Addison-Wesley Publishing Company v. Brown

• Decision Date: 12 August 1963
• Docket Number: No. 62-C-356.,62-C-356.
• Parties: ADDISON-WESLEY PUBLISHING COMPANY, Inc., Francis Weston Sears and Mark W. Zemansky, Plaintiffs, v. Dale BROWN, Victoria Bagneres and V. Bherens, d/b/a University Science Publications and C. L. Brown, Defendants.
• Court: U.S. District Court — Eastern District of New York

223 F. Supp. 219

ADDISON-WESLEY PUBLISHING COMPANY, Inc., Francis Weston Sears and Mark W. Zemansky, Plaintiffs, v. Dale BROWN, Victoria Bagneres and V. Bherens, d/b/a University Science Publications and C. L. Brown, Defendants.

No. 62-C-356.

United States District Court E. D. New York.

August 12, 1963.

Cowan, Liebowitz & Latman, New York City, Alan Latman, Walter J. Derenberg and Marvin S. Cowan, New York City, of counsel, for plaintiffs.

Joseph J. Crisa, Long Island City, N. Y., Murray J. Halper, Long Island City, N. Y., and Maxwell Okun, New York City, of counsel, for defendants.

ROSLING, District Judge.

As to the first cause of action pleaded in the complaint, it is directed that defendants,¹ their agents and servants be enjoined during the pendency of this action and permanently from infringing the copyrights of plaintiff Addison-Wesley evidenced by Certificates of Registration Numbers A423800, A423781 and A175928 in any manner, and in particular, but without limiting the generality of this restraint, from printing, reprinting, publishing, vending or distributing any copies of the so-called Manual of Solutions, Exhibit 2 annexed to the complaint, or any matter in any form purporting to constitute solutions in respect of the textbooks hereby held infringed of any problems therein contained.

To the extent that the complaint may require amendment to serve as a basis for the relief granted, the Court holds that the issues hereby disposed of were tried by express or implied consent of the parties, and are, accordingly, treated in all respects as if they had been raised in the pleadings.²

The remaining issues arising upon the first cause of action and the further relief, if any, to be granted thereunder³ and the issues tendered in the second to the sixth causes of action, involving generally claims of unfair competition and related matters, are set down for pretrial procedure in accordance with the provisions of Rule 16. The attorneys for the parties are directed to appear before this Court on October 21, 1963 at 10.00 A.M. for conference and relevant action.

Findings of fact upon the issue thus far disposed of are set out in what follows immediately.

The individual plaintiffs, Francis Weston Sears (Sears) and Mark W. Zemansky (Zemansky), have achieved eminence in the field of scientific education. Sears is a professor and chairman of the Department of Physics at Dartmouth College, Zemansky, a professor and past chairman of the Department of Physics at the City College of New York.

The corporate plaintiff, Addison-Wesley Publishing Company, Inc. (Addison), is a substantial, long established and favorably known, book publishing house specializing in textbooks on scientific and engineering subjects.

About 1949 Addison commissioned the professors to write a number of college physics textbooks among which were a companion pair entitled "College Physics" and "University Physics." The only significant difference between these works lay in the degree of mathematical sophistication presumed by the authors to be possessed by the users. Whereas the "College" text could be comprehended by students who had completed no prerequisites beyond trigonometry the "University" work assumed a familiarity with the principles of the calculus and hence utilized its procedures when appropriate.

Each of these texts was comprised of two major divisions and was published either as a single complete volume, or in its components as two separate books. It is as to Part II of the second edition of University Physics, complete, Registration No. A175928 and Part II of the third edition of College Physics, complete, Registration No. 423800 and, Part II alone, Registration No. 423781, that the charge of infringement is advanced by the plaintiff and upheld by the Court.⁴ The copyright ran to Addison to whom Sears and Zemansky had assigned their interest in the books, including the right to secure the statutory copyright. Such copyright was secured by Addison on January 21, 1955 as to "University Physics" and on January 4, 1960, as to "College Physics" by publication on or about such dates with sufficient notice of copyright.⁵

