Jacobs v. Robitaille

• Decision Date: 06 January 1976
• Docket Number: Civ. A. No. 75-132.
• Court: U.S. District Court — District of New Hampshire
• Parties: John I. JACOBS, d/b/a the New Hampshire Classified Guide v. Roger ROBITAILLE, d/b/a the Merrimack Valley Free Classifieds Weekly.

406 F. Supp. 1145

John I. JACOBS, d/b/a the New Hampshire Classified Guide v. Roger ROBITAILLE, d/b/a the Merrimack Valley Free Classifieds Weekly.

Civ. A. No. 75-132.

United States District Court, D. New Hampshire.

January 6, 1976.

Grenville Clark, III, McLane, Graf, Greene, Raulerson & Middleton, Manchester, N. H., for plaintiff.

Lee A. Strimbeck, Derry, N. H., for defendant.

OPINION

BOWNES, District Judge.

Plaintiff is the publisher and seller of a weekly booklet entitled "The New Hampshire Classified Guide" (hereinafter referred to as "Guide").

"Guide" is a seventy page compilation of approximately fifteen hundred classified ads which is published every Wednesday and distributed in southern New Hampshire and northern Massachusetts. Defendant is the publisher and seller of a weekly booklet entitled "Bargain Classifieds" (hereinafter referred to as "Bargain"). "Bargain" is a seventy page compilation of approximately fifteen hundred classified ads which is published every Wednesday and distributed in southern New Hampshire and northern Massachusetts.¹

Plaintiff brings suit alleging that defendant has violated the federal copyright laws, 17 U.S.C. § 1 et seq., and engaged in unfair competition. Jurisdiction is based on 28 U.S.C. § 1338(a) and (b).

On June 5, 1975, after an evidentiary hearing, a preliminary injunction was issued enjoining defendant "from copying materials appearing in plaintiff's publications. . . ." (The evidence introduced at the hearing is part of the present record. Fed.R.Civ.Pro. 65(a)(2).) On December 2, 1975, a hearing on the merits was held.

FACTS

"Guide" has been published on a weekly basis since August 27, 1973; it did not, however, obtain federal copyright protection until April 14, 1975. During this interim period, plaintiff published numerous uncopyrighted issues of the "Guide" which were substantially similar in both format and appearance to the later copyrighted editions. These common features include: pamphlet size, type of paper, bleedover border, language of the ad form, mast head, and display box. The parties have stipulated that the earlier uncopyrighted editions were copyrightable. (Stipulation No. 3.)

Prior to publishing his own periodical, defendant worked for the plaintiff as an independent distributor and served one hundred sixty store outlets in the Manchester, Milford, and Nashua area. While working for plaintiff, defendant was considering establishing his own publication and he investigated printing and designing costs to determine whether such a venture was economically feasible. Defendant acquired considerable business knowledge concerning plaintiff's method of operation, business, and distribution system during the period he was a distributor for the plaintiff.

After distributing the "Guide" for approximately seven months, defendant approached Alfred Campbell, plaintiff's business manager, and informed him that he wanted a larger financial interest in the business and asked for an expansion of his assigned routes. Campbell refused. Defendant informed Campbell that, if he was not given more responsibility, he would terminate their relationship and would form and publish a rival publication. Campbell still refused and, in the middle of February, 1975, defendant terminated his association with plaintiff.

After leaving plaintiff, defendant distributed "The Want Advertiser," a publication which is similar in scope and purpose to the "Guide," for thirteen weeks. While distributing the "Advertiser" he found that there was a certain amount of confusion generated in the buying public as to the "Advertiser's" source. Nevertheless, his commercial appetite being further whetted, defendant decided to bring out a publication of his own.

Defendant examined the other principal classified ad booklets and culled from them what he considered to be the best commercial features before finally choosing his design.² He decided on a bleedover border and a two color format for his front page; this design is very similar to the one adopted by plaintiff and defendant knew that this similarity would cause commercial confusion.

The design plate for defendant's booklet was designed by Bob Waugh, a graphic designer, and defendant knew, after speaking to him, that Waugh had also designed the name plate for plaintiff's publication. In addition, when preparing his ad form, defendant told Waugh to use plaintiff's as a model. The two forms are similar, but not identical.³

On May 7, 1975, the first volume of "Bargain" was published. This publication was similar, if not identical, to plaintiff's publication in the following respects: (1) size of publication; (2) type of paper; (3) serif type face; (4) internal format; (5) bleedover border; (6) price; (7) official date of publication; and (8) two color front page format.

