L.A. Westermann Co. v. Dispatch Printing Co.

• Decision Date: 22 June 1916
• Docket Number: 2663.
• Parties: L. A. WESTERMANN CO. v. DISPATCH PRINTING CO.
• Court: U.S. Court of Appeals — Sixth Circuit

233 F. 609

L. A. WESTERMANN CO. v. DISPATCH PRINTING CO.

No. 2663.

United States Court of Appeals, Sixth Circuit.

June 22, 1916

Williams & Nash, of Columbus, Ohio, for appellant.

S. W Bennett, of Columbus, Ohio, for appellee.

Before WARRINGTON and DENISON, Circuit Judges, and KILLITS, District judge.

DENISON Circuit Judge.

The appellant was the plaintiff below. Although a corporation, it seems to be the enterprise of Mr. Westermann, and it will be convenient to speak of him as the plaintiff. The defendant was a newspaper publishing corporation. Plaintiff was engaged at New York in the business of selling illustrations of styles for women's dress. Pursuing his long-established method of business, when the fall season of 1911 approached he employed Mrs. Westermann, as artist and designer, to observe and reproduce and to design sketches of hats and gowns, among other things, illustrative of fall styles. These sketches showed women as they would appear wearing such articles, and were artistic and attractive. The sketches were then grouped, eight or ten together, and printed upon large display sheets. Each sketch was separately deposited with the Register of Copyrights and copyright claimed thereon; and each sketch when published in the group carried independently the copyright notice. Westermann sent these display sheets, as issued from time to time, to his mailing list of 1,200 retail dealers in women's dress throughout the United States accompanied by an offer to sell to each dealer electroplates of any desired sketch, with the exclusive right to use it in the dealer's town. This record shows that Westermann published and distributed at least six such display sheets two on August 15th, three on September 1st, and one on September 19th. He made a contract covering the season with Morehouse, a retail dealer at Columbus, Ohio, somewhat varying the general method of business, and whereby it was agreed that Westermann should furnish Morehouse these style sheets, and that Morehouse, in consideration of a fixed sum, should have the exclusive right in Columbus to reproduce any of these sketches which he desired to use in his Columbus newspaper advertising.

At intervals from September 19th to October 15th the defendant newspaper published six advertisements for five Columbus retailers other than Morehouse, in each one of which six advertisements there was reproduced one of the copyrighted sketches, no one being used twice. November 10th defendant reproduced in its newspaper for still another advertiser the same sketch which it had once published on October 15th. No two of these six sketches were included by plaintiff in any one of his display sheet groups.

In the court below Westermann filed his bill of complaint setting out these facts, alleging that it was impossible to show by proof the actual damages suffered, and that he elected to take and demand the alternative 'just' damages given by section 25 of the Copyright Law (Act March 4, 1909, c. 320, 35 Stat.L. 1075 (Comp. St. 1913, Sec. 9546)), asking a judgment for the maximum of $5,000 for each of the seven alleged infringing publications, and asking also an injunction.

Defendant answered; plaintiff replied; proofs were taken in open court; all of the issues were found in favor of plaintiff; and his damages were fixed at $10 for each infringement. The defendant was content; the plaintiff brought the case here on appeal and on writ of error.

1. The case must be treated as an equity case here on appeal. Section 27 provides that all proceedings contemplated by the act, including those for injunction, damages, profits, and for the seizure of infringing copies, etc., may be united in one action. It is easy to see that composite actions might be brought which it would be difficult to classify as between equity and law; but there is no such difficulty here. The prayer for damages, in connection with the injunction, does not at all disparage the dominant equitable character of the proceeding. The awarding of such damages is within the customary powers of a court of equity. Plaintiff adopted, and defendant accepted, all the forms of a proceeding in equity; and the suit must be so considered. It follows that we must decide the questions of fact as well as those of law involved, save that, under familiar rules, the conclusion of the trial court on questions of fact will not be lightly disturbed.

Although the testimony is here upon a so-called bill of exceptions, we think the intention is clear enough that it should be treated also as a statement of evidence, under equity rule 75 (198 F. xl, 115 C.C.A. xl); and it will be so regarded.

