Doan v. American Book Co.

• Decision Date: 02 January 1901
• Docket Number: 715.
• Parties: DOAN et al. v. AMERICAN BOOK CO.
• Court: U.S. Court of Appeals — Seventh Circuit

105 F. 772

DOAN et al. v. AMERICAN BOOK CO.

No. 715.

United States Court of Appeals, Seventh Circuit.

January 2, 1901

This is an appeal from an order entered June 29, 1900, allowing a preliminary injunction upon a bill filed by the appellee, the complainant below, to restrain the defendants therein, the appellants here, from preparing, printing, manufacturing, and from causing to be prepared, printed, and manufactured, any book covers or cover designs which are copies or imitations of the book covers and cover designs made by the complainant for certain school books published by them; and from binding and rebinding, and from causing to be bound or rebound, any book, secondhand or new, in covers which are copies of, or imitations or, the whole or any substantial part of complainant's book covers and cover designs; and from printing or placing thereon the 'Galley Cut,' so called, or the name, 'American Book Company,' or from selling any such books with such covers thereon; and from rebinding any secondhand copies of the school books published by the complainant in covers calculated to create the belief that the new covers and the rebinding thereof are of the manufacture of the complainant, or in any covers except those indicating by appropriate language on their face that the new covers and the rebinding of the secondhand books are not of the manufacture of the complainant; and from selling, giving away, delivering, shipping, or in any way handling or disposing of such secondhand books so rebound; and from violating the copyrights and rights of copyright trade-marks, and trade-mark rights of the complainant in such school text books. The American Book Company is a publisher of school books, employing a large force skilled in preparing and publishing school books, and selling over 1,000,000 copies per annum. Van Antwerp, Bragg & Co. were proprietors of certain school text books, namely, McGuffey's Spelling Book, McGuffey's First, Second, Third, Fourth, and Fifth Readers, Ray's Primary, Elementary, Intellectual, and Practical Arithmetics, Elementary and Complete Geographies. These were composed for them by certain citizens employed for that purpose, and also new, original, and artistic cover designs were prepared by them in 1883. They copyrighted these books in 1877, 1879, and 1883, and assigned the copyrights to the appellee, by whom these text books were revised in 1896 and a copyright issued in that year to that company therefor. The appellee then caused new cover designs to be prepared. As long ago as 1875, Van Antwerp, Bragg & Co. adopted as a trade-mark, and placed upon the covers of these books, the picture of a galley, and used the same in their business until 1890, when they sold this right to the appellee as a trade-mark, and it has since been used by that company upon the covers of their text books. These school books are part of a series of copyrighted school books, known as the 'Eclectic Series,' forming a complete system, and graduated to meet the necessities of the primary common-school, and high-school course; and they have been bound in distinctive cover designs unlike other school text books, and many thousands of them are sold annually throughout the United States, and by their peculiar binding are identified as the goods manufactured by the appellee. These text books for many years had been used in the public schools in the states of Tennessee and Texas, and many thousands of copies had been distributed among families in those states. In the years 1898 and 1899 the school authorities of those states directed the use of other school books published by other firms, requiring the publishers of such to accept the secondhand books published by the American Book Company, and then in use in the schools of those states, in exchange as part of the price of the new book. This 'exchange stock,' so called, was turned over to the appellants here, who are dealers in secondhand school books, who thus acquired several hundred thousand copies of secondhand school books published by the appellee in different stages of preservation, some soiled and defaced. It appears that some publishers deal in others' secondhand school books, but refuse to sell any secondhand books of their own publication. These secondhand school books are cleaned, the edges of the pages trimmed when necessary, and, when needed, the books are rebound in exact imitation of the original binding, and are sold by the secondhand dealers at about one-half the price of the new books. The sale of these secondhand school books is said to amount annually to over $200,000. There is no charge that the defendants in any instance had sold any book that was other than the genuine and original book published and sold by the appellee, and which came into the possession of the appellants in the manner stated, and that such book was sold by the appellants as and for a secondhand book; and they have not misled the public except as the secondhand book so rebound might of itself be misleading. It also appears that about 90 per cent. of the school text books in this country are purchased directly by children of tender age, and not by their parents.

Upon the hearing of the motion for preliminary injunction the court, by its order, found 'that all the material allegations of said bill are true,' and ordered as follows: 'It is therefore ordered, adjudged, and decreed by the court that said George B. Doan and Hart Hanson, their confederates, assistants, agents, employees, servants, and attorneys, and each of them, be, and they are, and each of them is, herely enjoined and restrained until the further order of the court, and that a writ of injunction issue enjoining them until the further order of this court: (1) From binding or rebinding any copies (secondhand or new) of the McGuffey's Readers, McGuffye's Spelling Book, Ray's Arithmetics, Eclectic Elementary Geography, and Eclectic Complete Geography, published by the American Book Company, hereinafter described, or any or either of them, in any covers or cover designs having thereon the name of the complainant, the American Book Company, or the cut described and designated in the bill of complaint as the 'Galley Cut,' or anything that can be mistaken therefor, or any reproduction or simulation or imitation of the whole, or any substantial part of the covers and cover designs described and designated in said bill of complaint as the '1883 Cover Designs' of said geographies, and the '1896 Cover Designs' of said readers, arithmetics, and spelling book, or any or either of them, and from selling, giving away, delivering, shipping, or in any way or manner handling or disposing of any such books so bound or rebound, and from preparing, printing, or manufacturing any such book covers or cover designs for the purpose of binding or rebinding therein or therewith the school text books published by the American Book Company, hereinafter described, or any or either of them. ' Then follows a detailed description of the books in question, and at the close the order contains the following paragraph: 'The above is not intended to prevent the repairing of secondhand copies of school books by rebinding the same in and with the original genuine covers manufactured by the American Book Company, with which said copies or like copies were bound when originally published.'

The defendants below filed the following assignment of errors '(1) That the court erred as to all the findings appearing in the said interlocutory order or decree, and the awarding or granting of an injunction thereby. (2) That the court erred in finding that the material allegations of said bill of complaint are true. (3) The court erred in granting the injunction identified by said order or decree. (4) The court erred in ordering that these defendants should be enjoined from binding or rebinding any copies (secondhand or new) of the McGuffey's Readers, McGuffey's Spelling Book, Ray's Arithmetics, Eclectic Elementary Geography, and Eclectic Complete Geography, published by the American Book Company, described in said order, or any or either of them, in any cover designs having thereon the name of ...