WH Anderson Co. v. Baldwin Law Pub. Co.

• Decision Date: 30 June 1928
• Docket Number: No. 4689.,4689.
• Parties: W. H. ANDERSON CO. v. BALDWIN LAW PUB. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

27 F.2d 82 (1928)

W. H. ANDERSON CO. v. BALDWIN LAW PUB. CO.

No. 4689.

Circuit Court of Appeals, Sixth Circuit.

June 30, 1928.

COPYRIGHT MATERIAL OMITTED

Murray Seasongood, of Cincinnati, Ohio (Robert P. Goldman, of Cincinnati, Ohio, on the brief), for appellant.

Newton D. Baker, of Cleveland, Ohio, for appellee.

Before DENISON, MACK, and MOORMAN, Circuit Judges.

MACK, Circuit Judge.

Injunction, surrender of plates, accounting of profits, and damages for infringement of copyrights were sought by and denied to plaintiff, appellant. Defendant's one-volume work, Throckmorton's Code of Ohio, published in 1921, with appendix thereto of 1923, is alleged to be an infringement of plaintiff's copyrights of Page & Adams' seven-volume Annotated General Code (1912) and four-volume supplement (1916), of the Topical Index to the official General Code (1910), of the unannotated first three of the four-volume Page & Adams Compact Code (1920), and of volumes 9 and 10 of Page's Ohio Digest (1915).

Infringement is charged in three respects: (1) The copying or paraphrasing of annotations and indices; (2) the use of plaintiff's analyses of cases and grouping of material; and (3) the taking of citations and/or duplicate citations from plaintiff's books, with or without checking them up, either as a substitute for or as a supplement to an independent survey of the sources. As to the first two methods of infringement, while the facts are denied, the conclusion of infringement as a matter of law is conceded, if the facts be established as alleged. In respect to the third, there is disagreement as to the legal conclusion to be drawn from the facts, but a partial agreement as to the facts themselves.

After three weeks of trial in court, at the suggestion of the District Judge and with the consent of the parties, the matter was referred to a special master, to ascertain and report his findings of fact and conclusions of law. Under this reference, he properly heard no witnesses, and based his report on the testimony taken in court and on his examination of the voluminous exhibits prepared by each party, and themselves largely based upon the volumes alleged to be infringed upon and infringing. Plaintiff listed over 150 examples of alleged similarities or identities in expression, content, omissions, and mistakes occurring in the works of the two parties; many additional examples have been pointed out in briefs and arguments on this appeal. The special master was not directed to determine the question of damages; the court had declined to consider evidence thereon until the question of infringement had been determined, a course to which counsel agreed. The matter of damages was to come up for later consideration by the court, in case it should become material.

The master reported that there had been a use of citations in plaintiff's annotations to the Code, but merely to check up the results of defendant's own researches; this, in his judgment, did not constitute infringement. As to the "Topical Index," he reported that plaintiff had no copyright therein. He further found no infringement in the taking of duplicate citations and case histories from Page's Ohio Digest. Identities between the defendant's index and the index of the 1916 Supplement, the copyright in which is conceded, he ascribed to legitimate copying from state pamphlets which had reproduced this index material. While he found instances of direct copying from plaintiff's annotations, they were not sufficient in number or importance, relatively to the entire work, to justify, in his judgment, either an injunction or damages. He recommended, therefore, that the bill be dismissed. The District Judge overruled plaintiff's exceptions and confirmed the master's report.

Plaintiff relies upon both direct and circumstantial proof of infringement. Of the former there are two kinds: The testimony of operatives at the printing plant where "Throckmorton's Code" was originally published, and the cross-examination of Baldwin, defendant's president, Throckmorton, the editor of its volume, and the latter's legal assistants. The circumstantial evidence consists of the examples of similarity and identity.

In 1923, defendant herein sued the Breitenbach Linotyping Company, its printer, in the Southern District of Ohio for infringement of the alleged copyright of "Throckmorton's Code." The defense was invalidity, in that the Code itself infringed the present plaintiff's copyrights. After testimony on both sides, a settlement was made at the suggestion of the trial judge; his informal views against the present defendant were, therefore, not embodied in a formal opinion.