2. Issues as to the necessity of making Morehouse a party, as to the copyrightable character of the sketches, as to the effectiveness of the registration proceedings, and as to the sufficiency of the notice and defendant's knowledge-- all were decided against defendant, and defendant has not appealed. While it would be open to us to consider such issues, because involved in any judgment for plaintiff, yet in this case we see no reason for considering them on our own motion, and in the absence of any complaint. We therefore assume that the court below was correct in these particulars, and that the only question for consideration is the one which alone the parties have presented, viz., the proper measure of damages under section 25, as applied to the facts of this case.

3. Section 25, so far as pertinent, is quoted in the margin. ^[1] By the clause 'in lieu of' it contemplates an election or discretionary choice between actual damages and profits on the one side, and, on the other side, an assumed or somewhat arbitrary award of such damages as may be just. Plaintiff claims that the copyright proprietor is entitled to make this election, and to plant his action arbitrarily and absolutely upon one theory or the other; defendant insists that the election or the discretionary choice is to be made by the court upon the trial. The plaintiff here made the election, if he had the power to do so; and on the evidence there can be no doubt that this was not a case for actual damages, as distinguished from those damages which might be fair and just, and that the court, if called upon to act, must make the same election as plaintiff did. Defendant made no profits, so far as the proofs indicated; the plaintiff's damages rested in the injury to his Morehouse contract and in the discouragement of and the tendency to destroy his system of business. To make any accurate proof of actual damages was obviously impossible. This case must therefore be treated, from any point of view, as one calling for the application of the 'in lieu' portion of the statute

4. The statute says that 'such damages shall' be governed by a maximum and minimum. Whether this phrase, 'such damages,' and the maximum and minimum limitations, apply to the actual damages which may be proved and established under the first part of this section, or only to the 'just' damages given 'in lieu of actual damages,' cannot be determined from mere arrangement of the language, but must depend upon more indirect interpretation. This question likewise does not directly require decision in this case. The limitations unquestionably apply to the 'in lieu' damages, which are the only ones here involved; their application to actual damages may be passed over.

5. The arrangement of section 25 is awkward. In effect, the provisions for maximum and minimum immediately follow the classification, so that the statute must be treated as if it read:

'Or in lieu of actual damages and profits, such damages as to the court shall appear to be just, and in assessing such damages the court may in its discretion allow $10 for every copy of a painting, etc., $1 for every copy of any other work, etc., $50 for every delivery of a lecture, etc., and $10 for every performance of musical compositions, except, etc.-- but in the case of a newspaper reproduction of a copyrighted photograph such damages shall not exceed the sum of $200 nor be less than the sum of $50, and such damages shall in no other case exceed the sum of $5,000 nor be less than the sum of $250, and shall not be regarded as a penalty.'

6. We see no escape from the application of the $250 minimum in a case like this. It is difficult to think of any reason why a newspaper reproduction of a copyrighted pen and ink drawing of a hat should not be classified with a newspaper reproduction of a copyrighted photograph of similar articles; but it is not, and these sketches here involved are not photographs-- though they might as well have been-- and unless the word 'photograph' is restricted to its established meaning, no line can be drawn; hence the $50 photograph minimum cannot apply.

It seems to us the plain meaning of the language that Congress intended that the plaintiff should not recover less than $250 damages in any copyright infringement suit not based upon a newspaper reproduction of a photograph-- at least in any case where the actual damages fail to appear so clearly and so fully as to forbid resort to the 'in lieu' clause. The necessary effect of the provision is to prohibit the award of merely nominal damages. This intent implies no undue harshness. Not only does the typical copyright infringement if not every one, involve indirect damages almost sure to be considerable, but in few cases would one sum of $250 more than compensate plaintiff for his time, trouble and expense in detecting, following up and prosecuting an infringement. It would seem that the words 'shall not be regarded as a penalty ' were added out of abundant caution, for under such a situation as usually exists on this subject the awarding of a round sum in damages is no more a...