Markham v. AE Borden Co.

• Citation: 108 F. Supp. 695
• Decision Date: 21 November 1952
• Docket Number: No. 51-1010.,51-1010.
• Parties: MARKHAM v. A. E. BORDEN CO., Inc. et al.
• Court: U.S. District Court — District of Massachusetts

108 F. Supp. 695

MARKHAM v. A. E. BORDEN CO., Inc. et al.

No. 51-1010.

United States District Court D. Massachusetts.

November 21, 1952.

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LaRue Brown, Raymond E. Bernard, of Brown, Field & McCarthy, Boston, Mass., for plaintiff.

Irving U. Townsend, Jr., of Emery, Booth, Townsend, Miller & Weidner, Boston, Mass., for defendant.

SWEENEY, Chief Judge.

This is an action for copyright infringement brought under the provisions of Title 17 U.S.C.A., in which the plaintiff seeks the customary relief of damages, an injunction, and an accounting of profits. A count for unfair competition is also added to the complaint.

Findings of Fact

The plaintiff, C. R. Markham, a citizen of the State of Illinois, is engaged in the advertising business in that state under the name of C. R. Markham Advertising. As part of that business Markham produces trade catalogs and illustrated price lists for refrigeration equipment wholesalers.

The defendants in this cause are: A. E. Borden Co., a corporation organized under the laws of the Commonwealth of Massachusetts, with its principal place of business in the City of Boston; Adrian C. Borden and Chester E. Borden, citizens of the Commonwealth of Massachusetts, who reside in the City of Newton; and Sherwin T. Borden, a citizen of this Commonwealth whose residence is in the City of Worcester.

The defendant corporation (hereinafter referred to as Borden) is a wholesaler and manufacturer representative for refrigeration and air-conditioning equipment in the Greater Boston and adjacent area.

Beginning sometime prior to January 19, 1945, and continuing up to July 30, 1948, the plaintiff compiled, published, and copyrighted thirty-nine advertising catalogs which are set forth in the bill of complaint by title and marked therein as Exhibits 1 through 39. Each of these catalogs was licensed by Markham to a wholesale dealer of refrigeration parts and supplies to be used by it in the conduct of its business. The copyright on the various catalogs at all times remained in the name of C. R. Markham.

The plaintiff claims that Borden infringed the copyrights for each one of these thirty-nine catalogs in the compilation, publication, and customer distribution of two of Borden's advertising catalogs designated (and hereinafter referred to) as B-48 and C-50.

From the testimony adduced at the trial and the documentary evidence presented in this case it appears that Borden, whose business consists in selling at wholesale to installing contractors in the refrigeration and air-conditioning fields and the persons who service and repair this equipment, had established a practice as early as 1945 of furnishing gratuitously to its customers an over-all catalog in order to inform them of the various items which it kept in stock. These catalogs usually became obsolete after two years and were replaced by newer up-to-date editions. Borden compiled and distributed catalogs in the years 1945, 1948, and 1950. The 1948 and 1950 editions, namely the B-48 and the C-50, are the catalogs complained of in this action.

In 1947 Borden hired one Edward Owen & Co. (hereinafter called Owen) an advertising firm in Hartford, Connecticut, to perform the work on the B-48 catalog. Borden supplied Owen with various materials to be used in compiling the catalog, including its 1945 catalog, current manufacturers' catalogs, and jobbers' sheets. Borden would then advise Owen's man, one George W. Salzer, as to which of the manufacturers' items it carried so that they could be incorporated into the B-48 catalog. Other material which was not available at the Borden Company's office was obtained by Salzer directly from the manufacturers.

The B-48 job was completed sometime in June, 1948, and by the middle of July, 1948, most of the catalogs had been received by Borden and distributed to its customers.

Prior to the publication, receipt, and distribution of the B-48 by Borden, the latter received notice of complaint by the plaintiff about its contents, so that if this Court finds that catalog guilty as charged, any subsequent publication of it would be equivalent to infringement occurring after actual notice to the defendant within the terms of Title 17 U.S.C.A. § 101.

In response to this warning minor changes were made in the composition of the B-48, and that catalog in the form in which it finally was printed and distributed has been marked as the defendant's Exhibit R in this case.

Whether these changes were executed by Owen alone or whether they were made by Owen at the request of and with the assistance of Borden cannot be determined.

