Sieff v. Continental Auto Supply

• Decision Date: 16 May 1941
• Docket Number: No. 373.,373.
• Citation: 39 F. Supp. 683
• Parties: SIEFF et al. v. CONTINENTAL AUTO SUPPLY, Inc., et al.
• Court: U.S. District Court — District of Minnesota

39 F. Supp. 683

SIEFF et al. v. CONTINENTAL AUTO SUPPLY, Inc., et al.

No. 373.

District Court, D. Minnesota, Fourth Division.

May 16, 1941.

Brill & Maslon, of Minneapolis, Minn., for plaintiff.

Charles C. Reif, of Minneapolis, Minn., for defendant.

JOYCE, District Judge.

This matter is before the court on the motion of the plaintiffs for summary judgment, or, in the alternative for an adjudication of as many of the issues as may be adjudicated pursuant to the motion, in accordance with the provisions of Rule 56 of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c.

The complaint alleges in substance for a first cause of action the infringement of the copyright on plaintiffs' catalog entitled "Dealers' Confidential Price List No. 470" by the publication and placing upon the market by the defendants of a book entitled "1940 Wholesale Summer Catalogue", which said book it is alleged was by said defendants knowingly and intentionally copied largely from plaintiffs' copyrighted book; and for a second cause of action the infringement by said publication of the copyright on plaintiffs' catalog entitled "Dealers' Confidential Price List No. 471". The defendants in their answer make a general denial of the charges of infringement set forth in the complaint. Both parties are engaged in the business of the sale and distribution, among other things, of automobile supplies, parts, tires and accessories, with respective principal places of business at Minneapolis, Minnesota.

Plaintiffs' motion is supported by various affidavits. Defendants filed counter-affidavits.

It appears from the affidavits that it is the practice of plaintiffs to issue a new catalog of the same general character every three months, changes being made as the necessities of the stock and trade suggest, though each succeeding catalog is in large part a duplication of preceding issues. Plaintiffs' affidavits list over 100 items appearing in their copyrighted catalogs 470 and 471 which it is alleged have been copied without permission by defendants in their 1940 Summer Catalogue. There seems to be no question but that these items were substantially copied by the defendants from the plaintiffs' copyrighted catalogs but as a defense to their action defendants contend that with the exception of two items, reference to which will be hereafter made, all of the material copied had appeared either in an uncopyrighted catalog, No. 468, published by plaintiffs prior to the issuance of Nos. 470 and 471, or in a catalog issued without copyright notice subsequent to the publication of Nos. 470 and 471, namely No. 472, and that therefore the matter had been dedicated to the public prior to the publication of defendants' book, and no infringement occurred.

There is dispute between the parties as to the respective dates of publication of defendants' summer catalog and plaintiff's No. 472, and while plaintiffs in their brief state that "there is nothing in the affidavits of the defendants which states unequivocally * * * that plaintiffs' catalog No. 472 was published before the defendants' catalog", the affidavits do disclose that plaintiffs' catalog No. 472 was not circulated until the 25th day of June, 1940, and that defendants' Summer Catalogue was "first mailed and thus first published on July 29, 1940".

It was further established by the affidavits on behalf of defendants that all but some thirty of the items in question did appear in plaintiffs' uncopyrighted catalog No. 469 and were therefore dedicated to the public prior to the publication of copyrighted catalogs No. 470 and No. 471. This is conceded by plaintiffs, so that we are now concerned only with the validity of the copyright on the remaining thirty items, which first appeared in either 470 or 471 and with respect to which the defendants contend that since they were republished in uncopyrighted catalog No. 472, defendants were free to copy them or any other matter found in such catalog even though the items involved had been previously protected by the copyright of catalogs 470 and 471, and that plaintiffs have lost any right of action which they may have had upon matter appearing in such copyrighted catalogs by failure of notice in No. 472.

