Historical Pub Co. v. Jones Bros Pub Co.

• Decision Date: 28 April 1916
• Docket Number: 2071,2076.
• Citation: 231 F. 638
• Parties: HISTORICAL PUB. CO. v. JONES BROS. PUB. CO. et al. [a1] JONES BROS. PUB. CO. et al. v. HISTORICAL PUB. CO.
• Court: U.S. Court of Appeals — Third Circuit

231 F. 638

HISTORICAL PUB. CO. v. JONES BROS. PUB. CO. et al. ^[a1]

JONES BROS. PUB. CO. et al. v. HISTORICAL PUB. CO.

Nos. 2071, 2076.

United States Court of Appeals, Third Circuit.

April 28, 1916

The following is the opinion of Thompson, District Judge, in the court below on final hearing:

The bill charges infringement by the defendant of copyrights for two books, one entitled 'History of the United States Prepared Especially for Schools on a New and Comprehensive Plan, Embracing the Features of Lyman's Historical Chart by John Clark Ridpath, A.M.,' and the other entitled 'Columbus and Columbia.' The latter is alleged to contain matter contained in the former, together with new and original matter of which James G. Blaine, James W. Buel, John Clark Ridpath, and Benjamin Butterworth were the authors.

It is found from the evidence and averments in the bill admitted in the answer that the first-named book, hereafter, for convenience, designated 'Ridpath's School History,' was entered for copyright in the office of the Librarian of Congress on December 5, 1874, in the name of John T Jones, as proprietor by assignment from the author. John T. Jones, on December 1, 1884, sold and assigned the copyright to Van Antwerp, Bragg & Co., who afterwards, on November 20, 1890, sold and assigned it to the American Book Company. John Clark Ridpath, author of Ridpath's School History, died on July 31, 1900, leaving a widow, Roxana B. Ridpath, who in the year 1902, and within 6 months before the expiration of the original term of copyright, duly obtained the copyright for a further term of 14 years. The rights of Roxana Ridpath, together with whatever rights were in the American Book Company, were acquired by assignment by the Jones Bros. Publishing Company, one of the plaintiffs, upon a date, not set forth in the bill nor proved in the case, prior to August 15, 1913, the date of the filing of the bill. At that time the plaintiff Jones Bros. Publishing Company, had the sole right and liberty of printing, reprinting, publishing, completing, copying, and vending Ridpath's School History.

In 1892 the second book, 'Columbus and Columbia' was published and copyright was duly obtained on March 7, 1892, by H. S. Smith. In 1896 H. S. Smith, then conducting a publishing business under the name of Historical Publishing Company, failed in business and assigned the copyright to Alexander Balfour, by whom it was assigned to Charles R. Graham, Thomas Simpson, and John D. Avail, and by them assigned to the defendant, the Historical Publishing Company. On February 3, 1912, the Historical Publishing Company in consideration of $1,600 sold and assigned to the Review of Reviews Company by a written instrument:

'(1) All of the right title, and interest of said Historical Publishing Company and all its publishing rights and copyright or any interest in any of the foregoing in or to or in connection with the following described books, to wit:

'Columbus and Columbia: Copyrighted 1892, by H. S. Smith and published by the Historical Publishing Company.

'People's History of the United States: Copyrighted April 15, 1895, by H. S. Smith (20,752-A-2).

'Ridpath's History of the United States: One-volume edition, published by Historical Publishing Company in 1902 and 1906, copyrighted by E. J. Stanley.

'Same: One-volume edition, published by Historical Publishing Company and copyrighted by C. R. Graham, 1902.

'(2) The electrotype plates from which the last edition of said Ridpath's History of the United States, above referred to, to wit, the edition copyrighted by . . ., was published by said Historical Publishing Company.'

On October 25, 1912, an agreement of sale was entered into between the Review of Reviews Company and the Jones Bros. Publishing Company, coplaintiffs, whereby the Review of Reviews Company agreed to sell and the Jones Bros. Publishing Company agreed to purchase, inter alia, the copyright in the book 'Columbus and Columbia,' the sale to be executed September 1, 1914, upon payment by the vendee of $2,500. In the agreement of sale was included the electrotype plates from which the last edition of Ridpath's History of the United States was published by the Historical Publishing Company, which plates had been sold to the Review of Reviews Company by the instrument of writing of February 3, 1912. In consideration of the agreement of sale, the Review of Reviews Company agreed that it would not publish the work nor make use of it prior to September 1, 1914, but would permit Jones Bros. Publishing Company to bring suit in the name of the Review of Reviews Company to prevent any publication of the work. The agreement of sale between the coplaintiffs was extended by the parties to the agreement for a period of 30 days after September 1, 1914, and thereafter for a period covering the month of January, 1915, and was therefore existing at the time of the hearing. On February 8, 1912, the Review of Reviews Company wrote the following letter to the Historical Publishing Company:

'February 8, 1912.

