Bureau of National Literature v. Sells

• Decision Date: 03 March 1914
• Docket Number: 24.
• Citation: 211 F. 379
• Parties: BUREAU OF NATIONAL LITERATURE v. SELLS et al.
• Court: U.S. District Court — Western District of Washington

211 F. 379

BUREAU OF NATIONAL LITERATURE v. SELLS et al.

No. 24.

United States District Court, W.D. Washington, Northern Division.

March 3, 1914

E. C Hanford, of Seattle, Wash., for plaintiff.

E. E Heckbert, of Portland, Or., for defendant Sells.

NETERER District Judge.

This is an action in equity in which the plaintiff seeks an injunction and damages. B. S. Sells is the only defendant upon whom service was obtained. Plaintiff is a corporation organized under the laws of New York, and the said defendant is a citizen of Oregon. Plaintiff alleges that it is the owner of the copyright of a work known as 'Messages and Papers of the Presidents,' and 'is now, and for a long period of time has been, engaged in the business of publishing printing, producing, marketing, by subscription, ' the said work; 'that plaintiff and its respective predecessors have expended a great sum of money and devoted a great deal of time, labor, and skill in preparing, producing, advertising, selling, and distributing said publication and bringing it to the attention of the public generally, * * * and that said publication, being the only one of its character sold in the United States, has a very extensive sale covering all the United States and territories, and amounting to $500,000 a year; * * * that plaintiff in the course of its business, or its respective predecessors, has originated, devised, prepared, produced, and uses in and about the sale of said publication * * * certain trade literature, trade material, and trade dress of unique and distinguishing features. * * * ' It is also alleged that the defendant Sells, prior to the acts complained of in the bill, had been in the employ of the plaintiff as a salesman of said publication, and thereby became familiar with plaintiff's publication and the trade dress, trade material, and methods used in selling said publication; and that the defendants 'have obtained, in many instances through the use of plaintiff's said subscription lists, from plaintiff's subscribers, and from other parties, * * * sets of said publication which the said defendants have overhauled, reconstructed, and sold to the public as and for the publication published and being sold by plaintiff, using in and about such fraudulent sales plaintiff's rights of copyright, exclusive right in said plates, plaintiff's trade literature, trade material, and trade dress, * * * and selling and delivering old rebound, reconstructed, or overhauled sets of said publication as and for the publication printed and sold under exclusive rights and copyright belonging to plaintiff. The bill prays an injunction restraining the defendants in the commission of said acts, and asks for damages in the sum of $50,000.

The defendant Sells has moved to dismiss the bill, and contends that the bill does not state a cause of action for infringement of copyright; that, although there is stated a cause of action for unfair competition, the court has no jurisdiction for the reason that the amount in dispute is not over $3,000. It is contended that, in an action in equity for unfair competition, damages may not be recovered, and that the amount in dispute is therefore not over $3,000; no value of the injunction being alleged. Defendant further contends that a bill praying for an injunction and for damages improperly joins an action at law with an action in equity, and that the bill must be dismissed for that reason.

The complaint does not state a cause of action for infringement of copyright. In Doan v. American Book Co., 105 F. 772, 45 C.C.A. 42, the defendant obtained secondhand books, of which the plaintiff owned the copyright, restored them to their original condition, and sold them on the market. The court stated:

'We are satisfied that there is here no infringement of the right accruing to the appellee under the copyright laws of the United States. * * * The sale of them by the appellee carried with it the ordinary incidents of ownership in personal property, including the right of alienation (Harrison v. Maynard, 10 C.C.A. 17, 61 F. 689); and the appellants, purchasing them, had the right to resell them. * * * It is urged, however, that the sale passed the right to the particular thing sold, and did not carry with it the right of repair or renewal. We cannot yield assent to the proposition in the broad terms in which it is couched. ' Singer Mfg. Co. v. Bent (C.C.) 41 F. 214; Harrison v. Maynard, 61 F. 689, 10 C.C.A. 17; Kipling v. Putman, 120 F. 631, 57 C.C.A. 295, 65 L.R.A. 873; Bobbs-Merrill Co. v. Straus (C.C.) 139 F. 155; Id., 147 F. 15, 77 C.C.A. 607, 15 L.R.A. (N.S.) 766.

The court in the Doan Case held, however, that, as the rebound books were likely to be mistaken by the public for the new books of the plaintiff, the placing of the rebound books upon the market, with nothing to distinguish them from plaintiff's new books, constituted unfair competition, and that there should be displayed a notice on each book that it was a rebound or secondhand book.

But counsel for plaintiff states:

'If he (defendant) dealt in secondhand sets of the authorized and original work as and for secondhand sets, then counsel is correct, and under the authority of the Doan Case there would be no infringement, and our action would be solely upon the ground of unfair competition; but the action set forth here is one of actual and fraudulent trading upon our copyright and in our copyright work, merely carried on by means of secondhand sets.'

If defendant 'dealt in secondhand sets as and for secondhand sets,' it is obvious that there would be no action, either for infringement or unfair competition. Plaintiff can claim no exclusive right to the sale of 'secondhand sets.' Its exclusive right of sale of a particular copy is gone when it parts with the title to such copy. Henry Bill Publishing Co. v. Smythe (C.C.) 27 F. 914. It is only, therefore, when the defendant sells his goods, the restored copies, as and for the plaintiff's goods, the new and original copies, that the defendant is guilty of unfair competition. It was the presence of this latter element in the Doan Case which induced the court to grant an injunction. If the defendant had actually sold and delivered copies to which the plaintiff still retained title, this would constitute an infringement under the rule laid down in Henry Bill Pub. Co. v. Smythe, supra.

But defendant did not possess such copies and could not sell or deliver them. The fact that he took orders to sell new books and filled such orders by delivery of old books would not constitute a sale of new books. The fraudulent representation and palming off of the goods of the defendant as those of the plaintiff would constitute unfair competition, but not infringement of plaintiff's copyright. Kipling v. Putman, 120 F. 631, 636, 57 C.C.A. 295, 65 L.R.A. 873; Lawrence Mfg. Co. v. Tenn. Mfg. Co., 138 U.S. 537, 11 Sup.Ct. 396, 34 L.Ed. 9979

Defendant contends that the action should be dismissed on the ground of improper joinder...