Belford Clarke Company v. Scribner

This is a suit in equity, brought on the 18th of January, 1884, in the circuit court of the United States for the northern district of Illinois, by Charles Scribner, a citizen of New York, against Belford, Clarke & Co., an Illinois corporation, and Michael A. Donohue and William P. Henneberry, citizens of Illinois.

The bill alleges that the plaintiff is a publisher and bookseller doing business under the name of Charles Scribner's Sons, in the city of New York; that from a time previous to April 1, 1871, and ever since then, one M. Virginia Terhune, the wife of Edard P. Terhune, a citizen of Massachusetts, has been and now is an authoress, who has written and published various works under the name of 'Marion Harland;' that about April 1, 1871, she, being then and ever since a citizen of the United States, became the authoress and compiler of a work or manuscript entitled 'Common Sense in the Household; A Manual of Practical Housewifery. By Marion Harland;' that said work was made up and composed of receipts for cooking foods and fruits, preserving meats, vegetables, and fruits, and preparing drinks, and many other receipts for the sick-room and nursery, and contained much other instructive and valuable matter and information for household and faimily purposes; that all such receipts, information, instruction, and material were selected and arranged with great care and labor, and embodied and written in the style, words, and language of said lady, and she was the original inventor and author of most of the written matter contained in said work, and with great labor and care had selected and compiled to remainder thereof, and was the original compiler and author of all of said work and of the arrangement of the topics and index thereof; that prior to the publication of said work, and on or about April 1, 1871, Charles Scribner, since deceased, and three other persons, named Armstrong, Seymour, and Peabody, all being citizens of the United States, and publishers and booksellers residing and doing business in the city of New York under the firm name of Charles Scribner & Co., by an agreement with the said lady, undertook and became interested in, and assumed the risk and responsibility of, the publication of said work; that such agreement was duly entered into in the city of New York, and was to be performed in the state of New York by the parties thereto, and by the laws of that state the said lady, being a married woman, was authorized and empowered to enter into and execute the said contract in the same manner and to the same extent as if she had been a fame sole; that thereafter, and prior to the publication of the work, and in or about May, 1871, the said copartners, under the firm name of Charles Scribner & Co., secured, according to the laws of the United States, a copyright of said work, as proprietors thereof; that thereafter said firm printed, published, and sold the work under the aforesaid name, at reasonable prices, until the death of said Charles Scribner and the formation of the firm of Scribner, Armstrong & Co., and the transfer of all their interests in the said copyright and agreement with said lady to the latter firm; that on or about February 10, 1872, John Blair Scribner, a son of Charles Scribner, deceased, and the said Armstrong and Seymour, all being citizens of the United States and residing in New York, and publishers and booksellers doing business in the city of New York under the firm name of Scribner, Armstrong & Co., succeeded to the business, and became the owners of the property, good-will, and trade, of the firm of Charles Scribner & Co., including the said copyright and the agreement between said firm and the said lady, and by virtue thereof became interested in, and assumed the risk and responsibility of, the publication and sale of said work, and continued to supply the public with copies of the same, at reasonable prices, until the dissolution of the firm, in 1878, and the formation of the firm of Charles Scribner's Sons, and the transfer to the latter firm of all interest in said copyright and agreement; that on or about June 11, 1878, John Blair Scribner and the plaintiff, sons of said Charles Scribner, deceased, citizens of the United States, and publishers and booksellers doing business in the city of New York under the firm name of Charles Scribner's Sons, succeeded to and became the owners of the property, business, good-will, and trade of the firm of Scribner, Armstrong & Co., including the said copyright and the agreement with said lady, and by virtue thereof became interested in, and assumed the risk and responsibility of, the publication and sale of the said work, and continued to supply the public with copies of the same at reasonable prices, until the death of John Blair Scribner, in 1879, and the transfer to the plaintiff of all the property, business, good-will, and trade of the firm, including said copyright and agreement; that on the death of John Blair Scribner, in 1879, the plaintiff, under the firm name of Charles Scribner's Sons, succeeded to, and became the owner of, the property, business, good-will, and trade of the firm, including said copyright and agreement, and assumed the risk and responsibility of the publication and sale of said work, and continued to supply the public with copies of the same, at reasonable prices, until the publication and sale, hereinafter mentioned, of the new and revised edition of said work, were made; that, under the statutes of the state of New York the plaintiff, upon the death of John Blair Scribner, was entitled to the continued use of the copartnership name of Charles Scribner's Sons, and has carried on the business under that firm name; that by reason of the publication of nearly 100,000 volumes of said work the stereotype plates had become worn, and the impressions therefrom sometimes faint and illegible; that the authoress, in or about 1880, prepared a revised edition of her work, making many corrections and additions; that prior to the taking out of a copyright therefor, and on or about September 8, 1880, the plaintiff, by an agreement with said authoress, became interested in, and assument the risk and responsibility of the assumed the risk and responsibility of the work; and that on or about September 18, 1880, under the firm name of Charies Scribner's Sons, he secured, according to law, a copyright of said new work, as proprietor thereof, under the same title, and published said new work, and supplied the public with copies of the same, at reasonable prices.

