WEST
CO. V.LAWYERS' CO-O;E'ERATIVE PUBLISHING (',().
265
WEST PUBLISHING
CO. v. LAWYERS' CO· OPERATIVE
PUBLISH-
JNG.CO. (Circuit Court, N. D. New York. January 2, 1893.) No. 6,106. CoPYRIGHT-LAW REPORTS AND DIGESTS-INFRINGEMENT-'INJUNCTION.
On motion for a preliminary injunction in a suit for infIingement of complainant's copyrights in law reports :lnd in a digest thereof, by the pUblication by d.,fendant of a similar digest, the instances of alleged piracy Ilointed out amounted to less than 1 per cent. of defendant's bo,Jk, and while, as to some of them, identity of language raised a presumption, well-nigh conclusive, of copying from complainaut's books, defendant con· tended, as to others, that both parties had copied from the opinions di· gested, and denied any piracy. It appeared that the parts of defendant's digest, l&:ued semimonthly during the year, had been sent to complainant, who was a subscriber thereto; that the volume for the year, compiled from said parts, was printed and ready for delivery; and that complainant had supplied its customers with its own digest for the year, HeW that, as the determination of the qUllstion of infringement' would involve a long and complicated comparlson, and an injunction meantime would work ir, reparable injury to defendant, out of proportion to the injury to complainant from' a refusal thereof, the temporary stay previously granted should be vacated, and defendant be restrained only from future infringement, and from selling its digeSt to an.v persons other than its regular subscritiers and those with whom·it had previously contracted to deliver the same; defendant to give bond to keep' IUMOunt of all digests sold, and to pay' such damages as might be awarded to complainant.
In Equity. Suit by the West Publkhing Company against the Lawyers' Co-Operative Publishing Company for infringement of copyrights. On motion for preliminary injunction. Granted, with leave to defendant to continue to furnish the book alleged to infringe to regular subscribers and others with whom it had contracted to de· liver it, upon bond to keep account of sales, and to pay. such damages aa might be awarded to complainant. The bill set forth complainant's copyrights upon certain volumes of law reports and weekly advance sheets, or parts thereof, (,Jdited and published by it in the :rears 1891 and 1892, and upon the dIgest covering said reports, entitled "The American Digest, Annual, 1892," and the monthly advance sheets or parts of said digest;. also edited and publiShed by complainant in said years, and alleged that defendant, in its business of publishing and selling law books, published and sold a volume, annually, called the "General Digest," of whIch it published advance shEets and numbers semimonthly, which digest and advance numbers were publishf'd and sold in competition wIth the said copytight books and advance numbers or books of complainant, inclUding its Annual and Monthly Digests; that kn,)wing that the syllabi or headnotes of complainant were made with special reference to their adaptability and fitness for use as digest items, and that complainant had been so using and intended so to use said syllabi or headnotes, did at different tillles during the latter portion of the year 1891 and the year 1892, witllOut tlle consent of COUlplainant, reprint, publish, and sell, and did continuously since publish and expose to sale, and sell, advance numbers of their General Digest, containing statements ()f fact, syllabi, and headnotes copied from saId reports of complainant, and in particular from said advance numbers 01' books thereof, as well as fro'm said Annual and Monthly Digests. '!'he bill further alleged, on information and belief, that defendant, in preparing its General Digest for the 1892, had used and employed principally, as matter therefor, the headnotes or pointl!l issued and pUblished in its advance numbers from time to time,
REPORTER I.
vol. 53.
