Encyclopaedia Britannica Co. v. American Newspaper Ass'n

• Decision Date: 23 June 1904
• Citation: 130 F. 460
• Parties: ENCYCLOPAEDIA BRITANNICA CO. v. AMERICAN NEWSPAPER ASS'N et al.
• Court: U.S. District Court — District of New Jersey

130 F. 460

ENCYCLOPAEDIA BRITANNICA CO. v. AMERICAN NEWSPAPER ASS'N et al.

United States Circuit Court, D. New Jersey.

June 23, 1904

Syllabus by the Court

Where it is alleged that a copyrighted article has been infringed the copyrighted article and the alleged infringing article or so much thereof as may be necessary for intelligent comparisons, must be included in the proofs.

The analyses and comparisons of expert witnesses in a case of alleged infringement of copyrights may be received in evidence, but only as aids to the court, upon whom is imposed the duty of making the final comparisons.

Substantial identity between a copyrighted article and an article alleged to be an infringing one creates a presumption against the publisher of the latter article, which he must overcome.

Laches cannot be successfully invoked in aid of a publisher of an infringing article when it does not appear that the owner of the copyrighted article had knowledge of the infringement, or that he had notice of any facts sufficient to put him upon inquiry.

Where there is not doubt of the infringement, and no defense rendering it inequitable to grant the relief prayed for, a preliminary injunction will be granted.

Frederic R. Kellogg and G. D. W. Vroom, for complainant.

James Buchanan and John G. Johnson, for defendants.

LANNING District Judge.

This is an application for a preliminary injunction, and has been heard on bill, answers, and affidavits, the answers being sworn to and used as affidavits.

It appears that, early in 1875, A. & C. Black, of Edinburgh Scotland, began the publication in Scotland of the work entitled 'The Encyclopedia Britannica, a Dictionary of Arts, Sciences and General Literature, Ninth Edition. ' In the same year, the copyright laws of this country not then furnishing protection to foreign authors or publishers, one Joseph M. Stoddart, Jr., trading under the name of J. M Stoddart & Co., of Philadelphia, began the publication of the same work in this country. Some time between 1875 and 1879, the exact time not being shown, the Blacks entered into an arrangement with Charles Scribner, trading as Charles Scribner's Sons, of New York, for the publication in the United States of the Edinburgh edition of the work. Suits were instituted about 1879 between the Blacks and Stoddart, and between Scribner and Stoddart, which led to an agreement dated March 24, 1881, 'between Joseph M. Stoddart, Junior, doing business at Philadelphia, Pennsylvania, as J. M. Stoddart & Co., and Charles M. Scribner, doing business at the City of New York as Charles Scribner's Sons. ' This agreement, after reciting that Stoddart 'was the proprietor and publisher of a certain work called the American Reprint of the Encyclopedia Britannica, Ninth Edition,' that Scribner 'was the importer of the Edinburgh Subscription Edition of the Encyclopedia Britannica, Ninth Edition, which he purchases of Messrs. A. & C. Black, of Edinburgh, Scotland,' and that controversies, disputes, and litigations had arisen between Stoddart on the one side and the Blacks and Scribner on the other side, declares, inter alia, that 'the said Scribner also agrees that no suit shall hereafter be brought by him, nor by them (the Blacks) with his consent or co-operation, against said Stoddart, or his agents, employees or servants, or book-sellers selling the American Reprint of the Encyclopedia Britannica for any infringement, past or future, or alleged infringement of any copyright law. ' The agreement further provides that 'it is also understood between the parties hereto that this agreement and the several understandings therein shall extend to and bind the representatives and assigns of the respective parties.'

Previous to the date of this agreement, articles included in the edition published by Scribner had been written by American authors, and copyrighted, under the following titles, viz.: 'Galveston,' 'Georgia,' 'Horace Greeley,' 'Hayti,' 'Homestead,' 'Honduras,' 'British Honduras,' 'Illinois,' and 'Indiana.' Between the date of the agreement and April 6, 1888, the following articles, also included in the Scribner edition, were written by American authors, and copyrighted, viz.: Articles on 'Modern History and Present Distribution of North American Indians,' 'Indian Territory,' 'Lafayette,' 'Abraham Lincoln,' 'Henry W. Longfellow,' 'Louisiana,' 'Maine,' 'Maryland,' 'Massachusetts,' and 'United States, Part 1, History and Constitution. ' These articles were originally published in book or pamphlet form, and the titles to the copyrights are now, by means of sundry assignments, vested in the complainant, the Encyclopedia Britannica Company, a corporation of Illinois, which also owns and publishes the edition formerly owned and published by the Blacks.