Plaintiffs base their right of action largely upon the provisions of Section 6 of Title 17, U.S.C.A., which reads as follows:

"Copyright on compilations of works in public domain or of copyrighted works; subsisting copyrights not affected. Compilations or abridgments, adaptations, arrangements, dramatizations, translations, or other versions of works in the public domain, or of copyrighted works when produced with the consent of the proprietor of the copyright in such works, or works republished with new matter, shall be regarded as new works subject to copyright under the provisions of this title; but the publication of any such new works shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof, or be construed to imply an exclusive right to such use of the original works, or to secure or extend copyright in such original works Italics ours." taking the position that catalog No. 472 was merely a new edition of copyrighted catalogs 470 and 471 with comparatively minor changes and under Section 6 would be defined as a "new work", and that the publication of No. 472 without copyright notice "did not affect the force or validity of the subsisting copyright upon the matter employed or any part thereof"; in other words, that there is a subsisting copyright upon the thirty items here involved which under the language of the underlined portion of Section 6 was not lost by reason of the fact that they were contained in the new publication; that by Section 6 there is a permissive right to copyright the "new work", but that the publication of a new work without copyright cannot be considered as an abandonment of a copyright to another work.

The defendants have no quarrel with plaintiffs' claim that No. 472 would properly be regarded as a new work, subject to copyright, and I likewise agree with such interpretation of Section 6 as applied to the facts in this case. "Mr. Justice Clifford at Circuit in the leading case of Lawrence v. Dana, 4 Cliff. 1, Fed.Cas. No. 8,136, while holding that there could be but one copyright, treated subsequent editions with notes or improvements as new books subject to copyright." West Publishing Company v. Edward Thompson Co., 2 Cir., 176 F. 833, 836.

Defendants strenuously urge, however, that the validity of the subsisting copyright upon the material taken from catalogs 470 and 471 and used in 472 cannot be maintained and secured if notice of such copyright is not carried in the new work.

It will be noted that Section 6 does not concern itself with notice, but in order to keep the copyright alive heed must be given to the provisions of the Act regarding notice contained in Section 9 of Title 17, U.S.C.A. which are as follows: "Any person entitled thereto by this title may secure copyright for his work by publication thereof with the notice of copyright required by this title; and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor, except in the case of books seeking ad interim protection under section 21 of this title."

The rule is summarized by the court in Universal Film Mfg. Company v. Copperman, D.C., 212 F. 301, in the following language: "Publication with notice of copyright is the essence of compliance with the statute, and publication without such notice amounts to a dedication to the public sufficient to defeat all subsequent efforts at copyright protection."

Also, as stated by the court in the case of Smith v. Bartlett, D.C., 18 F.Supp. 35, 36, 37:

"Copyright holders are given certain monopolistic rights by statute, but they can be maintained only by complying with the terms of the statute, which provides, as to notice, for the benefit and protection of third persons, that the notice of copyright shall be affixed to each copy published or offered for sale in the United States by authority of the copyright proprietor. * * *

"If a copyright owner desires to preserve his monopoly he must put the public on notice that he claims it. By a publication without such notice he is presumed to waive his right and to give his work to the public. Goes Lithographing Co. v. Apt Lithographic Co. (D.C.) 14 F.Supp. 620; Thompson v. Hubbard, 131 U.S. 123, 9 S. Ct. 710, 33 L.Ed. 76."

While under Section 6, as plaintiffs contend, the original matter copyrighted retains the protection of the copyright when carried into a "new work", it seems to me that the copyright owner loses his rights to such protection when he neglects to include the prescribed notice in the new edition, and would be deemed by his action to have abandoned his copyright, regardless of his insistence that it was not his intention to so abandon it. A stranger to the situation who had no knowledge of any previous catalogs, on seeing uncopyrighted 472 could feel free to copy any or all matter therein contained since he would have no notice of the copyright on the portions taken from the previously copyrighted edition.

In Thompson v. Hubbard, 131 U.S. 123, 9 S.Ct. 710, 720, 33 L.Ed. 76, Thompson possessed a copyright on his book which he assigned to Hubbard and Ayer, Hubbard later buying Ayer's interest. Thompson's publication of the book was held to be with a correct notice. The notice used in publication by Hubbard was held to be insufficient. Later Thompson with full notice of the copyright published the book, resulting in Hubbard's suing him for infringement. In denying Hubbard relief, the Supreme Court said:

"It is not enough that Thompson, while he owned the copyright, gave the required notice in the copies of every edition he published while it was his copyright. The inhibition of the statute extended to...