Leon v. Pacific Telephone & Telegraph Co.

Decision Date19 July 1937
Docket NumberNo. 8397.,8397.
Citation91 F.2d 484
PartiesLEON et al. v. PACIFIC TELEPHONE & TELEGRAPH CO.
CourtU.S. Court of Appeals — Ninth Circuit

Jas. M. Naylor and Arthur P. Shapro, both of San Francisco, Cal., for appellants.

Alfred Sutro, Norbert Korte, and Samuel L. Wright, all of San Francisco, Cal. (Pillsbury, Madison & Sutro, of San Francisco, Cal., of counsel), for appellee.

Before DENMAN, STEPHENS, and HEALY, Circuit Judges.

DENMAN, Circuit Judge.

This is an appeal from a decree restraining infringement of copyright.

Appellee, Pacific Telephone & Telegraph Company, brought a suit in equity in the District Court to restrain appellants from infringement of appellee's copyright in the May, 1935, issues of appellee's San Francisco and East Bay telephone directories. The bill alleged the copyright duly issued covering these telephone books and set out that the defendants had infringed it by their publication of a "numerical telephone directory" — that is to say, they had taken the information contained in plaintiff's alphabetical directory and published it in rearranged form, classifying it according to "exchanges" or prefixes, and listing the numbers under each exchange in numerical consecutive order. The number was followed by the subscriber's name.

The bill prayed for temporary and permanent injunctions, damages and costs, and that the defendants be required to deliver up for destruction all the infringing copies as well as all plates, molds, matrices, or other means of making such infringing copies.

The defendants answered, denying the validity of the copyright and the charge of infringement, and also alleged that defendants' use of plaintiff's material was a "fair use" and hence not an infringement.

Trial was had and findings of fact and conclusions of law were made to this effect:

That since October, 1908, plaintiff had caused to be printed and distributed to its subscribers, at frequent intervals, alphabetical directories of the subscribers with their addresses and telephone numbers, all of which have been duly copyrighted, including the May, 1935, issues.

That the copyrights were valid.

That defendants had compiled, published, and sold to the public numeral directories entitled "Numerical Telephone Directory, San Francisco and other Cities and Towns, 1935-36" and "Numerical Telephone Directory, Oakland, Berkeley, Alameda, San Leandro, 1935," the same being compiled exclusively from the plaintiff's alphabetical directories.

That such action constituted infringement of the plaintiff's copyright.

That "The collection, editing, compilation, classification, arrangement, preparation of the material in said directories plaintiff's involved a large amount of detail and required great effort, discretion, judgment, painstaking care, skill, labor, accuracy, experience and authorship of high order. Said telephone directories were the sole and exclusive property of plaintiff, and plaintiff possessed the sole and exclusive literary and other rights therein, including the right to copy. Said directories constitute new and original literary works, and are the proper subject of copyright. Said copyrights are existing and plaintiff is the sole and exclusive owner, author and proprietor thereof."

The court entered a final decree permanently restraining the defendants from printing, publishing, selling, disposing of, etc., the infringing work; requiring them to deliver up for destruction all copies of the numerical directory and all plates, molds, matrices, or other means for making the directories, and awarding costs against them.

The appeal in this case raises three questions:

(1) Whether plaintiff has a valid copyright.

(2) Whether defendants' actions constituted an infringement.

(3) Whether or not the court should have dismissed the action as to Dagmar Leon, the contention of defendants being that she was not shown to have participated actively in the alleged infringement.

(1) Validity of the copyright. That all formal steps necessary to perfect the copyright were taken is admitted by the defendants. Their contention here is that a directory represents nothing new or original and hence is not a proper subject of copyright. The District Court found otherwise, as the above quotation shows. Defendants introduced no evidence to contradict that finding. The plaintiff offered evidence as to how the 1935 directory was constructed. A person desiring telephone service, who was not listed in the previous directory, filled out an application card, and a telephone number was assigned to him. Then his name, address, and assigned number was typed on a slip of paper. Each page from the old directory was cut out and pasted on a sheet of paper and the new subscriber's slip was pasted alongside, preserving the alphabetical order. Subscribers in the old directory whose numbers had been discontinued, were penciled out of the page cut from the former volume. The paper sheets, with the penciling out of discontinued subscribers and the adjoining data on new subscribers were sent to the printer who made up a new page incorporating the changes.