wh1ch headnotes or points were largely, and to a great extent, copies of and qponthe COPYl1f.ht syllabi, or. edited by:'oottIplalnant, and'pubnshed in Its volumes andadvancen'l1tnbers or books; that defendant had advertisli'd the publii:'-atlon of its General Digest for 1892, and threatened to .and was about to Issue, publish, and lieU the same, S() containing In!rIngements upon, copies of, and piracies of' the' origmal cOPY11ghl matter of c.omplaInant, to the great. injtJ.ry and irreparable damage of com· plaInant in its business; that In preparing said General Digest for pUblication, I1nd In preparing the a(iv!!;11ce numbers thereof, defendant bad substantially oopledthe helldnotes and syllabi, as previously prepared,andpubllshed by com· plainllnt; .,reSOl'ting . to the devices of transposing dauses,sentences, and [l8.ragmllhs, using. synOIlYn;ls, and milking colorable alterations, while alwaYIi repea1inJ 'the substance,' .often usblgthe exact words" and frequently even entlreheadnotes,.verbatim from said original works of in many. Instances omitting to correct even the Inaccuracies and erl'Ol'lJ,therein, and availed. Itself of the original work, method, and ldeQ8.io:llcomplainantin making, and preparIng compiaiDant's headnotes, and oaaes, witb,out foUowlng the exact used by com· pla.buu:J.t. ,'SQ. that thereby defendant was enabled to prepa.re, publlsh, and sell la,plmtecJ"pubUcations·w:lth greater_se,and at farlesll expense; that the 88ld General Dl;gest, SO about to be ljlUbllshed, and the, advance numbers thereof, intrlngement8: of, and pIramesupon,. the copyrlghtJ!lot OODllllalnank/Wd l1lal(l·oooks were;JDade and inten<i\ed·by defendant to take the, Place of, :tlnd 118h.l"/l.S possible supersede, the and advance 6spec1alJ.ythe said Annual and Monthly Digests ot CQmplllipant;., ,':' ·' " , .' With tl;).e: the ll1Jidavit of an edltorl1l.lts employ, which, besides Marges ofthe.\>1ll" had assisted lnthe of complainant's said:volumes and advance numbers, and was personally famillar with, the meUlQds ofeditlng and preparing the same, and was also famlllar with the methods of editing, reporting, digesting, and preparing by.(1,Il,fendant; that, ,the adv;mce numbers of J,lrlncipally of the headnotes of the decisl.ons reportooin the advance numbers of complaInant's' reports, and a large majority of the i eltations or references the 'statElIUents of points In ,defendant'." advance, ;numbers of General Digest; are to complaInant's reports; that digest for each year mainly composed of the same IlPWS, statements, dlgeste!i matter In advance numbers; that, ti1 a comparison and critiCal examlnationof the syllabi or head· notes publlshed In advance numbe,s'of dafE'nrlant'B diglietlvlth the syllabi 01' beadnotell made. by complainant of the Same decisions as, published in the advance numbers of complainant's Wlt;hthe opinions from wblch they were taken <II." digested" d.eponent hadasceJ.1:a,ined that defenl1Mt had 1.J1, copied the headnotes andsY:Uabi as previously preand, publlshed by cbmplainat),J;; resorting to the devices of dauBes, and psfug synonyms, and making colorable alterations, WhUe, repeating the snbsta,nce, Qtten Hsing thl! exact words of entire $enteDCes, and entireheadnotesfrQIIl the original matter of complainant, and itself of the work, methods, ,and ideas of complainant in following the language used by complalnant, but sometimes endeavoring to conceal the ,Infringement by transposition of words'snd clauses, and the use of similar, while avoiding the same, wQrds; and certl\.lnexampleB of said. JnirIngements and piracies were set forth, the orIginal collyrIght headIlotesor llyllabl of .complaInant, and the matter to Infringe the same with the further averment that were numerous other cases ,0r .instances of simUar Infringements 01' pirac1eB8scertained 0,1' discovered by depunent, by his said would more fully Inspection Qr COI\lpllrison, or otherwlseknown to and clearly appear by c9mparisoJ,1 of the advance sheets or semimonthly parts of defendant's GeneJ:s1 ptgest and 'the General Digest itseU for 1892 With volumes of the repQrts, Q1' the advance n.umbers thereof. " " ," " of On the 11164 December 23,1&92, an order to show caUSe
WEST PUBLISHING CO; II. LAWYERS' CO-OPERATIVE PUBLISHING CO.