At the present trial, four employees of the Breitenbach Company repeated their former testimony that about 25 per cent. of the copy for the Throckmorton Code, upon which they had worked, consisted of clippings set up in the distinctive type of the Page & Adams volumes. Nine of the defendant's editors, practically the whole staff, categorically denied that any clippings from Page & Adams were ever pasted upon the cards sent to the printer. The only clippings, they said, were from the 1890 Smith & Benedict Annotated Statutes, the copyright of which, owned by plaintiff, was in force when defendant began its preparation for, but expired before it had printed, the alleged infringing Code. Liberal use of Smith & Benedict is not only conceded, but asserted by defendant.

Several lines of attack upon the Breitenbach witnesses are pursued. Two of these witnesses, sisters of Breitenbach, are charged with bias; four, who declared that sometimes the card came to the printer with more than one clipped annotation to the card, are contradicted by Throckmorton and Baldwin, who testify that it was the invariable policy to have a separate card for each annotation. Baldwin, however, admitted a departure from this invariable policy in one of his other publications. The cards were not produced. Plaintiff's witnesses testified that they had been returned to defendant; this defendant denied. A great mass of evidence as to the dealings between the parties and the custom of the printing trade was introduced on this point. It is not conclusive either way. The special master found a slight preponderance in favor of the defendant.

On the entire evidence in relation to the Breitenbach controversy, as it affects the present case, we are of the opinion that it cannot be deemed of any considerable weight, much less decisive, for either side.

On behalf of defendant, Baldwin testified that he had spent a good part of his time between 1917 and 1920 in preparing a "plant." He described his method as follows: First, he took a 4×6 card for every subsection of the Ohio Code as amended to date, and pasted upon each card the appropriate clipping from the official statutes. Then he began to clip from Smith & Benedict (before Page & Adams, the standard Annotated Statutes) all annotations and cross-references which were still timely, pasting them on cards to be filed with the proper Code section card. He admitted the use under oral license of a copyrighted volume of Ohio Annotated Statutes published by Bobbs-Merrill Company. Finally he testified that he went through the Ohio Supreme Court reports which postdated the publication of Smith & Benedict, inspecting the "tables of statutes construed" and jotting down on his cards each reference there found.

In 1920, witness Throckmorton, a professor of law at a prominent Ohio university law school, and a stockholder of defendant, was engaged to complete the work. He associated with himself one faculty colleague and a number of students and recent graduates of high academic standing; later he received the assistance of the dean of the school. There is much in the record attesting to the high reputation of the members of this editorial staff. All the editors, it is testified, were warned of the dangers of copyright infringement through improper use of Page & Adams, and were thoroughly familiar with Throckmorton's views of copyright law.

According to Baldwin, his part of the annotations was very meager. In the Breitenbach Case, as he conceded, he had put it at possibly 10 per cent. It is significant that in the testimony in the Breitenbach Case as to the preparation of defendant's volume, there is no mention of the use of the Bobbs-Merrill volume or of the Ohio state reports.

Prof. Throckmorton described his method as follows: Any annotations in the "plant" as it came to him, which seemed satisfactory, were left undisturbed. This, however, was not frequent. If a note was unsatisfactory in form or content, the editors were instructed to refer to the original case and syllabus, and then to rewrite it. Only after this had been done for all the material turned over to them, were the editors to examine Page & Adams, both the original Code and Supplement, to see what cases were there cited that were not in the "plant." With a list of such cases, they were again to examine the reports and write up original notes. Most of the editors testified that they followed the prescribed method. But one admitted that at times he read through the annotations in Page & Adams, not merely to get the list of cases, but to see what Page said of any of them which he had failed to understand. The work of this annotator was found by the special master to have been one of the three portions of defendant's publication in which most of the inexplicably close parallelisms with Page & Adams appear. The two annotators of the other portions alluded to did not testify.

It was further testified that, after about one-third of the work had gone on in this way, a change was made; but no satisfactory reason therefor is offered. The staff was ordered to stop using Page & Adams' citations. Prof. Throckmorton testified that thereafter he checked up the admittedly incomplete list of citations in the "plant" with the Bobbs-Merrill volume, originally a...