Jewelers' Mercantile Agency, Ltd. v. Jewelers' Weekly Pub. Co.

• Decision Date: 08 March 1898
• Citation: 49 N.E. 872,155 N.Y. 241
• Parties: JEWELERS' MERCANTILE AGENCY, Limited, v. JEWELERS' WEEKLY PUB. CO. et al.
• Court: New York Court of Appeals Court of Appeals

155 N.Y. 241

49 N.E. 872

JEWELERS' MERCANTILE AGENCY, Limited,

v.JEWELERS' WEEKLY PUB. CO. et al.

Court of Appeals of New York.

March 8, 1898.

Appeal from supreme court, general term, First department.

Action by the Jewelers' Mercantile Agency, Limited, against the Jewelers' Weekly Publishing Company, now the Trades' Weekly Company, and others. From a judgment of the general term (32 N. Y. Supp. 41) affirming a judgment of the special term, defendants appeal. Reversed.

The judgment appealed from enjoined the defendant from making any use of the plaintiff's reference books or confidential sheets, and from copying, appropriating, printing, publishing, or using, in any way, information taken therefrom, or furnishing such information to others. The plaintiff, a domestic corporation, has, ever since its incorporation, in 1883, been engaged in the business of a mercantile agency, which consisted in obtaining information regarding the business, street addresses, kinds and extent of business, commercial standing and mercantile credit of individuals, firms, and corporations engaged in the jewelry trade in the United States and Canada. This information is printed twice a year in the form of a reference book. A duplicate of smaller form is also printed. The plaintiff also issues weekly a confidential sheet of changes and corrections. These books and confidential sheets are furnished and lent to subscribers subscribing therefor, upon a contract which reads as follows: ‘The undersigned employs the Jewelers' Mercantile Agency, Limited, from _____, 189_, to _____, 189_, to aid in answering inquiries by verbal or written reports, reference books, and correction sheets, as to the responsibility, character, and standing of persons and firms in the jewelry and kindred trades, within the United States and Canada; said inquiries not to exceed one hundred and to be made within the period of this contract. For such aid and service, including the loan of _____, 189_, and _____, 189_, volumes of reference book, the undersigned will pay to said company seventy-five dollars at the commencement of this subscription, and for each inquiry exceeding the one hundred, thirty cents on demand. All information which may have been or may be obtained by agents of said company, who are appointed our subagents, and communicated to us, shall be strictly confidential between the parties hereto, and the subagent's name or names are not to be disclosed by said company to the subscriber or other person, and the communicated information is not to be disclosed to the person or persons reported on. No information is guarantied as to correctness, and the said company is not responsible for act or negligence of the subagent or agents. Title to the reference books to remain in said company, and books are to be returned upon expiration of subscription. On return of amount of unexpired term of subscription, said company reserves the right to terminate this contract, and the reference books are then to be returned to it. Dated _____, 188_. Signature: ________.’‘(The conditions of this subscription are absolute, and no verbal or other understanding will be considered or allowed by the company.)’ The plaintiff's reference book in the larger form bears upon the cover thereof, distinctly printed, the statement: ‘This is the property of the Jewelers' Mercantile Agency, Limited. Confidential Reference Book.’ And within, conspicuously printed, appears the following: ‘This book is the property of the Jewelers' Mercantile Agency, Limited, and is held by _____, under agreement of _____, eighteen _____, with them.’ It does not appear that the reference book was confined exclusively to the jewelry trade, nor does it appear but that any one could obtain a copy of the same by subscribing for it according to the terms of such contract. The defendant is also a domestic corporation, organized in January, 1891. It took the business which had before been carried on by the defendant Rothschild, and earlier by both Rothschild and Ulmann. The defendant took and appropriated from the plaintiff's reference book certain material information therein contained, and made use of it in a publication of its own, which came into competition with the plaintiff's publication. It also appeared that on the 28th day of June, 1890, the plaintiff, in pursuance of the copyright laws of the United States, deposited in the copyright office, with the librarian of congress, the title of the plaintiff's book of July, 1890. And on the 28th day of June, 1890, the plaintiff, in further pursuance of said copyright law, deposited in the office of the librarian of congress two copies of said reference book. And the said plaintiff printed on the page following the title page in the said book of July, 1890, the following notice: ‘Entered according to act of congress, in the year 1890, by the Jewelers' Mercantile Agency, Limited, in the office of the librarian of congress at Washington.’ The plaintiff, however, insists the copyright failed because of its omission to make publication of the reference book, and stands upon its common-law right that there has never been such a publication as to entitle the general public to the use of the book. The acts which defendant urges amounted to a publication were the delivery of the book to such subscribers as cared for it, and were willing to become parties to the contract, supra, and the deposit of two of the books in the library of congress.