Of equal concern to plaintiff is the fact that 20%-26% of the ads contained in defendant's first publication were pirated from a copyrighted issue of the "Guide"; 12% of the ads contained in defendant's second publication were pirated from a copyrighted issue of the "Guide"; and, in defendant's third publication, 1%-2% of the ads contained therein were pirated from a copyrighted issue of the "Guide." The defendant, when copying these ads, did not simply photostat them, but retypeset them and, in some cases, rearranged them on the page interspersed with ads taken from other sources.

"The publications of both the plaintiff and the defendant are identical in purpose and nature. They both consist of a compilation of classified advertisements. The advertisements are collected, assembled, sorted, edited and printed in booklet form. The booklet is then sold to the public, typically through displays near checkout counters of retail establishments, such as grocery stores. With exceptions not pertinent to this case . . . the advertiser pays no fee for the publication of his ad. Advertisements for future publication are solicited from readers through the means of an `ad order form' appearing in the booklet." (Stipulation No. 11.)

When advertisements are received, they are sorted by category and each advertisement is edited so that typographical and grammatical errors are corrected and when they are retypeset, the first few words are placed in bold face type. The principal body of the advertisement, however, is written by the advertiser and its basic form and structure are not changed. The parties have also stipulated that the publications are bought on impulse when a person sees them near the checkout counter.

Defendant admitted that his publication generated confusion in the buying public as to its source, but he testified that this confusion hurt his own business in that he was unable to establish his own commercial identity.

Campbell testified that, as a consequence of defendant's pirating certain advertisements from plaintiff's publication, he received approximately six complaints a week from customers who were receiving telephone calls from prospective purchasers long after their ads should have expired. He testified that the ads run on the average of two weeks and that, due to defendant's activities, some ads were on the public market for more than six weeks. He testified that plaintiff's good will was injured as a result of defendant's actions.

Campbell also testified that plaintiff and defendant use the same store outlets in order to sell their publications, and that defendant rearranged plaintiff's displays so as to give his publication greater public exposure. Defendant did not deny this practice, but argued that it was an established part of this type of business, and that when he worked for plaintiff he engaged in similar practices. Campbell also testified that in some stores plaintiff's rack and publication were removed from public view and defendant's rack and publication were inserted in their place.

ISSUES

This suit raises two issues: (1) whether defendant is liable, under federal copyright laws, for infringing plaintiff's copyright; and (2) whether, under New Hampshire common law, defendant can be found liable for engaging in unfair competition.

THE LAW

Although plaintiff's compilation of classified advertisements was copyrightable, he published his booklet for approximately one and one-half years without obtaining copyright protection. Consequently, the material contained in these publications, including the external design cover,⁴ was dedicated to the public and could be freely copied without offending the federal copyright laws. 17 U.S.C. § 8. Once a work has been injected into the public domain, all of its copyright protection "is lost permanently and cannot be restored or reclaimed." Ringer & Gitlin, "Copyrights," at 15 (Practicing Law Institute 1965).

It is undisputed that defendant pirated advertisements from copyrighted editions of the "Guide." The narrow question is therefore: Who is the copyright proprietor of advertisements — the advertiser or publisher?

17 U.S.C. § 9 provides that the rights of copyright reside in "the author or proprietor of any work made the subject of copyright by this title, or his executors, administrators, or assigns, . .." The essential question is whether plaintiff is statutorily capable of copyrighting these ads.

The advertiser writes his own ad. In order to submit an advertisement, he fills in a blank "ad form" and provides a written description of the article to be sold along with its condition and price. Plaintiff is not involved in the writing of these ads and his task is merely to categorize the advertisements and edit them. In essence, the original advertisement is very rarely changed.

Advertisements are copyrightable. Bleistein v. Lithographing Co., 188 U.S. 239, 23 S.Ct. 298, 47 L.Ed. 460 (1903); see generally, Borden, Copyright of Advertising, 35 Ky.L.J. 205 (1947); Savord, The Extent of Copyright Protection for Advertising, 16 Notre Dame Lawyer 298 (1941). Advertisements that are contained in...