267
1892, and staying dt'fendant in the mean time from' publishing aud sellinlX its General Digest Annual tor Um:.l. ' , .
why an injunction should not issue
WllS
granted, 'returJ:faDle December 27,
On the hearing of the return of the order to show eause, defendant read ano filed the affidavits of· the chief editor and assistant editors of the General gest, to the effect that it was the rule of defendaut company, stricll;l' enjoined. that in no case should the editors, in digesting cases and drafting digest parag'!lpilS, IT'alee any use of syllabi, headaotes, or digest .paragrapl·s in UJly publication of complainant, save where such syllabi, etc., were prepared by tho court or the judge writing the opinion, and that such rule had been strictly followed .by such editors. Defendant also read the affidavits of its treasurer to the. eff that complainant's digest, the American Digest Annual, 18'J2, ct was already published and distributed to its subscribers, and had its principal sales, while defendant's digest, the General Digest Annual, 1892, waR printed and in the hands of the binMrs, only a few hundred copies having been delivered; that complainant was a regular subscriber to defendant's semimonthly and annual digest, and had regularly Ulailed to it said semimonthly digest numbers as they were pUblished ,lod i,':;suOO, and that CODlplainant was entirely familiar with the plan of such 1lgest; that one feature. considered of special value .by subSCribers, was its early publication, and any delay therein would work irreparable injury to defendant,. by loss of sales anll! loss of credit, and great inconvenience and anuoyance to its subscribers, a large pr0J;l0rtion of whom had already paid for, and were entitled to, such annual digest; and that thE> balance of such subscribers had ordered the same upon the agreement that they would remit therefor upon .its receipt. Complainant also submitted, after the a memorandum showing further instlQlces of piracy and infringement, in addition to the examples set forth in the mo"ing affidavit.
E. Countryman, for the motion. COXE,District Judge. I have delayed deciding this motion until the last moment before stltrting for the New York circuit, and nave given to its consideration all the time which could be spared from other matters even more pl'esRing. I have reached the conclusion that the temporary stay should be vacated; that the defendant should enter into a bond, if required to do so, conditioned to keep' an account of all digests sold and for the payment to the plaintiff of such damages as the court lllay award in case the final decree is for the plaintiff; that an injunction ShOllld issue restraining future in fringements of the plaintiff's copyrights, and also restraining the selling of tht' present digest to all persons except the defendant's regular subscribers, and those with whom it has contracted to deliver copies by agreements made before the service of these motion papere. r do not pretend that tills order does absolute justice, but r think that it approaches as near to that result as any order that can be made, while the matters in dispute are undetermined. }Iy reasons for this conclusion may be hastily summarized as follows: Both parties compile and publish law digests. The moving papers present some 55 instances of alleged piracy in the defendant's digest. Since the argument, another statement, containin/; lOS similar instance8, has been forwarded; making in all 163 alleged cases of piracy. Some of these employ langllageso nearly identical with the copyrighted language that the presumption is well-nigh conclusive that it was copied from the plaintiff's books. As to others the contention
268
REFORTER ,vol.
53.
