West Pub. Co. v. Lawyers' Co-operative Pub. Co.

64 F. 360, 1894 U.S. App. LEXIS 3050

Opinion

GOXE, District Judge.

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 valid copyrights for the original work prepared by its editors and published in the various pamphlets composing its system of reports. The opinions of the judges and the syllabi prepared by them are not covered by the complainant’s copyrights, and these the defendant, considering the matter from a purely legal point of view, had a perfect right to use. The defendant had a right to copy the opinions, decisions and syllabi prepared by the court from the complainant’s publications, or from any other source, and use them precisely as other matter which is free to the public. The defendant could lawfully prepare notes, abstracts and paragraphs from these free sources of information, collect them and publish them in a digest of its own. In doing this its editors had no right to avail themselves of the complainant’s original work. They were forbidden not only from copying the work of the complainant’s editors, but also from using that work in any way to give them suggestions or to lighten their labors. In short, they were not at liberty to appropriate directly or indirectly the matter which tin» complainant has protected by copyrights.

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 proof already adduced. The complainant argues that the defendant’s editors had the copyrighted books before them when they prepared their digest paragraphs; that they are shown to have done five times more work than other editors engaged in like occupation; that they are proved to have pirated 803 paragraphs and the presumption is that the entire book is so tainted with fraud that it should be suppressed. The court is of the ox>inion that in a work like a digest, which has the general characteristics of a directory, an index or a road book, where each paragraph is separate and distinct from every other, and can be removed without in any way destroying the effect of the remaining paragraphs, it would be establishing a most dangerous precedent to condemn the entire work when less than 1 per cent, is proved to be piratical. This would be substituting conjecture for proof, and in a case, too, where the proof is accessible.' Where infringement exists in copyright cases it is usually susceptible of proof. There are always some indications which disclose the presence of the pirate. The court does not understand that this is denied, but it is said that it will consume a decade to examine and compare all the remaining paragraphs and that the complainant should not be required to enter upon such a task. Bluntly stated the proposition is this: A party, upon whom the onus prohandi rests, is entitled to a decree for the entire relief demanded if, instead of proving his case, he proves a part and convinces the court that it will be difficult to prove the rest. Were this the case of an ordinary book like a history or a novel, and the court were convinced that, though disguised, the plot and plan of the work had been appropriated and the characters reproduced, though under different names, there would be no' hesitation in condemning the entire work. Here, on the other hand, there is no connection whatever between the pirated paragraphs and the paragraphs which are the result of original and honest labor. The former can be removed and the complainant’s rights protected, and Avithout depriving the defendant of the fruits of the work which is fairly its OAvn. It is not a case where the doctrine of "confusion of goods” is applicable, because the complainant’s goods can be separated from the defendant’s; it will take time, but it can be done. If the complainant is given the SAveeping decree asked for the defendant will be prevented from publishing even the 28 per cent, of matter to which the complainant does not pretend to lay claim. If the defendant should eliminate from its work every paragraph which the complainant has pointed out as infringing, the remaining 36,000 paragraphs could not be sold by the defendant. Indeed, should the defendant issue a new edition with every paragraph eliminated which has been designated as open to the slightest suspicion of piracy it Avould still be under the ban of such a decree. The court cannot believe that such a decree would be just. Though the defendant, through some of its editors, has been guilty of inequitable conduct in appropriating to its use the result of the complainant’s labors, the punishment it should receive should not be out of all proportion to the offense. To charge the defend- aiii with 38,000 piracies because it is shown to be guilty of 303 is pushing the law of presumptive evidence far in advance of any reported case. Equity seems to demand that the defendant be permitted to use what is honestly its own and restrained from using what it has taken from the complainant. By such a decree the rights of all will be preserved.

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 tion of that law, and held accountable for every infringement which can be fairly laid at its door. Beyond this the court cannot go; it cannot consider matters not embraced in the issues joined by the pleadings, or enter upon a course of speculation and presume wholesale piracy from the proof now before the court, or from the alleged unfair business methods of the defendant in its relations with the complainant.. The court can discover nothing in the case of Callaghan v. Myers, which is at variance with these views.

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.