Ogilvie v. G. & C. Merriam Co.

• Decision Date: 09 January 1907
• Docket Number: 155.
• Citation: 149 F. 858
• Parties: OGILVIE v. G. & C. MERRIAM CO. G. & C. MERRIAM CO. v. OGILVIE.
• Court: U.S. District Court — District of Massachusetts

149 F. 858

OGILVIE v. G. & C. MERRIAM CO.

G. & C. MERRIAM CO. v. OGILVIE.

No. 155.

United States Circuit Court, D. Massachusetts.

January 9, 1907

George F. Bean, for Ogilvie.

Judson & Hale, for G. & C. Merriam Co.

COLT Circuit Judge.

This bill and cross-bill present two general questions: Has the defendant, the G. & C. Merriam Company, the exclusive right to the use of the name 'Webster' in the title of dictionaries of the English language? and, second, has the complainant, George W. Ogilvie, unmistakably informed the public that his dictionary is a Webster's dictionary published by George W. Ogilvie, and not a Webster's dictionary published by the G. & C. Merriam Company?

The dictionary published by Ogilvie is entitled 'Webster's Imperial Dictionary,' and he seeks by his bill to enjoin the Merriam Company from sending out threatening letters and circulars to the trade, to the effect that the Merriam Company has the exclusive right to the use of the name 'Webster' upon dictionaries. On the other hand, the Merriam Company, by its cross-bill, seeks to enjoin Ogilvie from the use of the name 'Webster' upon his dictionary, and from sending out misleading circulars and advertisements respecting his dictionary. It is claimed by the Merriam Company that this use of the name Webster and these circulars and advertisements are an infringement of Webster's International Dictionary, which is the latest edition of Webster's Dictionary published by the Merriam Company.

The evidence shows that the Ogilvie dictionary is an enlarged and revised edition of Webster's Dictionary, based upon Webster's Unabridged Dictionary, which was published and copyrighted by G. & C. Merriam in 1847, and upon which the copyright expired in 1889. The evidence also shows that the Merriam Company, and its predecessors in title, G. & C Merriam & Co., and G. & C. Merriam, have been the publishers of Webster's Dictionaries for more than 50 years, having acquired all the rights in Webster's Dictionary from the heirs of Noah Webster previous to 1847, and that since that time they have published numerous editions of this work.

It further appears from the evidence that on the back or cover of every copy of each edition of this book published by Noah Webster and by the Merriams, beginning with the year 1806 have appeared the words 'Webster's Dictionary,' and that this is the generic name by which this book has always been known and described.

It further appears from the evidence that from 1847 to 1889 the Merriams were the sole publishers of Webster's Dictionaries, and that in 1889 the name 'Webster,' as applied to dictionaries, had acquired a secondary meaning and indicated to the public the dictionaries published and sold by the Merriam Company. It further appears that, since the expiration of the Merriam copyright in Webster's Unabridged Dictionary in 1889, various editions of Webster's Dictionary have been published and sold by other publishers; but, notwithstanding this circumstance, it is shown by a preponderance of evidence that the name 'Webster' still indicates to the public the dictionaries published and sold by the Merriam Company.

We have, then, to inquire what are the rights of Ogilvie with respect to the use of the name 'Webster' upon dictionaries after the expiration of the Merriam copyright in 1889; it appearing that the name 'Webster' has a two-fold signification, in that it is the generic name of the dictionary, and also indicates to the public the dictionaries published and sold by the Merriam Company.

A copyright, the same as a patent, is a monopoly created by statute. This monopoly is granted upon the implied condition that at the expiration of the copyright the book and the name by which it is designated are dedicated to the public; in other words, at the expiration of the copyright, both the book and its generic name become public property. To say that the public have the right to publish the book, and not the incidental right to use the name by which it is known, is in effect to destroy the public right, and to perpetuate the monopoly. For instance, to hold that the Merriam Company, after the expiration of its copyright in Webster's Unabridged Dictionary, still has the exclusive right to the use of the name 'Webster' on some theory of trade-mark or trade-name, or unfair competition, would be to nullify the public dedication, and perpetuate the monopoly secured by the copyright. It follows, therefore, as a necessary result, that at the expiration of the copyright any person has the right to publish the copyrighted book, and to call it by its generic name.

But it may so happen, as in the case at bar, that, at the expiration of the copyright, the name by which the book is known has also acquired a secondary meaning, and has come to indicate to the public the book published and sold by the publisher who took out the copyright. In such a case another person must so use the name as to protect individual property rights, and to prevent injury to the public. While no restrictions can be imposed upon the right to use the name, such person must, so far as is consistent with such use, protect the good will and business of the original publisher, and guard the public against deception. The duty, therefore, is imposed upon such person of accompanying his publication with such indications as to the source of publication as will unmistakably inform the public that the book is published by himself, and not by the original publisher. After having taken these precautions, if any injury results to the business of the original publisher, it is damnum absque injuria. Such injury is analogous to the incidental injury to the business of another which may result from the absolute right of every one to use his own name in his own business.

It follows in the case at bar that Ogilvie, upon the expiration of the Merriam copyright, has the right to publish the copyrighted book, or a revised edition thereof, and to call it 'Webster's Dictionary,' or 'Webster's Imperial Dictionary,' provided that he clearly indicates to the public that it is a Webster's Dictionary published by him, and not a Webster's Dictionary published by the Merriam Company.

In 1890, or soon after the expiration of the copyright in Webster's Unabridged Dictionary, the Merriams brought several suits in which they set up their exclusive right to the use of the name 'Webster' in the title of dictionaries. In these cases the decisions were adverse to the Merriam Company upon this point, the courts holding that to give the Merriam Company this exclusive right would be to perpetuate the copyright monopoly.

In Merriam v. Holloway Publishing Company (C.C.) 43 F. 450, decided September 26, 1890, Mr. Justice Miller said:

'I want to say, however, with reference to the main issue in the case, that it occurs to me that this proceeding is an attempt to establish the doctrine that a party who has had the copyright of a book until it has expired may continue that monopoly

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