istnade'by the defendantlthatthe similarity of language is acc.ounted for' by' tJhefact that both paragraphs were copied verbatim from the opillion of ,-the cqurt. It to verify this contention without a long, wearisome, and complicated comparison, which the court has no time to make, and should not be called upon to make. I am con1identthat if this examination is sent to a referee it will delay the ma1(ter for several weeks at least. The plaintiff having failed to satisfy the court, in view of the defendant's affidavits, that an injunction should issue at once, the court will hardly be justified in per· the preliminary stay to continue in order that the plaintiff may' hq,ve time to make,. a stronger case. If the stay continues it wiJl work great injur;r to the defendant, for which there is little, if anY,redress. Should it sUbsequently appear that the defendant is right to, a large proportion of the paragraphs in dispute it will be to offer any f9r the serious injury which has been shou,ldbe much surer than it can be at present,that the plaintiff is right before dealing so fatal a blow to the defendant. " peen issued during the past year in 'rhe'.defen<lant's been regularly sent to the plainsemimonthly pamphlets whicl); who is a subscriber. Their contents, presumably, were known to theplainti1l' several' months ago.. The plaintiff has waited until the defendant's digest is printed and ready for delivery, and now seeks to have the alleged pirated paragraphs stricken out or the en· tire volume suppressed. If this action had been commenced two months ago the court would have had ample opportunity to deterDline with accuracy and what is not pirated. The defendant ,woWd then have been directed to omit objectionable matter, whicll could have 'been done without great injury or expense. Now, however, an injuJ).ction will compel the mutilation of a completed edition, and, perhaps, a printing of a new edition, with its attending expense and delay. I cannot think that the court will be justified in so harsh a measure where the infringing matter is so small a proportion of the entire work. It is said that the total number of cases digested in defendant's book is 19,000. The disputed paragraphs, therefore, ass:uming that an are pirawdoam.ount to less than 1 per cent. It is apparent that. the damage to the defendant, should an injunction issueas prayed for, would be entirely out of proportion to the damage which the pbtintiff will suffer it the preliminary writ is refused. The plaintiff has already supplied.its customers with the digest pubUsb-ed by it for 1892. It hashud no interference from the defendant, and it cannot be maintained, therefore, that the defendant's di· to displace any of the plaintiff's digests or entice gests are any of the plaintiff's customers. It is the duty Qf the court in aJI·these cases to take into consideration the Sit11ation of both partJes, and not to issue the writ except in tlle plainASt eases, where the; result will be irreparable injury to the defendant. without. corresponding advantage to the plaintiff. It is always wiser, in such cases, to wait for the final proofs. In Sargent 2 Curt. 553, 557, Judge Curtis said:
as
WEST PUBLISHING CO. V. LAWYERS' CO-OPERATIVE PUBLISHING CO.
26:)
"The court looko to the particular circumstances to see what degree of Inconvenience would be occasionL>d toone party or the other by granting or withholding the injlmction." .
In 1rlcNeiIl v. Williams, 11 Jur. 344, the vice chancellor said: "The court has, of late years Especially, given great weight to the consideration of the question, which of the two parties to the dispute is more likely to suffer by an erroneous or hasty judgment of an interlocutory nature against them; and to the consideration also of the very possible if not probable effect which an injunction may have to the defendant's prejudice in an action. I have in this case to weigh, on the one hand, the suspicious uature of the defendaut's case, for suspicious, I confess, upon the present materials, it appears to me to be, and the probable mischief from not interfering at present in his favor, if he should ultimately prove to be right; and, on the other hand, the possibility-the rational possibili1:J·-·for I am unable to bring myself to deny the rational possibility-that the plaintiff may be right. I have also to consider the mischief generally that may be done by interfering in this stage of the cause if the defendant .shall ultimately appear to .be right, including particnlarly the possible prejudice which may be created against them in an action by the existence of an injun.)tion. Upon the whole, I think the ends of justice in this ease will be better answered by abstaining from granting the injunction at Dresent."
In Bramwell v. Halcomb, 3 Mylne & O. 739, the chancellor said: the pL'lintiff's work, the plaintiff will have the profits of the publication; but ··It is obvious that it is the interest of both parties that the injunction should be dissolved; for if, in consequence of piracy, the defendant is, in fact, selling
inflicted on the defendant."
if, on the contrary, no piracy has been committed, a vC?ry great hardship is
In Spottiswoode v. Clarke, 2 Phil. Ch. 157, the facts were in m:1ny respects similar to those in the case at bar. The chancellor said: "But the greatest of all is that the court runs the risk of doing the greatest injustice in case its opinion upon the legal right should turn our to lJe erroneous. Here is a publication which, if not issued tbis month, will lose a great part of its sale for the ensuing year. If you restrain the party from selling immediately you probably make it impossible for him to sell at all. You take property out of his pocket and give It to nobody. In such a case, if the plaintiff is right, the court has some means at least of indemnifying him, by making the defendant keep an account; whereas. if the defendant be right, and he be restrained, it is utterly impossible to give him compensation for the loss he will have sustained. And the effect of the order in that event will be to commit a great and irremediable injury."