'Historical Publishing Company, Philadelphia, Pa.-- Gentlemen: Since the publication rights and the copyright of Ridpath's History of the United States, originally copyrighted by H. S. Smith in 1892, as 'Columbus and Columbia', have now passed to the Review of Reviews, it is necessary to have an agreement between us in regard to the use of part of this History in your American Reference Library.

'We therefore consent to the continuation of your use of so much of this historical matter as is now incorporated in the American Reference Library without consideration to the Review of Reviews. It must be understood, however, that no part of the text of this work may be used by you for any other purpose, and that this license is not exclusive in any way, and is for the benefit of your company and its corporate successor or successors in the publication of the American Reference Library, and is not assignable.

'It is furthermore understood that, in the event of your selling the plates and publication rights of the American Reference Library, they will be sold with a special provision that this historical matter may not be used for any other purpose whatsoever.

'Yours truly,

The Review of Reviews Company,

'FWS-M

F. W. Stone.'

The copyrighted books consist of Ridpath's School History, copyrighted in 1874, renewed in 1902, Exhibit A, at the time of the filing of the bill owned by the Jones Bros. Publishing Company, and Columbus and Columbia, copyrighted in 1892, Exhibit B, of which the legal title to the copyright at the time of the filing of the bill was in the Review of Reviews Company, and the equitable title, under the agreement of sale of October 25, 1912, was in the plaintiff, the Jones Bros. Publishing Company. The books which it is claimed infringe consist of Exhibit F, Ridpath's History of the United States, first published by the defendant, the Historical Publishing Company, in 1902, Exhibit C, History of the United States, in six volumes, copyrighted 1906 by E. J. Stanley, and containing on the title page the imprint 'Philadelphia Encyclopedia Publishing Company,' and Stanley Exhibit No. 1, American Reference Library, in six volumes.

A careful comparison of the copyrighted books and the books alleged to infringe was made by the plaintiffs' witness, Mr. Todhunder, of 30 years' experience as editor and publisher of books and having familiarity with their make-up. From his comparison it is satisfactorily established that the book, 'Ridpath's History of the United States,' Exhibit F, is printed from the same plates as 'Columbus and Columbia,' Exhibit B; that Exhibit C, History of the United States, by Ridpath, in six volumes, is printed from the same plates as Stanley Exhibit No. 1, American Reference Library. All four of the above-mentioned exhibits, B, F, C, and Stanley No. 1, contain the same text. The text of these exhibits is substantially a copy, with more or less paraphrasing of the text, of Exhibit A.

The defendant claims a license from the Review of Reviews Company to print, publish, and sell editions from the set of plates from which Exhibit F, Ridpath's History of the United States, copyrighted by E. J. Stanley in 1906, was printed, by virtue of a reservation to that effect in an option given by the Historical Publishing Company to the Review of Reviews Company, dated December 14, 1911, for the purchase of the copyrights and plates afterwards sold and assigned by the instrument in writing of February 3, 1912. The evidence shows that this option expired before the purchase was consummated and that its terms were not carried into the assignment made February 3, 1912. After the sale and assignment of February 3, 1912, therefore, the reservation contained in the option was no longer effective, as the option was but a preliminary agreement, which led up to and was merged in the final sale under the agreement of February 3, 1912. Without the knowledge of the Review of Reviews Company, the defendant had in its possession at the time of the sale another set of plates for the matter contained in Exhibit C, the six-volume edition of History of the United States by Ridpath. As has been seen, 'Columbus and Columbia,' the single-volume 'Ridpath's History of the United States,' the six-volume 'History of the United States by Ridpath,' and the six-volume edition of 'American Reference Library' contain the same text, so that a publication of either of the three latter volumes would infringe the copyright in 'Columbus and Columbia.' Under the letter from the Review of Reviews Company to the defendant of February 8, 1912, however, the defendant acquired a license covering further publication of the American Reference Library,...