Saalfield Pub. Co. v. G. & C. Merriam Co.

• Decision Date: 13 January 1917
• Docket Number: 2856.,2855
• Citation: 238 F. 1
• Parties: SAALFIELD PUB. CO. et al. v. G. & C. MERRIAM CO. G. & C. MERRIAM CO. v. SAALFIELD PUB. CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

238 F. 1

SAALFIELD PUB. CO. et al. v. G. & C. MERRIAM CO.

G. & C. MERRIAM CO. v. SAALFIELD PUB. CO. et al.

Nos. 2855, 2856.

United States Court of Appeals, Sixth Circuit.

January 13, 1917

[Copyrighted Material Omitted]

Wm. B Hale, of New York City, for appellee.

No 2856:

Wm. B. Hale, of New York City, for appellant.

Wade H. Ellis and Challen B. Ellis, both of Washington, D.C., for appellees.

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

DENISON Circuit Judge.

These are, respectively, appeal and cross-appeal from the decree of the District Court, entered in purported compliance with our mandate on the former appeal. 190 F. 927, 111 C.C.A. 517, and 198 F. 369, 117 C.C.A. 245. By our second opinion, certain details, both as to the form of the injunction and as to the accounting liability, were committed to the trial court for decision. In the court below there was then a reference to a master, who made findings of fact bearing upon these special questions so reserved, as well as upon the amount of the profits or damages to be paid. Exceptions to the master's report embodying these findings were overruled and the findings confirmed. The controversy as to profits and damages was compromised and settled, but a decree determining the precise scope of the injunction was entered, against the objection of plaintiff that it did not go far enough, and the protest of defendants that it went too far.

Upon these appeals the plaintiff urges only the two points hereafter discussed, and the defendants, although assigning a large number of errors, have insisted upon and argued only one general proposition. All other errors assigned are therefore to be treated as waived. Rule 20 (202 F. xiv, 118 C.C.A. xiv); Ironton v. Harrison (C.C.A. 6) 212 F. 353, 357, 129 C.C.A. 29; Gibson v. Ry. (C.C.A. 6) 215 F. 24, 27, 131 C.C.A. 332.

1. The complaint prosecuted in the First circuit was against the single form of dictionary then published by Ogilvie, which was of the exhaustive or unabridged class, and was called "webster's Imperial' or 'Webster's Universal.' After the purchase of Ogilvie's business by the defendants here, and before the filing of this bill, they had published three other dictionaries of abridged type, which they called, respectively, 'Webster's Intercollegiate,' 'Webster's Adequate,' and 'Webster's Sterling.' The bill in this case complained also of these three small dictionaries, and grouped them with the 'Imperial.' Our opinion and the decree of the court below, pursuant to the mandate, adopted this classification and awarded against them the same relief as given against the Imperial. Pending the accounting below, the plaintiff applied to this court for leave to file in the court below a supplemental bill, resting upon the theory that these three small dictionaries were not, in truth, revisions of the original, copyright-expired Webster, but were mere reprints of an English dictionary, the 'Twentieth Century.' We gave this permission, the bill was filed, and the master, by his confirmed report, found the facts to be in accordance with the plaintiff's claim. Upon this basis plaintiff now urges that defendants should not be allowed to use the name 'Webster' as to these dictionaries at all, because they are not Webster's dictionaries; that the foundation of the modified right to use the word awarded to the defendants as to the Imperial was the fact of sufficient identity between the Imperial and the 1847 copyrighted book; and that, with this support removed, nothing remains save the fraud accomplished by using the name to deceive the public which is familiar with that secondary meaning of 'Webster's,' indicating plaintiff's publications-- the result stated by Judge Dallas, in Singer v. Hipple (C.C.) 109 F. 152, where he says:

'Consequently the defendant's employment of the word * * * can have but one result, and that is not to correctly identify the thing itself, but to mislead the public as to its source.'

