the private circulation of manuscripts and printed books has been held not to amount to publication are so essentially different from the case in hand that we need not delay to point out the distinctions. Neither party has referred us to any decision covering this proposition which we regard as of authority in this court. Coppinger on Copyright (3d Ed.) lays down rules at least partially, if not wholly, defining publication within the meaning of the copyright statutes, which we think are more accurate than the expressions cited by the respondent from Scrutton. On page 117, in distinguishing the effect of a private and gratuitous circulation among friends, he says: “The distinction is in the limit, of the circulation. If limited to friends and acquaintances, it would not be a publication; but if general, and not so limited, it would be.” Again, on page 119, he says: “To constitute publication, it is necessary that the work shall be exposed for sale or offered gratuitously to the general public, so that any person may have an opportunity of enjoying that for which the copyright is intended to be secured.” It is to be noticed that in this last citation the learned author expressly refrains from limiting the method of disposing of the publication to that of sale, and enumerates no elements necessary to constitute publication beyond those which exist in the case at bar. In Callaghan v. Myers, 128 U. S. 617, 646, 656, 9 Sup. Ct. 177, it appeared that, under the statutes of the state, the reporter of decisions, who claimed the copyright in that case, was required to supply to the secretary of state a certain number' of copies for purposes expressly provided by law. The supreme court held such delivery to constitute publication, under the copyright statutes, although it did not appear that any copies had been distributed from the secretary’s office. This case, at least, goes so far as to hold that the mere fact that the delivery of copies of a book was under special limitations would not prevent the delivery from constituting a publication, provided tbe delivery insured that the public, or an indefinite portion of it, should, without further action on the part of the author, have access to it.

We know of no recognized practice; under the copyright law which would enable I he respondent to base; upon it any general rule such as is claimed by him in this case. The determinations of various courts that, under some circumstances, the eielivery of lectures, or the representaÍion of plays, to such of the; public as may attend, do not constitute publication, must be regarded as rather of an ineúdon tal character, arising undoubtedly to some exlent from tenderness for authors, and not establishing any general rule. So far as concerns the interests of the public and the general policy of the copyright statutes, this case stands in all respects practically the same as though the complainants’ publication had been sold by unrestricted titles; and there is no substantial reason why, if the complainants had not obtained copyrights, they should now he protected against infringers.

The respondent raises three issues of fact: First, whether the case shows that the advance copies were seasonably deposited in the mail for the purposes of the copyright statute; second, whether the complainants’ work was of an original character, and otherwise of such character as might be copyrighted; and, third, whether there was infringement.

The first issue of fact involves a question not of substantial merit; and as it is beyond doubt that the complainants did forward advance copies so early that the respondent could not possibly be prejudiced by any alleged delay, the court ought not to require on this point any very direct nroof. it is satisfied that the balance of probabilities, as shown by the evidence, is in favor of the complainants.

On the second issue;, the work of the complainants was, of course;, mainly in the nature of compilation, which they claim to have ef fected partly by interviews with gentlemen in the trade, but more largely by correspondence with attorneys and gentlemen of the trade at various pemils throughout the United States and Ganada. It is well settled that compilations of this character are protected by the copyright statutes, even when they involve only industry, and no such degree of originality as is expected from authors of repute. Indeed, the quality and grade of original work required by the courts under the copyright statutes are very moderate. This is explained in Callaghan v. Myers, already referred to, 128 U. S. 617, 659, 660, 9 Sup. Ct. 177; and other late decisions-of an interesting character in the same direction are Lamb v. Evans [1893] 1 Ch. 218, which was a case of a mere trade directory with a classification of advertisements, and Leslie v. Young [1894] App. Cas. 335, which was a case of a pamphlet containing information concerning railroad train service in a particular locality. We are satisfied That, on this point, the complainants make out a clear case, so far a a the evidence now stands.

As to the third issue, on the matter of infringement, we are also satisfied that the complainants have made out a very striking and strong case on the proofs as they now stand, notwithstanding the sworn denial of the respondent. The evidence bearing on that proposition is very much of the character described by the supreme court in Callaghan v. Myers, ubi supra, at pages 660, 661, 662, 128 U. S., and page 177, 9 Sup. Ct., with some additional peculiarities affording inferences which are quite irresistible. We deem it proper, on these propositions of fact, not to state our views, at length, because the same questions may come before us hereafter on final hearing, with additional proofs which may require a revision of our present findings. It is sufficient to say that, as the case now stands, on all these issues of fact, the proofs are quite as strong and convincing as are ordinarily required by the most careful judges in order to establish a right to an interlocutory injunction. Where so large a proportion of a copyrighted book is plagiarized as in the case at bar, no discussion is needed, in response to the proposition of the respondent that there was work done by him which was additional, as well as in the line of corrections. If any was necessary, it would be sufficient to refer again to Callaghan v. Myers, ubi supra, at pages 660, 661, 662, 128 U. S., and page 177, 9 Sup. Ct., and Leslie v. Young [1894] App. Cas. 335, 342, already cited. The facts thus relied on by the respondent, even if established, are too disproportionate to directly affect the case in any substantial matter, or to have weight as matter of evidence to affect it indirectly.

