281 F. 83 (2nd Cir. 1922), 188, Jeweler's Circular Pub. Co. v. Keystone Pub. Co.

• Citation: 281 F. 83
• Party Name: JEWELER'S CIRCULAR PUB. CO. v. KEYSTONE PUB. CO.
• Case Date: February 06, 1922
• Court: United States Courts of Appeals, U.S. Court of Appeals — Second Circuit

Page 83

281 F. 83 (2nd Cir. 1922)

JEWELER'S CIRCULAR PUB. CO.

v.

KEYSTONE PUB. CO.

No. 188.

United States Court of Appeals, Second Circuit.

February 6, 1922

Olney & Comstock, of New York City (Robert C. Beatty, of New York City, of counsel), for appellant.

W. H. Swenarton, of New York City, for appellee.

Page 84

Before ROGERS, HOUGH, and MANTON, Circuit Judges.

ROGERS, Circuit Judge.

This suit is brought to restrain the infringement of copyright No. 391,804, granted to the plaintiff, dated February 15, 1915, for a compilation entitled 'Trade-Marks of the Jewelry and Kindred Trades. ' It is alleged to be infringed by the defendant's publication entitled 'The Jewelers' Index,' published in October, 1920. The plaintiff's publication is sold generally to the jewelry and kindred trades at the price of $5 a copy, and some thousands of copies have been so sold in such trades. The defendant's publication, on the other hand, is distributed without charge to the same trades. It has printed on the cover:

'This Index is loaned, not sold. It remains the property of the Keystone Publishing Company, and must be returned in order to receive the new edition.'

It contains 610 pages, and is a larger volume than the plaintiff's, which only contains 326 pages. It is alleged that this fact has already undermined, and will undermine, unless restrained, the sale of the plaintiff's publication, and will destroy the market for any new supplements or new editions thereof, as well as irreparably injure the good will and reputation which the plaintiff has acquired over a period of more than half a century with its advertisers and customers.

The complaint alleges that the defendant, in preparing, compiling, and printing its book, entitled 'The Jewelers' Index,' has, as a substitute for and in lieu of a resort to original sources, unfairly used and pirated the results of the plaintiff's labor and expenditures, as set forth in the plaintiff's copyrighted book, and has incorporated such results in its (defendant's) publication, so that defendant's publication is to a very large extent the product of the plaintiff's original work, merely rewritten as to form, and with minor changes, omissions, and additions made by defendant, so as to conceal the fact that defendant's book was the product of the plaintiff's original work; that defendant, instead of resorting to original sources for illustrations and representations of marks, both registered and unregistered, and other important and useful information of interest to the jewelry and kindred trades, has to a very large extent obtained the same from the plaintiff's copyrighted book.

The answer denies that its book is an infringement of the plaintiff's book. It denies that it has unfairly used or pirated the results of the plaintiff's labor or expenditure as set forth in the plaintiff's copyrighted book, and it denies that it has incorporated such results in its publication, and denies that its publication is to any extent the product of the plaintiff's original work. It denies that, instead of resorting to original sources for illustrations or representations of trade-marks, registered or unregistered, or other important or useful information of interest to the trades, that it has to any extent obtained the same from the plaintiff's copyrighted book, and it denies that it has availed itself of any of the plaintiff's original work, and the defendant denies that it has published any of the plaintiff's original work as its own original work.

Page 85

The court below has entered a decree holding the copyright valid and infringed. It directs that a perpetual injunction be issued enjoining the respondent from selling or distributing the Trade-Mark Section of the Jewelers' Index, published by it in October, 1920, or from printing, publishing, or vending of any other compilation of trade-marks which shall contain any fac simile or colorable copy or reproduction which shall be made from any trade-mark illustrations contained in the plaintiff's copyrighted book. The decree also contains the other usual provisions inserted in such decrees, and provides for an accounting and the payment of damages.

The Century Dictionary defines a directory as:

'A book containing an alphabetical list of the inhabitants of a city, town, district, or the like, with their occupation, place of business, and abode.'

That is one kind, and perhaps the most usual kind, of a directory, the one with which most people are familiar; but a city directory is not the sole kind of a directory. There are, among others, telephone directories, social directories, business directories, and trade-mark directories. The plaintiff's directory is a directory of trade-marks. It was first published and copyrighted in the year 1896. It has passed through several editions. The third edition, published and copyrighted in 1915, is the one involved in this suit.

