Hayden v. Chalfant Press, Inc.

• Decision Date: 30 September 1959
• Docket Number: No. 159-58.,159-58.
• Citation: 177 F. Supp. 303
• Court: U.S. District Court — Southern District of California
• Parties: Walter E. HAYDEN, individually, and doing business under the fictitious firm name and style of Hayden Map Company, Plaintiff, v. CHALFANT PRESS, INC., a corporation, et al., Defendants.

177 F. Supp. 303

Walter E. HAYDEN, individually, and doing business under the fictitious firm name and style of Hayden Map Company, Plaintiff, v. CHALFANT PRESS, INC., a corporation, et al., Defendants.

No. 159-58.

United States District Court S. D. California, Central Division.

September 30, 1959.

Maury, Larsen & Hunt, Los Angeles, Cal., and Porter C. Blackburn, Burbank, Cal., by George R. Maury, Los Angeles, Cal., for plaintiff.

Lyon & Lyon, by R. Douglas Lyon, Los Angeles, Cal., for defendants.

YANKWICH, District Judge.

Walter E. Hayden, a resident of Los Angeles, California, is a cartographermap maker doing business in Los Angeles under the name of "Hayden Map Co.". He will be referred to hereinafter as "Hayden". Chalfant Press, Inc., a California corporation, is engaged in printing and publishing, with its main office in Bishop, Inyo County, California. It will be referred to as "Chalfant".

This action for infringement of copyright was instituted by Hayden against Chalfant, certain individual officers or employees of the corporation, namely, Abard Todd Walkins, President, Allan J. O'Connor, Robert Frank and Lorin Ray, and certain other individuals who are members of the unincorporated Mono County Chamber of Commerce, namely, Benno Heune, Joseph Beets, Jack Fair and Dewey Kirk. Injunction against future use of certain maps copyrighted by Hayden and damages and profits for past use are sought.¹

Hayden, for a great number of years, has prepared and circulated outing maps of a certain portion of northern California, being in Inyo and Mono counties, known for its appeal to lovers of the outdoors interested in camping, swimming, fishing, hunting and other typical western outdoor recreations and sports. As he gathered new data, new maps were issued from year to year. The basic maps with which we are concerned in this litigation were the maps copyrighted in 1933 and 1934 and revisions of them issued in 1936, 1938, 1939 and 1950. Hayden claims prior copyrights to maps which are not before us. His Complaint charges all the defendants with copying the maps in 1953, 1954, 1955, 1956, 1957 and 1958. But the proof showed that Chalfant and its employees published "Hayden type" maps only in their "Inyo-Mono Fishing and Vacation Guides" for the years 1955, 1956, 1957 and 1958. Other maps not claimed by Hayden were used in the guides before 1955. The defendants who are members of the Mono Chamber of Commerce are charged with publishing and circulating copies of the same maps in the form of single or multiple sheet maps during the same period. And the proof covered the entire period back to 1953. The claims against both Chalfant and the individual defendants were first asserted by letters written on June 12, 1957. The defendants have denied infringement, have attacked the validity of the copyright and have pleaded other defenses to be referred to in the discussion to follow. First, however, we advert briefly to certain accepted principles relating to the copyright of maps.

I Originality In Maps

By specific provision of the Copyright Act maps are the subject of copyright.² They have been so recognized from the beginning of our jurisprudence on the subject. In an old case Mr. Justice Story, sitting at circuit, defined the requirement as to originality of maps, which is a good guide even today, when he wrote:

"A man has a right to the copyright of a map of a state or country, which he has surveyed or caused to be compiled from existing materials, at his own expense, or skill, or labor, or money. Another man may publish another map of the same state or country, by using the like means or materials, and the like skill, labor and expense. * * * If he copies substantially from the map of the other, it is downright piracy; although it is plain that both maps must, the more accurate they are, approach nearer in design and execution to each other."³

Of necessity, except in the case of territories which have not been mapped by the States or the United States, originality in map making is confined to original designations of mountains, lakes, rivers, trails and roads and other contours and configurations of the territory, and of their names. So the cases which have dealt with the problem have limited the claim of originality and copyrightability to such designations or notations as are novel with the cartographer and are not to be found in the basic topographic maps prepared by the Government of the United States or the States or by individuals. Hence, any claim of infringement must be confined to the "lifting" of these novel additions of the particular cartographer. Rightly. For while territories undergo certain changes through erosion and other climatic phenomena, the terrain remains very much the same throughout the years. And the cartographer should be limited to what, by the expenditure of labor and money, he was able to discover in the territory and note on his maps which was not noted on the basic official or other maps.⁴