Wheeler H. Peckham, for appellants.

Howard Mansfield, for respondent.

PARKER, C. J. (after stating the facts).

Thus far in the progress of this suit the plaintiff has succeeded in its attempt to convince the court that the original common-law right in the ‘reference books,’ so called, has not been devested, and, therefore, it is entitled to invoke the restraining power of the court to prevent the defendant from using in any way any information obtained therefrom. To the claim of the defendant that the plaintiff devested itself of its common-law right by copyrighting the reference books pursuant to the provisions of the Revised Statutes of the United States, the plaintiff makes answer that it had not, in fact, perfected a copyright of the book, and, therefore, its common-law right remains. It is true that plaintiff recorded the title of the book before publication; caused a copyright notice to be printed on the title page, and then delivered to the librarian of congress two printed copies of the book, with the notice of copyright printed on the title page, in pursuance of the statute which requires that such a number of copies shall be delivered to the librarian within 10 days after publication. So far as the record discloses, therefore, it would necessarily appear to any one making an examination of it for the purpose of ascertaining whether the plaintiff had secured to itself the benefit of copyright as to the reference book, that it had succeeded. But the plaintiff insists that its attempt, or pretended attempt, to secure a copyright was ineffectual, because of the omission on its part to publish the reference book.

We are not concerned in inquiring whether the plaintiff's steps, apparently looking to a copyright of the book, were taken for the purpose of procuring a copyright in good faith, or merely for the purpose of securing such advantage as might accrue from the appearance of copyright. It, of course, cannot have at the same time the benefit of the copyright statute and also retain its common-law right. No proposition is better settled than that a statutory copyright operates to divest a party of the common-law right. If, then, what the plaintiff did amounted to such a publication of the reference book as was requisite in connection with the other steps taken to perfect a copyright, its common-law rights were devested, and its remedy against violators of the rights thus secured would have been by suit in the United States courts. But publication also operates to destroy the common-law rights, whether a copyright be secured or not. An invention, a painting, or a book is the property of its creator. He may keep it for his own exclusive use or enjoyment if he sees fit. The public has no greater right to it, however useful it may be, than it would have to any other part of his personal property. But, if he once publishes it, his property right in it is gone, and every one may make use of it. A person who writes a book may keep the manuscript without printing it, and prevent any one from seeing it. He may take a still further step, and cause the book to be printed, and then determine that it shall not be seen by the public, and store all the printed copies away, and still he has not made a publication of it within the meaning of the law. It continues to be his property, as he has not yet offered it to the public. If, while the books are thus stored away, a copy should be obtained surreptitiously, and printed, or should the author loan one of the books to a friend to read and return, and in that manner a copy of the book should fall into the hands of some one who should attempt to print it, the author would be entitled to restrain publication, for the reason that he had not undertaken to put within the reach of the general public such thoughts or facts as he may have expressed or stated in the book. Cases have arisen in which there was a private circulation for a restricted purpose, and the holding has been that it did not constitute a publication, as in Prince Albert v. Strange, 2 De Gex & S. 652. In that case it appeared that her majesty and the prince consort had given to a number of friends copies of prints and etchings made for their own amusement, and this was held a private circulation, and not a publication. Out of a few cases of the same general character seems to have grown the idea that it is...