The San Francisco listings of the directory alleged to be infringed totaled 160,266, and the East Bay listings 97,512. The total cost of producing these directories was $295,222. One hundred persons are regularly employed by plaintiff in its directory department.

It is obvious from this evidence that the business of getting out a directory is an expensive, complicated, well-organized endeavor, requiring skill, ingenuity, and original research. Unless the product of such activity is by its very nature not subject to copyright, plaintiff's directories are certainly entitled to copyright protection in the case at bar.

That a directory may be copyrighted is well settled. The principle is recognized in the statute (Act of March 4, 1909, c. 320, § 5, 35 Stat. 1076; 17 U.S.C.A. § 5):

The application for registration shall specify to which of the following classes the work in which copyright is claimed belongs:

"(a) Books, including composite and cyclopedic works, directories, gazetteers, and other compilations." (Italics supplied.)

A city directory may be copyrighted. Sampson & Murdock Co. v. Seaver-Radford Co. (C.C.A.1) 140 F. 539, 542.

In Jeweler's Circular Pub. Co. v. Keystone Pub. Co., 281 F. 83, at page 88, 26 A.L.R. 571, the Circuit Court of Appeals for the Second Circuit held copyrightable a directory of jewelers' trade-marks:

"The right to copyright a book upon which one has expended labor in its preparation does not depend upon whether the materials which he has collected consist or not of matters which are publici juris, or whether such materials show literary skill or originality, either in thought or in language, or anything more than industrious collection. The man who goes...

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41 cases
  • Williams & Wilkins Company v. United States
    • United States
    • U.S. Claims Court
    • November 27, 1973
    ...without more, defeats the defense of fair use. The rule to be applied in such a situation was stated in Leon v. Pacific Telephone & Telegraph Co., 91 F.2d 484, 486 (9th Cir.1937) as follows: Counsel have not disclosed a single authority, nor have we been able to find one, which lends any su......
  • Loew's Incorporated v. Columbia Broadcasting System
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    ...have transposed the work, from the serious to the comic vein. This is analogous to the situation in Leon v. Pacific Telephone & Telegraph Co., 9 Cir., 1937, 91 F.2d 484, supra, when defendant took plaintiff's copyrighted telephone book and inverted the list from an alphabetical one to a num......
  • Walt Disney Productions v. Air Pirates
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • September 5, 1978
    ...at the time of Benny that such verbatim copying precluded resort to the fair use defense. See, E. g., Leon v. Pacific Telephone & Telegraph Co., 91 F.2d 484 (9th Cir. 1937). 12 Moreover, the Benny facts presented a particularly appropriate instance to apply that settled principle. As the Be......
  • West Pub. Co. v. Mead Data Cent., Inc.
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    • September 4, 1986
    ...by a "long line of cases." Hutchinson, of course, was based on and merely extended that "long line of cases." Leon v. Pacific Telephone Co., 91 F.2d 484, 486, (9th Cir.1937), the first case cited and relied upon in Hutchinson, quoted Justice Holmes' statement made in 1903 in Bleistein v. Do......
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  • An Epitaph for Traditional Copyright Protection of Network Features of Computer Software
    • United States
    • Antitrust Bulletin No. 43-3-4, September 1998
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    ...copyright could be establishedon the basis of substantial effort in gathering facts. See, e.g., Leon v.Pacific Telephone &Telegraph Co., 91 F.2d 484 (9th Cir.1937);Jew-eler's Circular Publishing Co. v,KeystonePublishing Co., 281 F. 83 (2dCir. 1922).TheSupremeCourt in Feist rejected this "sw......

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