The B-48 catalog became obsolete by the end of 1949, and at that time Borden made arrangements for production of the C-50. This job was given to a Boston catalog-producing firm called Topping House. The actual work of compilation was carried on entirely in the offices of the Borden Company. In many instances the content of C-50 is similar to that of B-48, the former being in substance a revision of or bringing up-to-date of the latter. C-50 was completed and distributed in the late spring or early summer of 1950.

After a careful perusal of the catalogs of the plaintiff and the defendants in this case, I find that, viewing the Borden catalogs B-48 and C-50 each in its physical entirety, the average reasonable man on due consideration would not fail to note that since similarities appear in both catalogs one must have lifted material from the other. I find that such similarity as does exist between the Markham and Borden catalogs is not due to coincidence but is the result of lifting the plaintiff's material.

This finding is compelled by the presence of several "Chinese Copies"¹ and at least two common errors² in the defendant's catalogs. When to this is added the numerous instances where the defendant has taken the identical language used by the plaintiff in its descriptive texts and modified it, changing the order of sentences, or breaking up and transposing clauses, we feel confident that our finding is well founded in fact.

See cases holding that the reproduction of errors is strong proof of copying. Sub-Contractors Register v. McGovern's Contractors & Builders Manual, D.C., 69 F. Supp. 507; R. R. Donnelley & Sons Co. v. Haber, D.C., 43 F.Supp. 456, and cases cited therein on page 458.

See also cases holding that in those instances where similarities between two works are striking, access need not be directly proven, but may be inferred, Arnstein v. Porter, 2 Cir., 154 F.2d 464; Contemporary Arts v. F. W. Woolworth Co., D.C., 93 F.Supp. 739.

The defendant contends that the greater part of the similarities are due to the fact that both the plaintiff and the defendant used common source material in producing the copy for these items. In furtherance of this contention the defendant has introduced in evidence two batches of material accompanied by lists and marked as Exhibits N and O and Lists A and B. List A enumerates items claimed to have "exact verbatim manufacturer and other free sources". The manufacturer's material referred to is supplied under Exhibit N. List B sets out "Borden items only slightly similar to corresponding Markham items and derived from manufacturer's sources". The actual manufacturer's sources were marked in a batch at trial as Exhibit O.

We have scrutinized this material, making detailed comparisons between the Markham and Borden catalogs and the alleged source material. Our conclusion is that several of the items contained in List A³ and a few of the items contained in List B⁴ were compiled for the defendant's B-48 and/or C-50 from the source material introduced in evidence by the defendant. This rebuts the prima facie case made out by the plaintiff in respect to these particular items. However, I find that the defendant has failed to offer a satisfactory explanation as to the remainder of the items comprising List A and List B and that the inference that they were lifted from the plaintiff's catalogs still remains. See R. R. Donnelley & Sons Co. v. Haber, 43 F.Supp. 456.

At the trial of this case the defendant has attempted to establish the fact that if there was an illegal copying of the plaintiff's catalogs such copying was done by Owen, its compiler, and not by Borden. The plaintiff, on the other hand, has tried to create the opposite impression by introducing evidence tending to show that Borden supplied all of the material to be used by Owen in compiling the B-48. In our view of this case it is not necessary to go into this controversy since even if Owen is the guilty one, still Borden would be liable as a distributor of an infringing publication. See Detective Comics, Inc., v. Bruns Publications, D.C., 28 F.Supp. 399; American Code Co. v. Bensinger, 2 Cir., 282 F. 829.

Discussion

Because this case has taken so long to try and has been subject to much research this discussion will be of greater length than is ordinarily necessary. At the outset I am of the opinion that the plaintiff's catalogs contain the degree of originality required by the law and that they are copyrightable. There has been much duplication in the plaintiff's own thirty-nine catalogs as will appear later when we are discussing the law. At the outset the defendant raises the contention that the plaintiff's Dennis Catalog (Exhibit 39) and the Joplin Catalog (Exhibit 9) are in effect and fact duplicates of the Superior Catalog (Exhibit 20) and the Nelson Catalog (Exhibit 8) also owned by the plaintiff, and that the former in each case being duplicates coming later than the originals were not copyrightable. 17 U.S.C.A. § 7 provides that "Compilations * * * or other versions of works in the public domain or of copyrighted works when produced with the consent of the proprietor of the copyright in such works, or works republished with new matter, shall be regarded as new works subject to copyright under the provisions of this title;...