West Pub. Co. v. Edward Thompson Co.

• Decision Date: 07 March 1910
• Docket Number: 114.
• Citation: 176 F. 833
• Parties: WEST PUB. CO. v. EDWARD THOMPSON CO.
• Court: U.S. Court of Appeals — Second Circuit

176 F. 833

WEST PUB. CO. v. EDWARD THOMPSON CO.

No. 114.

United States Court of Appeals, Second Circuit.

March 7, 1910

On Petition for Rehearing, March 21, 1910.

William B. Hale, Henry E. Randall, and Edmund Wetmore, for appellant.

Walter Large and Frank P. Prichard, for appellee.

Before LACOMBE, WARD, and NOYES, Circuit Judges.

WARD Circuit Judge.

April 13, 1903, the complainant, a corporation and citizen of the state of Minnesota, filed the bill against the defendant, a corporation and citizen of the state of New York, charging it with infringement of copyright. The complainant is a publisher of reports of cases and of legal digests. It began with the year 1879 the publication of weekly reporters, which gradually grew into what is known as the 'National Reporter System,' covering the decisions of all the highest courts throughout the United States. It also published all the decisions of the United States District and Circuit Courts from 1789 to 1880 in a series under one alphabet called the 'Federal Cases.' It also became the owner of the United States Digests of decisions known as the First and the New Series, and it published a digest of the Federal Cases, a digest of the Federal Reporter, the American Annual Digest of all the decisions throughout the United States, and the Century Digest, which includes the decisions of all courts throughout the United States from 1658 down to 1896 under one alphabet.

Each weekly number of Reporters was copyrighted. Then several such numbers were aggregated into a volume which was copyrighted. The headnotes of the cases in the National Reporter System were gathered into monthly or bimonthly digests, and these again into annual or semiannual digests; these again into the American Annual Digest; and these again down to 1896 with the syllabi of the United States Digests, First and New Series into the Century Digest under one alphabet.

Speaking generally, these books, consisting of some 600 volumes of reports and 99 volumes of digests, were copyrighted.

The defendant from the year 1887 was the publisher of encyclopedias composed of articles alphabetically arranged intended to cover the whole body of the law, known as the 'American and English Encyclopedia of Law, First Edition,' 'Encyclopedia of Pleading and Practice,' and 'American and English Encyclopedia of Law, Second Edition,' comprising in all 78 volumes. When this suit was begun, the American and English Encyclopedia of Law, First Edition, the Encyclopedia of Pleading and Practice, and 23 out of 30 volumes of the American and English Encyclopedia of Law, Second Edition, had been published.

A fuller statement of the facts of the case and reference to the authorities may be found in the careful and able opinion of Judge Chatfield, reported in 169 F. 833.

The defendant contends that the complainant has largely lost the benefits of its copyrights by the method in which it has published its books. This makes an examination of the copyright statutes necessary.

Rev St. U.S. Sec. 4956 (U.S. Comp. St. 1901, p. 3407), provides that no one shall be entitled to a copyright unless he shall on or before a certain day deliver to the Librarian of Congress a printed copy of the title of the book and two copies of the book.

Act June 18, 1874, c. 301, Sec. 1, 18 Stat. 78 (U.S. Comp. St. 1901, p. 3411), provides that no person shall maintain an action for infringement of copyright unless he shall have given notice thereof by inserting in the several copies of every edition, as, for example, 'Copyright 18-- by A.B.'

Section 4954 requires a new copyright to be taken out for a further term of 28 years.

Section 4959 requires one copy of every subsequent edition containing substantial changes to be delivered to the Librarian of Congress. The provision that books of foreign authors 'heretofore' published of which new editions shall thereafter appear are entitled to copyright was enacted by Act March 3, 1891, c. 565, 26 Stat. 1110 (U.S. Comp. St. 1901, p. 3417), section 13 of which extended the benefit of our copyright laws upon certain conditions to foreigners. Prior to that act no foreign author or assignee of a foreign author could avail of our copyright law. Yuengling v. Schile (C.C.) 12 F. 97; Fraser v. Yack, 116 F. 285, 53 C.C.A. 563.

Taken together, we think these provisions show that there can be but one copyright for the same book for the first term of 28 years. It follows that if there may be a copyright for a subsequent edition the notice of copyright given in it must be either of the date of the original or of the date of the subsequent entry. It would certainly be fair to authors and to the public if improvements of and additions to a copyrighted book should be regarded as mere incidents of the original work covered by the original copyright, so that notice of it only need be given. In this way the public would be relieved of the burden and risk of ascertaining the time at which the copyright of the original work and the copyright of the additions, respectively, expired. No new copyright of the same book because of alterations or additions apparently was contemplated by section 4959.

It says nothing about recopyright, and, instead of a deposit of two copies of the altered work, as required for copyright, requires but one, evidently as a means of identifying it with the original copyrighted book. This view is corroborated by the exception it contains in favor of foreign authors whose books, not copyrightable if published before March 3, 1891, were allowed to be copyrighted if added to or improved after that date. Still, 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, and held that the notice to be printed in them should be of the date of entry of the improved edition without any reference to the date of original entry. In that case, which was for infringement of editions of Wheaton's Elements of International Law issued in 1836, 1846, 1855, and 1863, it was objected that the contents of the earlier editions had become public property because no notice was given in the later, of the entry for copyright of the earlier, editions. The learned justice said:

'Subsequent editions without alterations or additions should have the same entry, because they find their only protection in the original copyright; but second or subsequent editions, with notes or other improvements, are new books, within the meaning of the copyright acts, and the authors or proprietors of the same are required to 'deposit a printed copy of such book,' and 'give information of copyright being secured,' as if no prior edition of the work had ever been published; and the term of the copyright as to the notes or improvements is computed from the time of recording the title thereof, and not from the time of recording the title of the original work. Copyrights, like letters patent, afford no protection to what was not in existence at the time when they were granted. Improvements in an invention not made when the original letters patent are issued are not protected by the letters patent, nor are the improvements in a book not made or composed when the printed copy of the book was deposited and the title thereof recorded as required in section 4 of the copyright act. Protection is afforded by virtue of a copyright of a book, if duly granted, to all the matter which the book contained when the printed copy of the same was deposited in the office of the clerk of the District Court, as required by section 4 of the copyright act; but new matter made or composed afterwards requires a new copyright, and, if none is taken out, the matter becomes a public property, just as the original book would have become if a copyright for it had never been secured. Publishers may be in the habit of inserting more than one notice in new editions, but there is no act of Congress prescribing any such condition.

'Whenever a renewal is obtained under section 2 of the copyright act, the requirement is that the title of the work so secured shall be a second time recorded, and that the applicant must comply with all the other regulations in regard to original copyrights; but there is nothing in any act of Congress to show that each successive edition must specify the date of the original copyright, as contended by the respondents. Any tendency to mislead the public cannot be successfully predicated of a copyright in due form of law, where it appears that the party who secured it complied with all the conditions prescribed in the copyright act. This is all that need be remarked in reply to the suggestion of the respondents upon that subject.'

This view, obviously more in favor of authors and publishers than of the public, probably caused the practice of the Librarian of Congress to recopyright copyrighted books which have been added to or improved in...