Sub-Contractors Register v. McGOVERN'S C. & B. MANUAL

• Decision Date: 02 August 1946
• Parties: SUB-CONTRACTORS REGISTER, Inc., v. McGOVERN'S CONTRACTORS & BUILDERS MANUAL, Inc., et al.
• Court: U.S. District Court — Southern District of New York

69 F. Supp. 507

SUB-CONTRACTORS REGISTER, Inc., v. McGOVERN'S CONTRACTORS & BUILDERS MANUAL, Inc., et al.

District Court, S. D. New York.

August 2, 1946.

Satterlee, Warfield & Stephens, of New York City (James F. Dwyer, of New York City, and William R. Distasio, of Brooklyn, N. Y., of counsel), for plaintiff.

Henry G. Littau, of New York City, for defendants.

CAFFEY, District Judge.

This is a motion by plaintiff upon the pleadings and supporting affidavits, under Rule 56 of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, for summary judgment. The complaint charges defendants with having infringed plaintiff's copyright of a book, entitled "Contractors Register", copyrighted on March 6, 1945, and with unfair competition in copying plaintiff's book and appropriating plaintiff's color scheme for the cover of its book. The complaint seeks a permanent injunction, an accounting of plaintiff's damages and defendants' profits, an allowance of attorney's fees, and the destruction of all infringing books and the plates, molds, etc., used in printing them.

Since 1913 plaintiff and its predecessor have published annually, early in each year, a selective compilation, or directory, of various individuals and corporations connected with the building and construction trades. The 1945 edition covers such trades in New York, New Jersey, Connecticut, Boston, Philadelphia, Washington, and adjacent territories. Of approximately 40,000 such individuals and corporations in the New York and New Jersey areas which might have been included in such a directory plaintiff selected 7910 in 1945 and published their names, addresses, telephone numbers and, in many cases, their postal zone numbers, under various classifications, such as General Contractors, Plumbing Contractors, Elevators, etc. Fees were charged for such listings and also for display advertisements. The books were distributed free to those who, in plaintiff's opinion, would be interested, and in 1945 and 1946 more than 7,500 copies were so distributed.

Defendant McGovern had been plaintiff's general manager for about seven years prior to January, 1944, when he left such employment, in order, he says, "to organize and publish my own publication, McGovern's Manual, which is competing with plaintiff's directory for the advertising business." In 1945 and 1946 defendant, McGovern's Contractors and Builders Manual, Inc., McGovern's company, published a directory similar to plaintiff's which was entitled in 1945 "McGovern's Manual" and in 1946 "McGovern's Contractors and Builders Manual", James M. McGovern appearing on the title page of each as the editor. Each of these two publications covers only New York and New Jersey. Each is of the same size and general internal arrangement as plaintiff's directory of the previous year. Each contains similar classifications of the building and construction trades. Although each has fewer pages than plaintiff's directory of the previous year, it is apparently due to fewer classifications and fewer advertisements.

In defendant's 1946 directory there are 135 classifications in which are listed the names and members of firms in the New York and New Jersey areas and these are exactly the same as in plaintiff's 1945 directory. In other classifications the names and members of firms listed are approximately the same as in plaintiff's 1945 directory, a few having been added and a few omitted. The total listings in the New York and New Jersey areas are 7890 as against 7910 in plaintiff's 1945 directory.

In plaintiff's 1945 directory, there are 270 errors, such as mis-spelt names, wrong names, addresses, telephone or postal zone numbers, and concerns out of business or deceased, all of which are found in defendants' 1946 directory. One is the name of a musician, erroneously listed by both as a plastering contractor.

In defendant's 1946 directory there are 50 display advertisements which are identical in language and typography (style of type and set-up) with the same advertisements in plaintiff's 1945 directory. It would seem that defendants photostated, or otherwise reproduced, these advertisements from plaintiff's 1945 directory, for plaintiff's general manager swears that, with a few minor exceptions, they were designed, set up and plates prepared by it; no copy or plates being furnished it by the advertisers.

Many similar errors and identical advertisements appeared in defendant's 1945 directory when compared with plaintiff's 1944 directory.

Since 1930 plaintiff's directory has been published with a blue cover and orange-yellow lettering thereon. It came to be called the "Blue Book". Defendant's 1945 directory, its first one, was published with a green cover, but it was changed in 1946 to a blue cover, of almost the same shade as plaintiff's, with gold lettering. This 1946 book is very similar in appearance to plaintiff's 1945 book.

In his opposing affidavit McGovern swears that he did not copy a single name from plaintiff's directory, that his directory is entirely original with him and that he "employed a staff of workers who compiled the names from the Classified Directories of the Telephone Company and from Daily Building Reports which contained names, addresses and telephone numbers of firms in the building and construction industries, such as, Brown's Daily Building Reports, Dow's Daily Building Reports and others." He also points out that the Classified Telephone Directory contains classifications which are the same as those in both his book and the plaintiff's, and also lists of names thereunder which are very similar to those in both books. He says that all this explains why the list of names in his Manual are similar to the list of names in plaintiff's book.

As to the errors above referred to, all that he says is that he is prepared to prove that they are only changes of address or telephone numbers that took place before the change was noted in the telephone book. As to copying the advertisements he says only that, if those in defendant's book are similar to those in plaintiff's book, it is because the advertisers requested it and, in many cases, owned the cuts used and loaned them to both defendants and plaintiff.

It will be noted that he makes no attempt to explain how the errors in postal zone numbers (the Classified Telephone Directories do not contain postal zone numbers), mis-spelt or wrong names, or concerns out of business or deceased, occurred in defendant's book. Nor does he explain how it happened that, in cases where the advertisers did not furnish the cuts to both, the advertisements in his book are identical with those in plaintiff's book in every repect. He makes no denial that he photostated, or otherwise reproduced, those advertisements. The reason for the change from a green to a blue cover is said to be that he could not get green, although he had ordered it, because of war-time shortages in material, which seems rather implausible.

It can hardly be said that what is stated in this opposing affidavit rebuts the claim of unfair competition or raises any genuine issue of fact.

Plaintiff claims that these identities in the names and numbers of firms listed, taken together with the errors repeated and the advertisements reproduced, indicate clearly that defendants in their 1946 directory merely copied plaintiff's 1945 directory and did no original research or investigation in compiling their 1946 directory.

It has frequently been held in cases involving alleged infringements of copyrighted directories, or other compilations of facts and figures, that reproduction in the alleged infringing book of errors, omissions and peculiarities appearing in the copyrighted book constitute the strongest evidence of literary piracy, not only of such errors and peculiarities but also of the other portions of the copyrighted book.

In List Publishing Co. v. Keller, C.C., S.D.N.Y., 30 F. 772, 774, complainant, the proprietor of a copyrighted "society" directory, entitled "The List", complained that it was infringed by defendant's directory, entitled "The Social Register". In granting a preliminary injunction Judge Wallace, sitting in this district, said:

"In a case like this, when a close resemblance is the necessary consequence of the use of common materials, the existence of the same errors in the two publications affords one of the surest tests of copying. The improbability that both compilers would have made the same mistakes, if both had derived their information from independent sources, suggests such a cogent presumption of copying by the later compiler from the first that it can be overcome only by clear evidence to the contrary. Mawman v. Tegg, 2 Russ. 393; Spiers v. Brown, 31 Law T. 16; Lawrence v. Dana, 2 Amer.Law T. (N.S.) 402.

"The complainant relies upon this criterion here. The List contains a selection of about 6,000 names and addresses of persons residing in New York city out of...