No-Leak-O Piston Ring Co. v. Norris

• Decision Date: 01 November 1921
• Docket Number: 1903.
• Citation: 277 F. 951
• Parties: NO-LEAK-O PISTON RING CO. v. NORRIS et al.
• Court: U.S. Court of Appeals — Fourth Circuit

277 F. 951

NO-LEAK-O PISTON RING CO. v. NORRIS et al.

No. 1903.

United States Court of Appeals, Fourth Circuit.

November 1, 1921

John E Cross, of Baltimore, Md., for appellant.

John F Green, of St. Louis, Mo., for appellees.

Before KNAPP, WOODS, and WADDILL, Circuit Judges.

KNAPP Circuit Judge.

In this suit for infringement of a copyright, plaintiffs had a decree and defendant appeals.

Both parties manufacture and sell piston rings for replacement purposes; they are active competitors in that business. Beginning in 1913, and each year since down to 1919, the plaintiffs, or their predecessors in title, have published and distributed a printed pamphlet entitled 'Dimensions of Piston Rings.' This pamphlet lists the various makes of motor vehicles in alphabetical order, and gives for each the year, model, bore, groove, size, and number of rings, and the like. It appears to be an excellent advertisement, and also a valuable reference book for repairmen to use in ordering piston rings for their customers. Indeed, without the data furnished by such a compilation, it would be practically impossible for dealers to keep a supply of rings in stock. Each yearly issue of this pamphlet has been copyrighted, and it is the issue of 1919 which defendant is charged with infringing. For the purpose of detecting infringers, plaintiffs have, for some years past, included in their annual lists a number of fictitious or 'trap' models; that is, nonexistent cars, and rings that are never used. In the edition of 1919 there were 12 of these decoys.

Defendant's pamphlet, styled 'Piston Ring Size Directory,' was issued about the 1st of June, 1920. In December of the previous year, the Motor World, a trade journal, had published a catalogue of piston ring dimensions. Except that models prior to 1916 were omitted and passenger cars separated from trucks, this catalogue was a reproduction of plaintiffs' compilation, including 10 of the 12 fictitious models.

The Motor World admits that it got all the data for its publication from the copyrighted pamphlet issued by plaintiffs. Defendant's pamphlet was prepared by taking the Motor World's catalogue, recombining passenger cars and trucks, thus giving its list the same general character as that of plaintiffs', and adding information obtained by it regarding piston rings for some of the 1920 models which, of course, did not appear in plaintiffs' 1919 edition. Some 55,000 copies were printed, of which 10,000 to 15,000 appeared to have been distributed at the time of the trial. The decree below finds plaintiffs' copyright valid, and infringed by defendant's publication, grants the usual injunction in such cases, directs delivery of the copies on hand to the marshal, to be by him destroyed, and awards damages in the sum of $3,000, with counsel fees of $750 in addition to taxable costs.

It is argued that plaintiff's pamphlet is not covered by the copyright statutes (Comp. St. Secs. 9517-9524, 9530-9584) and therefore not entitled to protection, but the argument is quite unconvincing. This pamphlet is much more than an ordinary price list or table of figures. It is a compilation from primary sources of a great number of facts which, so far as appears, had not before been available to the trade, and in that respect, at least, is an original production. It certainly displays as much originality as a city directory, which frequently has been held entitled to copyright. Williams v. Smythe (C.C.) 110 F. 961; Trow Directory Co. v. U.S. Directory Co. (C.C.) 122 F. 191. Moreover, the information thus made public was obtained only by considerable effort and expense. The proof shows that it cost plaintiffs some $3,000 to get the data for this 1919 issue, and about $3,500 to have it printed. Whilst it serves and was intended to advertise the plaintiffs' wares, it at the same time furnishes information of real value to the numerous persons who desire to procure piston rings, or have occasion to keep the various kinds in stock, and so performs a distinctly useful service. In short, we deem it is not doubtful that the...