Plaintiffs' textbooks were each divided into 49 chapters of which chapters 24 through 49 comprised Part II. At the close of most of the chapters the authors had posed problems ranging in number from less than 10 to as many as 30 or more. In the University Physics book an appendix supplied supplementary problems segregated according to chapters illustrated thereby. The publisher's prefatory note explained that "These supplementary problems have been reproduced from the plates used in the first edition." All problems had been carefully and with the expenditure of much skill and effort edited, selected and arranged to serve as exercises illustrating, with an intended progressive increase in difficulty of solution, the didactics of the chapter to which they were appended. The problems corresponded to the sequence of the instructional content of the text. As part of their preliminary procedures the authors had themselves solved the problems their texts were to propound to the student users. These solutions, however, were not published by them in any form, although quantitative answers to odd-numbered problems were supplied in one of the several appendices printed in the texts. These might serve as a checklist for the student user of the book to be compared by him with the answers independently arrived at by his own calculations, giving him assurance that the steps in his solution which produced a matching answer were correctly carried through.

Those for whose use the books were intended and who would be the actual purchasers were the college undergraduates, largely freshmen, who were taking their initial courses in physics. The market, however, was manifestly a captive one, being controlled by the physics faculty of those colleges which by "adopting" a text for use in their instruction insured that the college bookstore would stock the text for sale to the students and that the students would buy.

Several hundred thousand copies of Sears and Zemansky physics textbooks had upon such adoption been sold through the years and the experience of the professors thus gained, as well as Addison's own marketing research in the sale of textbooks generally, persuaded the plaintiffs, as it does the Court, that availability to the students of a book of solutions to the exercises incorporated in the texts would adversely affect the prospect of their collegiate adoption.⁶

In this circumstantial context defendants undertook to supply the student purchasers of the textbooks with solutions which the authors and the publisher, mindful marketwise of the pedagogical attitudes of the instructors, had refrained from publishing so as to bar access thereto by students. With the prospect or, at least, hope of financial gain as motivation defendants published, copyrighted and proceeded to vend in 1961 a "Manual of Solutions" which on its frontispiece carried the following legend: "Physics Series: Solutions to the problems appearing in `University Physics' and `College Physics' by Sears and Zemansky — Part 2." Defendants evincing an initial prudence sought to obtain the consent of Addison before undertaking the issuance of the manual. Permission was refused, but this did not halt them. Circularizing the trade as to their project, they succeeded in placing their work in a number of college bookstores and others of general clientele, and in at least one instance by misrepresenting that the manual was being issued with the consent of the copyright owner and implying that it had the sponsorship of the authors of the textbooks persuaded a large and well known retailer of educational books to stock their manual.

The manual which runs to 133 pages discloses in its preface the nature of its content and the relationship of such matter to the texts that have been pilfered in its production. The prefatory statement captioned, "KEY TO NUMBERING" explains:

"This manual contains the solutions to the problems in `College Physics' and `University Physics', Part II, by Sears and Zemansky.

"The chapter numbers in this manual correspond to those in the texts. However, a special notation is used for the problem numbers. For example: the number 6:4, appearing next to a specific problem, implies that the first number refers to problem 6 in `College Physics', and the second number to problem 4 in `University Physics'. If a zero appears in place of either a first or second number, this indicates that there is no corresponding problem for the respective textbook."

The body of the manual discloses the plan of defendants whereby they thought to evade the charge of infringement which might too easily have been sustained had defendants engaged in an obstrusive copying of the text book content.

Confronted with the dilemma demanding on the one hand the presentation, in the manual, of solutions to problems which were set out in plaintiffs' books but precluding on the other in view of copyright sanctions a convenient collocation of the problem copied from the text and its solution, defendants contrived the device of substituting paraphrase for direct quotation from the problem to be solved. Occasionally, as is hereinafter noted, momentary forgetfulness of their plan of camouflage or difficulty in accommodating it to their objective led them to incorporate in their manual a literal or indefensibly close approximation of what might be found in plaintiffs' texts.

The manual is divided into chapters, the numbering, 24 to 47, corresponding to the numeration of the chapters in Part 2 of plaintiffs' books.⁷ The solutions are keyed by numbers to the problems in an arrangement which conforms with the explanation given in the preface (see supra, p. 222).

The solutions consist for the most part of mathematical calculations comprised either of a single statement or of a...