We are satisfied to dispose of the error alleged in this respect without examining the sufficiency of the argument just stated. Plaintiff's effort to reshape the litigation as to these three small dictionaries is belated. No satisfactory reason appears why the fact that these dictionaries are so nearly identical with the 'Twentieth Century' and so far removed from the 1847 Webster's was not observed long before. With ample opportunity for knowing this fact, plaintiff was satisfied to file this bill, resting on the inconsistent theory that these dictionaries were like the Imperial, which had been adjudged to be a revision of the 1847 Webster's, and to prosecute the case on that theory through our courts for four years. The new theory is so obviously an afterthought, designed to overcome the partially disappointing construction which we gave to the decree in the First circuit, that only an extraordinary case of thwarted diligence in making an earlier discovery and of sharp injustice otherwise resulting would justify upsetting the formerly accepted basis of litigation. Applying this principle, and without going further, the decree below in this respect should be affirmed.

It is quite obvious that our mere permission to file a supplemental bill in the court below did not, in any way, commit us or bind that court as to the rightfulness of the new claims sought to be presented.

2. A distinct question exists as to one small dictionary published by defendants, 'Webster's Intercollegiate.' The original bill in this circuit asked an absolute prohibition of the use of this composite name, as being a manifestly fraudulent imitation of the long-established name of one of plaintiff's publications, 'Webster's Collegiate Dictionary.' The issue made on this point is one of the things expressly reserved in our former opinion; and, upon this issue, the master found and reported:

'That the name 'Intercollegiate' was adopted by defendants as a name for this dictionary, with the intention of using it to mislead and deceive purchasers. I find therefore the name 'Intercollegiate,' as used by defendants, is, of itself, a violation of complainant's rights.'

Upon exceptions, this finding was confirmed; but, in the final decree, completely formulating the injunction, this subject was not mentioned.

Not only would we be strongly inclined to accept the concurrent finding of the master and the district judge, but we think they were right. 'Webster's Collegiate Dictionary' was published under that name by the Merriam Company, in 1898. In its special field it became well known and largely used. The defendants' 'Webster's Intercollegiate Dictionary' was published in 1907. It was of the same general size, form, and style, and intended for the same class of purchasers. It is true enough that 'Collegiate' is inherently descriptive; but whatever doubts there might be about the propriety of attributing a secondary meaning to 'Webster's Dictionary' alone cannot extend to the collocation of the three words, 'Webster's Collegiate Dictionary.' It is the natural inference, as it is the finding of the master, that during the period of nine or ten years this phrase would come to be taken as referring to the Merriam book. It was the only one of that name, and it was one upon which--though this is probably not important-- the copyright had not expired; and it is a fair assumption that defendants could have only one purpose in rejecting the many names appropriate for a book of this particular size and utility and adopting the one which so clearly would produce an impression that it was the well-known book of almost identical name. Such difference as there is between 'Collegiate' and 'Intercollegiate' only indicates the desire to vary without distinguishing. We think the injunction should forbid the defendants from using the title 'Webster's Intercollegiate Dictionary' upon or in connection with any book of the general class of the Merriam 'Webster's Collegiate Dictionary.'

3. The defendants' appeal is based on the position that they performed their full duty by printing their names in the ordinary manner upon the title page of their book as its publishers, and that they ought not to be required to employ any notice affirmatively calling attention to the fact that their book is not the Merriam book. Since it was expressly adjudged in the suit in the First circuit that this very notice must be used, and we have held that all things covered by that judgment are res judicata in this suit, and since, by our two previous opinions, the notice has been required in this case, we might well pass this subject (as to the Imperial) without further discussion, although our power to reach a different conclusion at this time may be conceded. Chesapeake, etc., Co. v. McKell (C.C.A. 6) 209 F. 514, 516, 126 C.C.A. 336. However, defendants' present counsel have elaborately argued the meritorious question, relying especially upon recent decisions adverse to the Merriam Company (Merriam Co. v. Syndicate Co. (D.C. and C.C.A. 2) 207 F. 515, 125 C.C.A. 177; Id., 237 U.S. 618, 35 Sup.Ct. 708, 59 L.Ed. 1148); and we think proper to consider it somewhat further.

We reached the conclusion (198 F. 375, 117 C.C.A. 245) that the decree in the First circuit rests at last on the theory that the name 'Webster's Dictionary' not only had its primary meaning of reference to the edition of 1847, upon which the copyright had expired in 1889, and to earlier ones but that, as early as 1904, when defendants' publication began, the term had acquired a secondary meaning as indicating the line of dictionaries then published by the Merriam Company. The tenability of this theory has been doubted; and, although the requirements of the present situation are fully met when...