Oxford Book Co. v. College Entrance Book Co.

• Decision Date: 29 July 1938
• Docket Number: No. 380.,380.
• Citation: 98 F.2d 688
• Parties: OXFORD BOOK CO., Inc., v. COLLEGE ENTRANCE BOOK CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

98 F.2d 688 (1938)

OXFORD BOOK CO., Inc., v. COLLEGE ENTRANCE BOOK CO., Inc., et al.

No. 380.

Circuit Court of Appeals, Second Circuit.

July 29, 1938.

COPYRIGHT MATERIAL OMITTED

Stanley Garten, of New York City, for appellant College Entrance Book Co., Inc.

Griggs, Baldwin & Baldwin, of New York City (Peter F. McAllister and Stanley Garten, both of New York City, on the brief), for appellants Fraser and Pikholtz.

Gray & Grossman, of New York City (Herman A. Gray and Sidney R. Fleisher, both of New York City, of counsel), for appellee Oxford Book Co.

Before MANTON, SWAN, and CHASE, Circuit Judges.

CHASE, Circuit Judge.

The complaint originally charged the defendants with infringement of the plaintiff's statutory copyright on a book entitled "Visualized American History" written by Philip Dorf and first published by the plaintiff in October 1933. During the trial in the District Court for the Southern District of New York, the complaint was amended at the suggestion of the trial judge to include a charge of unfair competition. See, Hurn v. Oursler, 289 U.S. 238, 53 S.Ct. 586, 77 L.Ed. 1148. After hearing, the complaint was dismissed as to defendants Downes and Donovan; defendants Fraser and Pikholtz were found to have infringed the copyright and they have appealed; defendant College Entrance Book Company, Inc., was found guilty of unfair competition and also of infringement and it has appealed.

Both the plaintiff and the corporate defendant are book publishers in the Southern District of New York. Both have published history outlines intended primarily for use by students and teachers. Before the above-mentioned book of the plaintiff was published, it had published other condensed books on history and so had the corporate defendant especially one by Lamm entitled "American History and Civics". The outstanding difference between the older books of both and the copyrighted work in suit were the so-called cartoon illustrations in the latter.

"Visualized American History" as published by the plaintiff was paper bound in a cover predominantly reddish in color with the name of the author and that of the publisher prominently displayed. The accused book is entitled "Visualized Units in American History" and, as published by the corporate defendant, was paper-bound and about the size of the plaintiff's book but otherwise in outside appearance they were in marked contrast. The color of the defendant's cover was a sort of lemon yellow; it had cover illustrations entirely different from those on the plaintiff's cover both front and back and also on the front cover the names of the authors; that of the man who acted as supervisor; and that of the publisher.

Unfair competition was found only in the use of the word "visualized" and obviously could have been found in no other respect. But even as to that no unfair competition was shown. "Visualized" is merely a descriptive word in the English language which the plaintiff cannot appropriate to its own use in connection with history books and exclude the corporate defendants' right to a similar use without proof that the plaintiff's use has been of such duration and character that it has acquired a secondary meaning. Downes v. Culbertson, 153 Misc. 14, 275 N.Y.S. 233. Such proof was lacking here. There was an approach to proof that the two books had been somewhat confused in the minds of buyers but it is doubtful whether that was due to more than mere carelessness. There can be no reasonable likelihood of confusion in view of the decided differences in general appearance; and the display of the names of the authors and of the publisher. See, Kaeser & Blair, Inc. v. Merchants' Ass'n, 6 Cir., 64 F.2d 575. Since there was a failure to prove a secondary meaning for the word "visualized" and it is fairly descriptive of the corporate defendants' book there has been no unfair use of it. The decree in so far as it relates to unfair competition will, accordingly, be reversed.

As to the claimed infringement of the statutory copyright the situation is somewhat different. The validity of the copyright is unquestioned. It did not cover the use of the word "visualized" in the title, Warner Bros. Pictures v. Majestic Pictures Corp., 2 Cir., 70 F.2d 310, but it did include the book itself together with the arrangement of charts, tabulations and what have been called cartoon illustrations designed to bring information readily to the reader's mind. See Adolph M. Deutsch et al. v. Mildred Arnold et als., 2 Cir., 98 F.2d 686.

It was after the plaintiff published "Visualized American History" that the president of the corporate defendant soon became aware of its success and desired to publish a book better able to compete with it than any he then had. He showed the plaintiff's book to Downes, Fraser and Pikholtz who were high school teachers, and arranged with them to write one for his company to publish. Dr. Herbert D. A. Donovan, long a history teacher in New York City high schools and elsewhere, and chairman of the history department in the Bayside High School, was engaged to supervise the work. Access to the plaintiff's book is admitted but there was substantial evidence to the effect that the defendant authors wrote from memory and from sources other than that book. The first five chapters carrying the work up to the reconstruction period after the Civil War were written by Pikholtz; chapters six, seven and eight were written by Fraser; and Downes wrote the last three chapters which the plaintiff now concedes contain nothing that infringes its copyright. Nor does it now claim that Donovan in any way infringed.

Much stress is laid by the plaintiff upon so-called common errors of fact appearing in both books. There are, indeed, some; enough to make it clear that the defendants Pikholtz and Fraser adopted for their own use either erroneous or at least somewhat misleading statements in regard to historical facts appearing in the copyrighted book. But that only served to show use of the plaintiff's book and not necessarily that what they wrote infringed the copyright, for historical facts are not copyrightable per se nor are errors in fact. The plaintiff's book was designed to convey information to the reader. The defendant authors were as free to read it as anyone else and to acquire from it such information as they could. They could, indeed, with equal right obtain such misinformation as it contained, for the copyright gave no monopoly of the contents of the book. Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F.2d 275. And so far as plaintiff's copyright is concerned, they could use whatever of either character they gleaned from the book in their own writing provided they did not copy any substantial part of the copyrighted work but created something distinctly their own. This does not necessarily mean something other than what has been "put into words" in the copyrighted work for then an accurate and comprehensive treatise on algebra, for instance, would if copyrighted prevent another from later writing one as accurate and comprehensive during the copyright term. The true concept of what a copyright covers as well as what it does not was given by Judge Learned Hand in Arnstein v. Edward B. Marks Music Corp., supra, when he said, "The `sole liberty of printing, publishing and vending' the `work' means the liberty to make use of the corporeal object by means of which the author has expressed himself; it does not mean `the sole liberty' to create other `works', even though they are identical". This applies with especial force to works on the same period in history. The subject matter is of necessity what events have made it and the order of treatment whether that be chronological or topical is fixed by the facts. Even the somewhat limited matter of selection is curtailed in such condensed works, designed for elementary school study, as those with which we are here concerned.

For the foregoing reasons no need exists for analyzing in detail the fairly numerous places in the text in each book where substantially the same thing on the same subject has been said in different words. That was proper enough and, indeed, inevitable if both books were to serve their purpose. They had to contain the more important facts of history. This being so, no sound reason remains for saying that the accused book in its text is a copy of any substantial part of the copyrighted book. True it is that at times one or more descriptive words used in the plaintiff's book are utilized to describe the same thing in the defendants' but in no material respect are the same words gathered together sufficiently to show that the copyrighted work was copied. Mere similarity of phraseology which has, indeed, become more or less stereotyped in some respects in school histories is a weak support for a charge of infringement. See, Sampson & Murdock v. Seaver-Radford Co., 1 Cir., 140 F. 539. The trial judge was apparently led into error in...