In order not to give to a cartographer a permanent monopoly which would enable him, without renewing his copyright, to begin a new copyright period every year, the courts limit copyrightability of periodical revisions of such maps to the new matter appearing on them.⁵ At best, therefore, originality as to maps is very narrow in scope, because of the nature of the art which consists merely of depicting, on a map, in an accepted form, the topography of a terrain. Indeed, the originality is more limited even than the slight degree of originality required in copyrighted works in general.⁶

II Access

In dealing with materials like maps, which are purely descriptive of terrains, the courts have, at times, looked not only for similarities, but for identity of errors, either in names or other data, as indicating access to the copyrighted material.⁷

Much of the testimony of access in the case before us consisted of stressing similarities and errors. For there is no credible proof of direct copying by Chalfant or the individual defendants of Hayden's maps. On the contrary, the uncontradicted testimony offered by the defendants is that the maps published by Chalfant and those published by the individual defendants, who were members of the Mono County Chamber of Commerce, were traced from maps of the region published by the Automobile Club of Southern California, to be referred to as "the Automobile Club" or "the Club", superimposed upon the topographical maps of the two counties. The defendants were able to produce the original tracings from which the published maps were thereafter made and the men who made them. Additional notations were made from the maps of the region published by the National Automobile Club and facts as to new trails and roads known to the persons who traced the maps for the defendants.

Ordinarily, one who copies from a copy which infringes does not escape responsibility.⁸ However, there is no proof of access or copying. In this case the fact whether copying occurred is of utmost importance in view of the conclusion we have reached that Hayden, although knowing that the Automobile Club had been printing the maps, from which the defendants copied theirs, with additions, took no action against them. To the contrary, half a million of these maps were distributed by the Automobile Club with a notice of copyright. Yet, for over nineteen years no action was brought against the Automobile Club by Hayden.

Ordinarily, the failure to take action against a stranger does not give rise to estoppel.⁹ But in this case, conceding the originality of Hayden's maps, his failure to institute proceedings constituted an estoppel not only against the Automobile Club, but also against the defendants, who were authorized by the Automobile Club, through a Mr. Crosby, to reproduce the maps which Hayden now claims were, in turn, copied from his. This statement calls for a more detailed discussion of the question of estoppel.

III Estoppel

In dealing with estoppel it is well to bear in mind the distinction between the effect of laches in a case of this character and the effect of estoppel. Laches, resulting from long delay in enforcing one's rights, followed by change of position of the party relying on the other party's inaction, might result in denial of equitable relief, such as injunction and recovery of profits. But it would not stand in the way of the granting of damages for the unauthorized copying or of injunction against future violations.¹⁰ To the contrary, estoppel destroys the very rights which it is sought to assert.¹¹ As said in one of the cases already cited:

"The effect of one being estopped to enforce a claim is that his plight is substantially the same as it would have been if the claim had never existed."¹² (Emphasis added.)

A more elaborate statement of the effect of estoppel is found in a case from the Sixth Circuit in which it is said:

"The effect of an estoppel in pais is to prevent the assertion of an unequivocal right, or preclude a good defense, and justice demands it should not be enforced unless substantiated in every particular. The concept of the doctrine is fraud, actual or constructive on the part of the person sought to be estopped."¹³ (Emphasis added.)

Estoppel inures not only to the benefit of a party but also to those in privity with him or who claim under him, whether as assignees or not.¹⁴ All that is necessary is that the relationship be created "after the event out of which the estoppel arises."¹⁵

The evidence in the record shows clearly that the maps of the area with the claim of copyright were circulated by the Automobile Club for a period of nineteen years. Hayden knew that they were circulating such maps in 1939 or 1940. Transcript, p. 108-109. As estimated by a witness, Harry P. Pflum, who, since November, 1955, has been manager of the map drafting department of the Automobile Club, and who had been connected with the reproduction of all Automobile Club...