In 1890, Richard S. Peale, of Chicago, commenced the publication of another American edition of the Encyclopedia Britannica. He obtained for it, he says, in the places of the copyrighted articles above mentioned, other articles by other authors on the same subjects. These last-mentioned articles, he further says, were printed and inserted in his edition 'exactly as written by the authors. ' The defendant the Werner Company has succeeded to the rights of Richard S. Peale in the American edition, formerly published by Peale, and that company, and the other defendant, the American Newspaper Association, both being New Jersey corporations, are now engaged in publishing and selling that edition, which still includes the articles alleged to have been written in 1890 for Peale.

The complainant insists that the articles written in 1890 for Peale, and now included in the defendants' edition, are infringements of its copyrights. The primary evidence of the infringements must be found, if found at all, in comparisons of the two sets of articles. And these comparisons must be made by the court, or by a master to whom such duty has been referred. The comparisons of expert witnesses may very properly be received in evidence, but only as aids to the court. This remark is made because no copies of the articles on some of the subjects are included in the proofs, although they do include the affidavits of expert witnesses, containing their comparisons of the articles, and their opinions to the effect that the defendants' articles are largely copies of the complainant's copyrighted articles. The opinions of experts, however competent they may be to discover plagiarisms and piracies, are secondary, and not primary, evidence. It is the court, and not expert witnesses, who must determine the question whether one's copyright has been infringed. Lawrence v. Dana, Fed. Cas. No. 8,136. This rule excludes from present consideration the articles on 'Galveston,' 'Horace Greeley,. 'Hayti,' 'Illinois,' 'Indiana,' 'Modern History and Present Distribution of North American Indians,' 'Lincoln,' 'Longfellow,' 'Maine,' 'Maryland,' 'Massachusetts,' and 'United States, Part 1, History and Constitution.'

The articles on the remaining seven subjects cannot be so excluded. As to each of them the proofs contain verified copies of the complainant's copyrighted article and of the alleged infringing article of the defendants. These relate to the subjects 'Georgia,' 'Homestead,' 'Honduras,' 'British Honduras,' 'Indian Territory,, 'Lafayette,' and 'Louisiana.' Much aid has been had in the work of examining these articles by the comparisons contained in the proofs, and the opinion now reached is that the articles on the last seven subjects named, published in the defendants' edition, were modeled after, and to a very substantial degree taken from, the copyrighted articles on the same subjects contained in the complainant's edition.

In the two articles on 'Georgia,' the first fact to be noted is the striking resemblance between the headings to the several sections. In some cases they are identical, in others slightly changed in phraseology, but in all cases substantially the same. In the bodies of the two articles there are numerous instances of the duplication of ideas and sentences. As illustrations, some parallel passages are hereunder given:

From Complainant's Edition:

'Georgia has three distinctly marked zones, varying in soil, climate and productions. Her sea coast is similar to that of the Carolinas, being skirted by fertile islands, separated from the mainland by narrow lagoons or by sounds. This section is essentially tropical.'

'In the southwest the soil though light and sandy, produces cotton. In southern Georgia there are millions of acres of magnificent yellow pine forests of great value for house or ship building, and in these forests turpentine plantations have been opened. The live-oak, also valuable for ship-building purposes, abounds in the southeast of the State. The swamps afford cedar and cypress, the central region oak and hickory.'

'The higher branches of education are well represented. As early as 1801 steps for founding a university were taken at Athens. The first commencement took place in 1804. The college proper (Franklin College at Athens) annually admits free of charge fifty meritorious young men of limited means' and also such as may be studying for the ministry who need aid. There is also connected with the university a medical college, located at Augusta, and an agricultural college at Dahlonega, with nearly 250 students, whose tuition is free. The state college of agriculture and mechanic arts, also connected with the university, has a special endowment derived from the United States of $240,000; the whole endowment of the university is $376,500. The university, exclusive of its establishments at Augusta and Dahlonega, has five departments, 13 professors and 200 students, with a library of 14,000 volumes, and two

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