Edgar H. Wood Associates, Inc. v. Skene

• Decision Date: 17 April 1964
• Citation: 347 Mass. 351,197 N.E.2d 886
• Parties: , 141 U.S.P.Q. 454 EDGAR H. WOOD ASSOCIATES, INC. v. Alex J. SKENE et al.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

Page 886

197 N.E.2d 886

347 Mass. 351, 141 U.S.P.Q. 454

EDGAR H. WOOD ASSOCIATES, INC. v. Alex J. SKENE et al.

Supreme Judicial Court of Massachusetts, Norfolk.

Argued Jan. 6, 1964.

Decided April 17, 1964.

L. Johnson Callas, Boston (Martin D. Woolf with him), for plaintiff.

Herbert P. Wilkins, Boston, for Frank Portugal and others.

Robert D. Kilmarx, Boston, for Alonzo B. Reed, Inc. and another.

David C. Ahearn, Norwood, for Alex J. Skene and another.

Before CUTTER, KIRK, SPIEGEL and REARDON, JJ.

REARDON, Justice.

The plaintiff (Wood) appeals from a final decree dismissing its original bill as to all the defendants, demurrers to it having previously been sustained. A motion for leave to file a substitute bill of complaint was denied by the trial judge as a matter of law because the substitute bill 'does not state a cause of action in [e]quity.' The denial of the motion was in substance an interlocutory decree (Bressler v. Averbuck, 322 Mass. 139, 143, 76 N.E.2d 146; see Corbett v. Gallagher, 225 Mass. 480, 482, 114 N.E. 751), and we treat it as open for consideration upon appeal from the final decree. G.L. c. 214, § 27. Arsenault v. Arsenault, 337 Mass. 189, 193, 148 N.E.2d 662.

The allegations of the substitute bill are as follows. Wood is a Massachusetts corporation comprising an association of architects. The corporation is a duly licensed architect. One Thomas Moylan retained Wood to draft plans for the erection of two sections of buildings, each section to contain 110 apartments, in Woburn. After acceptance of the plans by Moylan they were filed with the building department of Woburn and approved. Filing was required in order to obtain a building permit. Moylan then commenced erection of one of the two sections. He and Wood had entered into an agreement under the terms of which Wood retained 'all * * * [its] property rights, title and interest to the said plans for all times.' Moylan employed the defendant Portugal to supervise construction of the building in accordance with the plans. About the same time the defendant Skene desired to erect on land owned by him in Norwood apartment houses similar to those of Moylan. As the result of a conspiracy between Skene and Portugal, Portugal left Moylan's employ, entered that of Skene, and took with him to Skene plans of the Woburn buildings. Other defendants, the Willaces, organized a real estate trust under the name of Windsor Gardens Co. of Norwood, Massachusetts. The trust bought Skene's Norwood land. Skene transmitted the plans to the Wallaces who in turn gave them to the defendants, Alonzo B. Reed, Inc. and its employee Vincent Sullivan, to be copied. Reed's name and that of Sullivan were affixed to the copied plans. These plans were presented to the building commissioner of Norwood and to others. In sum, Wood's plans were copied and are being or were used to construct in Norwood buildings identical in design and specifications to the Woburn buildings being erected. ¹

Wood did not resort to statutory copyright, and we are concerned solely with an examination of its rights under the common law. Common law copyright exists in this Commonwealth. 'That the right of property which an author has in his works continues until by publication a right to their use has been conferred upon or dedicated to the public, has never been disputed.' Tompkins v. Halleck, 133 Mass. 32, 35. See F. W. Dodge Co. v. Construction Information Co., 183 Mass. 62, 63-65, 66 N.E. 204, 60 L.R.A. 810; Baker v. Libbie, 210 Mass. 599, 604, 97 N.E. 109, 37 L.R.A.,N.S., 944.

THE EFFECT OF THE FEDERAL COPYRIGHT STATUTE UPON COMMON LAW COPYRIGHT.

At the outset we must consider the effect upon common law copyright of two important opinions of the Supreme Court of the United States rendered since the arguments in the present case.