It was at one time intimated in certain judicial opinions that directories were not entitled to copyright. But the law is now well established to the contrary in England. Kelly v. Hopper, 1 Y. & C.C.C. 197; Kelly v. Morris, L.R. 1 Eq. 696; Morris v. Ashbee, L.R. 7 Eq. 33; Lamb v. Evans, (1893) 1 Ch.Div. 218; Morris v. Wright, L.R. 5 Ch.A. 279. It is equally well-established law in this country. Trow Directory Printing & Book-Binding Co. v. Boyd (C.c.) 97 F. 586; Williams v. Smythe (C.C.) 110 F. 961; Trow Directory Co. v. United States Directory Co. (C.C.) 122 F. 191; Sampson & Murdock Co. v. Seaver-Radford Co., 140 F. 539, 72 C.C.A. 55; Hartford Printing Co. v. Hartford Directory & Publishing Co. (C.C.) 146 F. 332. And in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23 Sup.Ct. 298, 47 L.Ed. 460, Mr. Justice Holmes, writing for the court, speaks of directories as being capable of copyright. Whatever doubt may have existed on the subject under the earlier acts, if any can be said to have existed, was ended by the action of Congress in enacting the Copyright Act of March 4, 1909 (Comp.St. Secs. 9517-9524, 9530-9584), for section 5 of that act, in subdivision A (Comp. St. Sec. 9521), in specifying the works in which copyright can be claimed, expressly names directories. Its language is:

'Books, including composite and cyclopedic works, directories, gazetteers, and other compilations.'

The plaintiff's publication, being clearly a directory, was unquestionably copyrightable, and the plaintiff's copyright was a valid copyright. The fact is not material that it contains a compilation of trade-marks, and that a single trade-mark is not the subject of copyright.

Error is assigned in overruling the following exception to the special master's report:

Page 86

'(2) In that the special master has erroneously found that the plaintiff has a copyright upon illustrations of trade-marks published in its said book, whereas the Copyright Law of the United States forbids the copyright of such illustrations of trade-marks; it providing that 'no prints or labels designed to be used for any other article of manufacture shall be entered under the copyright law, but may be registered in the Patent Office.' U.S. Compiled Statutes, 1918, Compact Edition, Sec. 9517a.'

The Copyright Law of 1874 (18 Stat. 78, c. 301) provided as follows:

'The words 'engraving,' 'cut,' and 'print' shall be applied only to pictorial illustrations or works connected with the fine arts, and no prints or labels designed to be used for any other articles of manufacture shall be entered under the Copyright Law, but may be registered in the Patent Office.'

The above provision of 1874 was not repealed by the Act of March 4, 1909, and it remained the duty of the Patent Office to register all prints which were required to be registered in that office under the act of 1874. See 28 Opinions of Attorney General, 116, 120.

But the question involved in this case does not arise under section 5, K, of the act of 1909, which recognized the right to copyright 'prints and pictorial illustrations.' If the trade-marks which are found in the plaintiff's book are not prints and pictorial illustrations, entitled to be copyrighted, but are such as are to be registered in the Patent Office, it is not decisive of the question involved herein. The court below assumed that the trade-marks contained in the plaintiff's publication, being designed for use on articles of manufacture, could not be copyrighted, but correctly regarded that fact as altogether immaterial.

The defendant insists that an illustration of a trade-mark, originated by another and the sole property of a manufacturer or jobber, is a mere copy of a mark having a set or standard form, and is not the subject of copyright. Any one who reproduces it is confined of necessity to the reproduction of the work of another. Such reproduction contains, he says, not elements of originality, and leaves no room for artistic treatment, and cannot be copyrighted. The defendant relies upon Royal Sales Co. v. Gaynor, 164 F. 207, in which the Circuit Court of the United States for the Southern District of New York held that the copyright of a book did not cover a monogram of a campaign badge described therein. In that opinion it was said that the validity of the copyright of the book was not questioned, but that 'the monogram was not a 'cut, print or engraving," within the meaning of the only words of the copyright law at all appropriate to it, 'because it was not a pictorial illustration 'connected with the fine arts," as required by the Copyright Act of June 18, 1874. That, however, was the case of a single print, and, if correctly decided, 'does not touch this case.'

But the Gaynor Case, in holding that the monogram was not a 'cut, print or engraving,' because it was not a pictorial illustration connected with the fine arts, may be difficult to reconcile with the decision in Bleistein v. Donaldson, 188 U.S. 239, 23 Sup.Ct. 298, ...