S.E. Hendricks Co., Inc. v. Thomas Pub. Co.

• Decision Date: 10 April 1917
• Docket Number: 214.
• Citation: 242 F. 37
• Parties: S. E. HENDRICKS CO., Inc., v. THOMAS PUB. CO.
• Court: U.S. Court of Appeals — Second Circuit

242 F. 37

S. E. HENDRICKS CO., Inc., v. THOMAS PUB. CO.

No. 214.

United States Court of Appeals, Second Circuit.

April 10, 1917

The action is to restrain infringement of the copyright of one of plaintiff's publications, a book known as 'Hendricks' Commercial Register, 23d Edition.'

The infringement asserted consisted in defendant's copying from said Commercial Register certain matter inserted in a publication of defendant's known as the 'Thomas Register of American Manufacturers, 7th Edition. ' After a trial lasting for several days and an exhaustive comparison of the two books. contained in exhibits introduced in evidence and physically transmitted to this court, the trial judge found infringement. Although an appeal was taken which attacked the propriety of this decision, the question of defendant's infringement is not here raised, for (as stated in appellant's brief) 'defendant does not ask this court to review the finding that defendant's work infringed upon plaintiff's.'

The answer sought to raise the further defense that plaintiff was not entitled to equitable relief (notwithstanding admitted or proven infringement) because it did not come into court with 'clean hands,' in that plaintiff itself had copied out of the sixth edition of defendant's Register matter incorporated in 'the several editions of Hendricks' Register, and more specifically in * * * the twenty-second twenty-third and twenty-fourth editions of Hendricks' Register, instead of resorting to original sources for such information.'

No effort requiring our notice was made to substantiate this allegation in respect of the twenty-second edition of Hendricks. As to the twenty-third edition (which plaintiff made the subject of this suit), the testimony of one copyist formerly in plaintiff's employ, but in that of defendant until shortly before trial, was to the effect (in answer to a leading question) that copying had been done direct from the Thomas book into the twenty-third edition of the Hendricks publication. This testimony was positively denied, and is in our judgment wholly insufficient to sustain the defense as matter of fact.

Plaintiff's copying from defendant's sixth edition matter embodied in plaintiff's twenty-fourth edition is sought to be sustained by comparisons contained in exhibits, and tending to show that both plaintiff's and defendant's books contain the same errors. We have examined this testimony although neither the sixth edition of defendant nor the twenty-fourth of the plaintiff is before us. The nature of the volumes published by both parties is suggested by their titles. They are directories and advertising media, arranged geographically and by occupation; each contains upwards of 1,000 pages and many thousand names, occupations, and addresses. The value of such books is to advise advertisers customers, and sellers as to where persons and corporations can be found likely to be interested in most manufactured articles of commerce. It is amply shown that neither plaintiff nor defendant compiles its catalogue wholly by means of personal visits or correspondence, but with much assistance from lists of telephone subscribers, city directories, official registrations, and other similar publications.

The refusal of the court below (1) to dismiss the bill because of plaintiff's alleged inequitable conduct, its action in awarding (2) so much or any damages, and (3) so large an attorney's fee, are the assigned errors here insisted on.

Defendant's attack upon plaintiffs method of compiling its twenty-fourth edition is confined to three subdivisions of commercial activity: Millers, or makers of flour; dealers in foods (cereal, breakfast, etc.); and meat packers--an extremely small part of the lists published by both parties. It is said that in these selected portions of plaintiff's work there are found some 130 errors common to both plaintiff and defendant, from which it is urged that, since defendant's sixth edition was published before plaintiff's twenty-fourth, the errors of the later book must have been produced by copying from the former. These comparisons are the only evidence requiring mention. It is not only denied that plaintiff copied from defendant, but the origin of most of the matter complained of is given, viz. from such local or special publications as have been enumerated above, and in most (we cannot say all) instances the errors existed in the source of information sworn to on behalf of plaintiff. Nor were the exhibits of comparison introduced by defendants themselves free from error-- as was developed upon cross-examination.

At the conclusion of trial it appeared that the pecuniary value of books such as those under consideration depended upon prompt distribution and use. Changes of address, business, etc., rendered new editions numerous and necessary, and by admission in open court it further appeared that defendant had distributed (presumably to subscribers) 2,800 copies of its seventh edition containing the infringing matter. Thereupon the trial court awarded $2,500 as damages under section 25 of the Copyright Act of 1909 as amended (U.S. Comp. St. 1916, Sec. 9546), and an attorney's fee of $2,500 under section 40 of the same act (U.S. Comp. St. 1916, Sec. 9561).

Hugo Mock, of New York City (Max D. Josephson and A. M. Wattenberg, both of New York City, of counsel), for appellant.

Schechter & Lotsch, of New York City (Jacob Schechter and John L. Lotsch, both of New York City, of counsel), for appellee.

Before WARD, ROGERS, and HOUGH, Circuit Judges.

HOUGH Circuit Judge (after stating the facts as above).

1. The trial court dismissed the defense of 'unclean hands,' because the inequitable conduct charged against plaintiff did not 'affect the matter in litigation.' If plaintiff did borrow from defendant's sixth edition for the benefit of its twenty-fourth edition, that act was not deemed so connected with the subject-matter of this suit, viz. infringement of the copyright of plaintiff's twenty-third edition by defendant's seventh edition, as to render the defence admissible. Bentley v. Tibbals, 223 F. 247, 138 C.C.A. 489. Appellant insists that this case is not within that decision, but is ruled by Edward Thompson Co. v. American Law Book Co., 122 F. 922, 926, 59 C.C.A. 148, 152 (62 L.R.A. 607), where we said that 'an author who has pirated a large part of his work from others is not entitled to have his (own) copyright protected. ' Decisions are idle unless based upon the facts of the case in which they are rendered, and the facts in this case do not require consideration of the question whether the alleged wrongdoing of plaintiff herein debars it from equitable relief against the admitted wrong of defendant.

Assuming the defense offered to be well pleaded (concerning which no decision is made), it set up new matter, and in the light of defendant's now admitted infringement was in effect a plea in confession and avoidance; therefore defendant was obliged to make good such avoidance by a fair preponderance of credible testimony. This has not been done. If this defense had been (as it might have been) pleaded as a counterclaim (under equity rule 30 (201 F. v, 118 C.C.A. v)) or been pressed by...