G. & C. Merriam Co. v. Saalfield
| Decision Date | 28 October 1911 |
| Docket Number | 2,097. |
| Citation | 190 F. 927 |
| Parties | G. & C. MERRIAM CO. v. SAALFIELD |
| Court | U.S. Court of Appeals — Sixth Circuit |
George F. Bean and Charles R. Miller, for appellee.
Before SEVERENS and KNAPPEN, Circuit Judges, and McCALL, District judge.
This is a suit by bill in equity, brought by the above-named complainant, the G. & C. Merriam Company, against the defendant, Saalfield, wherein the complainant alleges that for a long period of time it has been engaged in the publication and sale of a series of dictionaries, some large and comprehensive, and others abridgments thereof, all founded on the original dictionary prepared and published by Noah Webster, and severally bearing the name and title of 'Webster's Dictionary.' From this long use of that name in association with the name of the complainant, it is claimed that the distinctive name 'Webster' has acquired a secondary meaning, and has long since come to be known, and is still known, by the public to signify the dictionaries published by the complainant. And thereupon the bill charges that the defendant is publishing and selling a parallel parallel series of dictionaries, purporting to be Webster's dictionaries, and bearing his name prominently on the title page and backs thereof, and is advertising its publications to the public as genuine Webster's dictionaries, without any recognition of the prior right of complainant.
And it is claimed that this action of the defendant is intended to and in fact does, lead the public to understand that his dictionaries are the genuine Webster's dictionaries published and sold by the complainant, and that by this alleged fraudulent conduct the public is deceived and induced to purchase the defendant's dictionaries, whereby the complainant's business is greatly injured.
It appears from the record that the dictionaries of the complainant, which at the time of the commencement of this suit were being published and sold, and which are supposed to be counterfeited by the defendant's dictionaries, have been copyrighted, but that these copyrights had expired. At all events, nothing is now claimed from any infringement of copyrights, and the case is planted solely upon the charge of unfair competition in business. But the fact that they have enjoyed the exclusive privileges afforded by the copyright law is one of much importance; for after that the exclusive privilege of the publisher is gone. He has agreed that it should be, as the price of the protection he has been accorded; and it is not now to be doubted that the name of the author is part and parcel of the matter copyrighted.
The case was brought to the attention of the Circuit Court by a motion for a preliminary injunction. But at the hearing thereof the case was by stipulation of counsel submitted as upon final hearing on the pleadings and proofs; it being agreed that the affidavits already filed should be treated as depositions, and certain other specified depositions taken in a case formerly depending in the Circuit Court of the United States for the District of Massachusetts between the present complainant and one Geo. W. Ogilvie should be considered as if taken regularly in the case before the court. The case was thereupon fully heard by Judge Tayler, who presided. The bill was dismissed, the court being of opinion that the present controversy was concluded by the decree of the court in the Massachusetts case above referred to; it appearing that Saalfield was in privity with Ogilvie, who, as has been stated, was a party to the former suit, and that, as the court thought, the issues were the same as in the present case. The opinion of the court, which comes up with the transcript, indicates that the court, considering the facts to be the same as in the former suit, forbore to further consider the merits.
The case in the Massachusetts court comprehended an original bill filed by Ogilvie against the Merriam Company for the purpose of protecting its right to publish and sell a comprehensive dictionary which it was about to publish under the title of 'Webster's Imperial Dictionary.' It was therein complained that the Merriam Company was publicly denying the right of the complainant to publish the dictionary with that title and threatening to prosecute all persons engaged in the publication or sale thereof. The Merriam Company answered the bill, and claimed to justify its opposition to the publication of the dictionary of the complainant upon the ground that it, the Merriam Company, had acquired by long-continued use an exclusive right to the use of the word 'Webster,' which was the characteristic of the title of Ogilvie's dictionary, in its own publications of dictionaries, and that Ogilvie's intended use of it in his own publication would be an impairment of that right. By leave of the court the defendant to that suit filed a cross-bill, in which was set forth a history of its publications, in their several forms, of Webster's dictionaries having the name of 'Webster' by way of distinction in their several titles, and that its predecessors in business had also acquired the good will of the business built up under that name, and claimed that by long-continued association of that name with the business of the company, as well as by the purchase of the good will from the Webster estate, it had acquired an exclusive right to use it. The cross-bill then alleged that Ogilvie had been, and then was, in various publications of dictionaries trespassing upon this right of the cross-complainant; and the relief prayed was that the cross-defendant be enjoined from using the name as descriptive of its publications, either alone or in combination with other words. To this cross-bill Ogilvie filed an answer, in which he reiterated his claim of right to use the name of 'Webster,' asserted in his original bill, and denied that he was transcending the proper limitations thereof, or had any purpose to do so. Thus by the pleadings of the parties substantially the whole controversy between them as it then existed was brought before the court for its determination. Upon hearing the pleadings and proofs Judge Colt in a clear and concise opinion held that both parties were asserting claims which exceeded their respective rights-- the Merriam Company in claiming an exclusive right to use the name 'Webster' in connection with its publication of dictionaries and in denouncing the claim of right set up by Ogilvie to use it; and Ogilvie, although conceding his right to use it, in not taking the proper measures to explain to the public that his dictionaries were not the dictionaries of the Merriam Company. The court so held in regard to the duty of Ogilvie, because it found that the Merriam Company had for so long a time employed the name of 'Webster' in association with its dictionaries that it had acquired a secondary meaning, namely, that it was a production of the Merriam Company, and that by its use without explanation the public would understand that the dictionaries published by Ogilvie and offered for sale by him were the dictionaries of the Merriam Company, which latter the public would desire to have. A decree was entered in conformity with these conclusions. Ogilvie v. G. & C. Merriam Co. (C.C.) 149 F. 858. An injunction was ordered, but in terms which, as the Court of Appeals for that circuit held, was not sufficiently specific to define the duty of the cross-defendant. The Merriam Company appealed from the Circuit Court's decree. The Circuit Court of Appeals confirmed the rulings of Judge Colt upon the law and facts, but, for the reason that the injuction ordered was thought not to be sufficiently specific, reversed the decree and remanded the case for the entry of a decree such as the Court of Appeals thought would better fit the circumstances of the case. G. & C. Merriam Co. v. Ogilvie, 159 F. 638, 16 L.R.A. (N.S.) 549. From the decree entered by the Circuit Court on receiving the mandate, the Merriam Company again appealed, insisting that the following words should be ordered by the injunction to be made unmistakably to appear in the title-page of every volume of the class of dictionaries to which that litigation related, namely:
'This dictionary is not published by the original publishers of Webster's Dictionary or by their successors.'
This amendment was sanctioned by the Circuit Court of Appeals, and the case was remanded for the entry of a...
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