A partial, if not a complete, definition of the instances in which a court of equity will interfere because the threatened injury by a wrongful act will be irreparable, found in Parker v. Woollen Co., 2 Black, 545, 551, covers 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.” The reasons for equitable interference in patent, trade-mark, and copyright cases are brought within this definition by the words, “the loss of trade.” This, for reasons easily understood, involves injuries which it is impossible to compute by any rule of the law, or any practical rule whatever, or even to ascertain. Unless there is this special ground for equitable relief by injunction, a bill for that purpose will not lie even in patent cases. Belknap v. Schild, 161 U. S. 10, 26, 16 Sup. Ct. 443. Wherever equity has jurisdiction to grant an injunction by final decree, it has, of course, jurisdiction to grant interlocutory injunctions, though there are additional conditions of a peculiar character under which injunctions of an interlocutory nature may be granted, even though final relief is not asked for. The real basis of interlocutory injunctions is the maintenance, of the status quo, as was pointed out by Judge Goff, speaking for the circuit court of appeals for the Fourth circuit, in Buskirk v. King, 18 C. C. A. 418, 72 Fed. 22, 25. When the result is simply to preserve the status quo, it may well be said, as was stated in the case cited, that, on an application therefor, the complainant “is not required to make out such a case as will entitle him to a decree in his favor on final hearing, and it sometimes happens that he ultimately fails to secure the relief asked for, while, nevertheless, the granting of the preliminary injunction was eminently proper.'’ To the same effect is Jensen v. Norton (decided by the circuit court of appeals for the Ninth circuit) 12 C. O. A. 608, 64 Fed. 662, 664. The difficulty in applying this rule, however, to patent, trade-mark, and copyright cases is that, with them, interlocutory injunctions do not ordinarily preserve the status quo. On the other hand, as it might happen in the case at bar, they sometimes operate to suspend temporarily the entire establishment or business of the respondent, and sometimes to so break them up as to result in permanent destruction. Therefore, in cases of this character, it has not ordinarily been sufficient merely to bring a complainant within the rules stated by Judge Goff, but, "in addition thereto, the court ordinarily looks, for support of the complainant's case, either in long acquiescence by the public, or in some prior adjudication, or in some other special matter. Philadelphia Trust, Safe-Deposit & Ins. Co. v. Edison Electric Light Co. (decided by the circuit court of appeals for the Third circuit) 13 C. C. A. 40, 65 Fed. 551, 553. When, however, the case is so clear and strong as presented here, the complainant is usually entitled to the help of the court pending litigation, and usually he obtains that assistance by the way of an injunction.

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, an well as of good, without defined rules either as to the law or the fads, 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 fact that the act establishing the circuit courts of appeals has somewhat relieved the anxiety of the courts of the first instance, asked to grant interlocutory injunctions, by giving a summary appeal, does not change our duty in these particulars. The care which judges and courts should exercise in using this summary power was suggested in the concluding expressions of the supreme court in Barnard v. Gibson, 7 How. 650, 658, express,ions revived by the circuit court of appeals for the First circuit in Harden v. Manufacturing Co., 15 C. C. A. 26, 67 Fed. 809, 813. This was further illustrated in this court in an opinion passed down February 2, 1895, in Machine Co. v. Abbott, in the following language:

‘The injunction pendente lito will l>e allowed; but rule 22 oí this court must be accepted as an indication that the judges in this circuit have agreed to support, in all respects, the policy of the seventh section of the act establishing tile circuit court of appeals, so far as practicable to do so, and to avoid closing the business of any defendant in a bill in equity by an interlocutory injunction, whenever an appeal is taken and a supersedeas bond may be allowed, except in peculiar cases where justice clearly requires otherwise. But for this, a single judge, sitting in the circuit court, might, under some circumstances, do as much mischief as though no appeal had been provided for by the seventh section referred to.”

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. Therefore, in view of the lack of positive evidence of any pending irreparable injury, and, further, in view that, with reference to any claim of threatened injury, the complainants rely on the presumptions ordinarily arising in cases of this character, which presumptions are quite overcome by the peculiar circumstances of the case, we think a conditional order will accomplish all the ends of justice and sufficiently protect the complainants.

Ordered, there will be an interlocutory decree for an injunction as prayed for, unless respondent on or before the 23d day of April, 1896, files a bond to the complainants, with sureties approved by the clerk, in the penal sum of $2,000, conditioned for the payment oí any sum, except costs, which may be finally decreed against the respondent in tins court or on appeal.