See, also, High, Inj. § 1026; Walk. Pat. § 702; Drone, Copyr. pp. 517, 518. It is thought that the plaintiff will be fully protected if its copyrights are in the future and damages are paid for whatever injury it may have sustained from past infringements, and especially so, if the defendant is enjoined from selling its digests to new customers until it has proved its innocence of the present charge.
270
FEDERAL RE1'ORTER
I
TI:tE
ROANOKE. December 12, 1892.) FROM LrABrLITY-
UNION MARWE INS. CO. et 81. v. '.rHE ROANOKE. (DistrM court, E. D. Wlscoillsin. 1.' Eimtf"n:'<rBrJ..L "!,,.,"'j!: , ;,' .,' ',,' " ' ,
'·Abi.lJ,Of lalling Which exempts the ship and owner from loss arising frd)ll, any danger oraccldent mcldeIit "to navigation or transportation, receipt,dellvery, storage, or wharfage, any fire, collision, explosion of any Itmd, )vetting,. combustion, or heating," does not include an exemption fJ'ot»llabUity mgen¢ral average. Exemption from theordinllry lJaOilittes.qt a carrier should be expreSsed m clear and definite language. 2. S,Al<lE.·., , " ..... . A,JllU,of l,ading exempts the shlpand owner from loss by "fire 01' 40es not inclUde an eXeJIlP1:!-0ll from liability. to contribute in geneJ;lil r4\v;erai{e tor loss of cargo by ponred thereon to extinguish a fire.
AVERAGE:',. ' .
. .'
by the Union Marine Insurance Company against the steamer Roanoke and others to recover in general aver· aget , .,yertain exceptipIlI:l filed. to the libel were overruled. J'46'Fed The ca'n'sewas thel'eaftersubmitted upon statement (jffacts. .Decree for libelants. l': !.: JohnC; Richberg, for libelant. George'D. Van Dyke, for the Roanoke. 'j' '
r,
. ! ,,
JENKINSjDistrict'Judge, (orally;)' The libel was filed by certain underwriters against the Roanoke; ina case of general average. The cargo of the vessel having been found to be on fire, the fire department where the vessel'then lay, was called into requisiof the city of and by means, andhy the subsetion, quent the and.,crew ofthe vessel,the fire was extinguished,tBe vesseLwas saved,and a large part of ·the cargo Wlh'l saved at the expense of a certain. part of the cargo, which was de· The libel was filed against stroyed bytl1e. ",etting from thev:essel,by theundet#i'li:ers, who had paid the owners of the cargo so destroyed, to recover in generataverage for the amount which the vessel toward the common purpose .of saving ship and cargo. Exceptions were filed to the libel, and the question was thereby whether a destruction of cargo by wetting was a sub· average as it was said, there ject was no sele.ction for sacnfice,and also because by the act of congress it was p:ooviqed·. owners should n()t be liable in case of loss wereoverrtP-ed by the court, or damage byfire.'l'b.ose (4:6 Fed. Rep. 297,) and it was held that there need be no manual selection; that the destruction of a part of the cargo, for the common purpose of saving the ship and cargo, was a subject of general average; and that the act relieving common carriers from liability from fire applies only to the general liability which would arise otherwise from any destruction of property in carriage, and did not apply to the matter of general average. After the exceptions were overruled, answers were filed, ana thecause was submitted to the court upon an agreed statement of facts..