In the first of these, Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661, the question was whether the unfair competition law of Illinois could, 'consistently with the federal patent laws, impose liability for or prohibit the copying of an article which is protected by neither a federal patent nor a copyright' (p. 786 of 84 S.Ct.). Stiffel's patents on a 'pole lamp' were held invalid in the District Court for want of invention. Sears put on the market 'a substantially identical lamp, which it sold more cheaply, Sears' retail price being about the same as Stiffel's wholesale price' (p. 786 of 84 S.Ct.). The Court of Appeals affirmed the holding of the District Court that there was unfair competition under Illinois law. The Supreme Court reversed, and speaking through Mr. Justice Black stated: 'Just as a State cannot encroach upon the federal patent law directly, it cannot, under some other law, such as that forbidding unfair competition, give protection of a kind that clashes with the objectives of the federal patent laws. * * * To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public. The result would be that while federal law grants only 14 or 17 years' protection to genuine inventions, * * * States could allow perpetual protection to articles too lacking in novelty to merit any patent at all under federal constitutional standards. This would be too great an encroachment on the federal patent system to be tolerated' (emphasis supplied) (p. 789 of 84 S.Ct). The opinion also stated that 'because of the federal patent laws a State may not, when the article is unpatented and uncopyrighted, prohibit the copying of the article itself or award damages for such copying' (emphasis supplied) (p. 789 of 84 S.Ct.). It seems plain to us that Mr. Justice Black was not speaking about unpublished material.

In the second case, Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669, on a set of facts substantially similar to those in the Sears, Roebuck case, the court, again through Mr. Justice Black, announced a similar holding and said: 'Today we have held in Sears, Roebuck & Co. v. Stiffel Co. * * * [supra], that when an article is unprotected by a patent or a copyright, state law may not forbid others to copy that article. To forbid copying would interfere with the federal policy, found in Art. I, § cl. 8, of the Constitution and in the implementing federal statutes, of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain' (emphasis supplied) (p. 782 of 84 S.Ct.). A careful reading of these two opinions does not convince us that they have struck down common law copyright, which protects unpublished material, in those States which recognize its existence, or deprived such States of the right to regulate it. There is a distinction between that protection afforded under State unfair competition laws to the unpatentable article in the public domain and the protection extended through common law copyright to an unpublished work. This distinction finds recognition in the Compco case in the reference to the Federal policy of 'allowing free access to copy whatever the federal patent and copyright laws leave in the public domain' (p. 782 of 84 S.Ct.), and in the Sears, Roebuck case at p. 788 of 84 S.Ct., fn. 7, which alludes to 'that section of the Copyright Act which expressly saves state protection of unpublished writings but does not include published writings, 17 U.S.C. § 2 [1958].' ² In these two cases the Supreme Court has held that the States may not contravene the Federal statutory patent and copyright laws. In our view these decisions recognize the common law copyright may exist, by virtue of 17 U.S.C. § 2 (1958), in unpublished material which has not become a part of the public domain. Accordingly, if Wood's plans have not been so published as to be within the public domain, the Supreme Court decisions do not preclude relief in the predatory situation here alleged. ³

The basic differences between statutory and common law copyright have been stated by Katz, Copyright Protection of Architectural Plans, Drawings, and Designs (hereinafter Katz), 19 Law and Contemporary Problems, 224, 227-228: '(a) Common law copyright exists solely in unpublished works; statutory copyright (with certain specific exceptions) exists only in published works. (b) Common law copyright protection is automatically accorded all unpublished works from the moment of their creation. The mere act of publication will not automatically grant statutory protection to a work; there must be, in addition, strict compliance with the statutory formalities. (c) Common law copyright protection is perpetual; statutory copyright protection is terms of years. (d) Common law copyright is regulated by the several states; statutory copyright is solely a matter for the Federal Government.' See Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 346-347, 28 S.Ct. 722, 52 L.Ed. 1086.

The principal issue in dispute is whether Wood lost whatever common law rights it had in its plans (1) when they were filed with the Woburn building department, or (2) When Moylan constructed a building from them. We deal with a matter of first impression in this Commonwealth. Only six cases are in point from other jurisdictions none by a court of last resort. They are in conflict and so is such literature as exists on the subject.

THE REPORTED CASES.

The first of the reported cases is Gendell v. Orr, 13 Phila. 191 (Pa.Common Pleas), decided in 1879. An architect and builder erected a porch 'of a new and novel design and artistic beauty' (13 Phila. p. 191) along the front of his house, which stood bordering a highway. Later he sought to enjoin the construction of copies of his porch. The court held that the completion of such a design and its exposure to public gaze for three years constituted a general publication of the...