Jewelers' Circular Pub. Co. v. Keystone Pub. Co.

• Decision Date: 13 July 1921
• Citation: 274 F. 932
• Parties: JEWELERS' CIRCULAR PUB. CO. v. KEYSTONE PUB. CO.
• Court: U.S. District Court — Southern District of New York

274 F. 932

JEWELERS' CIRCULAR PUB. CO. v. KEYSTONE PUB. CO.

United States District Court, S.D. New York.

July 13, 1921

[Copyrighted Material Omitted]

W. H Swenarton, of New York City, for plaintiff.

Robert C. Beatty, of New York City, for defendant.

LEARNED HAND, District Judge (after stating the facts as above).

First as to validity: I think that the plaintiff's book is clearly a 'directory' or an 'other compilation,' and as such it falls within section 5(a) of the Copyright Act (Comp. St. Sec. 9521(a)). Under section 6 (Comp. St. 9522) it is not necessary in such cases that the matter compiled should itself be copyrighted; it may be in the public domain. Therefore it is altogether immaterial that the trade-marks themselves could not be copyrighted, or whether section 3 of chapter 301 of the Laws of 1874 still remains in force. If the trade-marks be 'prints' at all, under section 5(k) of the Copyright Act, I may assume that, being designed for use on articles of manufacture, they cannot be copyrighted. Royal Sales Co. v. Gaynor, 164 F. (C.C.) 207, was the case of a single print or label it does not touch this case. J. L. Mott Iron Works v. Clow, 82 F. 316, 27 C.C.A. 250 (C.C.A. 7th), was, however, closer. There the copyrighted work was a trade catalogue, consisting of a collection of photographic illustrations of bathtubs and the like. It was denied protection chiefly on the ground that it was an advertisement, but also in part because it was thought to have no aesthetic quality. In both respects the case must be considered overruled by Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 Sup.Ct. 298, 47 L.Ed. 460, and it has been so treated subsequently. J. H. White Co. v. Shapiro (D.C.) 227 F. 957. See, also, Da Prato Statuary Co. v. Quiliani Statuary Co. (C.C.) 189 F. 90.

In any event, the plaintiff's book was not an advertisement, and in so far as Miss Clark, the plaintiff's draftsman, prepared free-hand drawings from the impressions of the trade-marks, it cannot possibly be said that there was no element of aesthetic quality, whether it was bad or good, and however aesthetic quality is defined. In those instances in which the trade-mark owners sent on illustrations which could be directly transferred to cuts by photography, it might indeed be argued that J. L. Mott Iron Works v. Clow, supra, might still apply. Burrow-Giles Co. v. Sarony, 111 U.S. 53, 4 Sup.Ct. 279, 28 L.Ed. 349, left open an intimation that some photographs might not be protected, and this possibility was emphasized in J. L. Mott Iron Works v. Clow, supra. I think that, even as to these, Bleistein v. Donaldson Lithographing Co., supra, rules, because no photograph, however simple, can be unaffected by the personal influence of the author, and no two will be absolutely alike. Moreover, this all seems to me quite beside the point, because under section 5(j) photographs are protected, without regard to the degree of 'personality' which enters into them. At least there has been no case since 1909 in which that has been held to be a condition. The suggestion that the Constitution might not include all photographs seems to me overstrained. Therefore, even if the cuts be deemed only photographs, which in these supposed cases they are, still I think that they and the illustrations made from them may be protected.

Second, as to infringement: Any directory is a compilation, without opportunity for variety in the statement of the facts recorded. All are free to repeat those facts, just because they are facts. Strictly, it might have been logical, therefore, to deny it any protection, till the statute expressly granted one. That was not, however, the law before the act of 1909 (List Publishing Co. v. Keller (C.C.) 30 F. 772; Sampson & Murdock Co. v. Seaver-Radford Co., 140 F. 539, 72 C.C.A. 55 (C.C.A. 1st)), and it could not be even argued afterwards. Yet in some way subsequent compilers must be allowed to state the same facts, and the question became what independent work they must do to acquire the requisite knowledge. Every one concedes that a second compiler may check back his independent work they must compilation, but there has been some dispute whether he may use the original compilation after simply verifying its statements, or whether he must disregard the assistance of the original, except in subsequent verification. I do not find it necessary to determine that question in this case, or to decide whether there is a conflict between Sampson & Murdock Co. v. Seaver-Radford Co., supra, and Edward Thompson Co. v. Amer. Law Book Co., 122 F. 922, 59 C.C.A. 148, 62 L.R.A. 607 (C.C.A. 2d).

It appears to me quite enough that here the defendant copied the illustrations made by the plaintiff. If those were protected to copy them would be to infringe. Suppose, for example, that, instead of describing the trade-marks pictorially, the plaintiff had done so verbally the defendant would have been, of course, entitled to describe them anew, and it would have made no difference that his description and the plaintiff's tallied to the letter. Still no one would contend, I suppose, that he could lift the plaintiff's verbal description and use it bodily merely by getting it verified by the owner. In that case it would be obvious that he had copied the plaintiff's work. Exactly the same thing was done here. The plaintiff's illustration was not the trade-mark itself, but a picture of it, prepared by the plaintiff. The defendant was as much bound to make an independent picture of the object itself as he would have been obliged to make an independent verbal description. This obligation is quite independent of his right, if he...