The bill then alleges that the defendants Belford, Clarke & Co., printers, publishers, and booksellers doing business at Chicago, Ill., and the defendants Donohue & Henneberry, printers and bookbinders doing business at said Chicago under the firm name of Donohue & Henneberry, well knowing the plaintiff's rights, and intending to infringe said copyrights, at Chicago and else where, without the allowance and consent of the plaintiff, published and sold a work in one volume, issued by them under various titles and with different titlepages, and purporting to be edited by different persons, and to be written and compiled by different authors, (the body of said work, and all the matter contained therein, excepting the title-pages and matters relating thereto, being the same,) said work, consisting of 351 pages, being a compilation of receipts for cooking, treating of the same subjects, and covering the same topics, and adapted and intended for the same portion of the public, as the plaintiff's said book, and being a copy from, and an infringement and piracy of, the plaintiff's said work; that more than 170 receipts contained in said piratical work were copied verbatim et literatim from the said copyrighted work of the plaintiff, said receipts comprising a part or the whole of over 150 pages of said piratical work; that many other parts of that work, besides said 170 receipts, are infringements upon the copyrights of the plaintiff, and many of the remaining receipts are in fact copied from the plaintiff's book, with certain changes in the phraseology thereof; and that the subjects in the piratical work, and the index thereto, are arranged in the same order, and with almost the same headings, as in the plaintiff's work, and were copied and imitated therefrom. The bill then sets forth the particulars of the piratical work, and of the various title-pages and covers thereof.

The bill prays for an injunction to restrain the defendants from printing, publishing, binding, selling, or exposing for sale, any copies of said piratical work, and for an account and payment of the profits of sales of it.

The defendants were duly served with process, and appeared; and, the plaintiff moving for a preliminary injunction, the court, on January 21, 1884, entered an order, on notice, referring the bill, affidavits, and other proofs to a master in chancery, to examine and report whether the bill and affidavits made a case entitling the plaintiff to an injunction, and meantime issuing a restraining order against the defendants, and ordering them to keep an account of all books sold by them at retail.

The master, after hearing the parties, made the following report on February 27, 1884: 'Upon hearing the arguments of counsel, and an examination of the testimony and exhibits submitted to me upon this reference, I find and report that the defendants have violated the rights of the complainant in printing, publishing, and selling all of the certain books described in said bill of complaint as having been published by the defendants; that said works, though purporting to be edited and compiled by different persons, whose names appear therein,-in one instance the title being partially changed, and in others entirely so,-are largely compilations of the recipes of the complainant; and that the matter and language of said books is the same as the complainant's in every substantial sense, but so distributed through said books of defendants as to become incorporated into those works, making it almost impossible to separate the one from the other. I find, also, that the defendants have been guilty of an appropriation of the topics in use in complainant's book, as well as the index, with slight and occasional changes, and that, as to the balance of said publications of defendants, there constantly occurs the use of complainant's language, with occasional change of phraseology, with the general arrangement and headings preserved. In all of the alleged illegal publications the defendants are shown to have used the material of the complainant, instead of 'resorting to original sources of information.' The case, therefore, in my estimation, comes within the rule laid down by the court in Myers v. Callaghan, 10 Biss. 139, 5 Fed. Rep. 726. I am therefore of the opinion that the defendants have infringed the rights of complainant, as charged in the bill, and recommend that an injunction issue as prayed.'

On notice the court, on March 14, 1884, entered an order confirming the master's report, and enjoining the defendants from printing, publishing, binding, selling or exposing for sale, or being in any way concerned in exposing for sale or disposing of, any copies of their book described in the bill, or infringing upon the copyright of the plaintiff in his book described in the bill.

On the 4th of April, 1884, the defendants put in a demurrer to the bill on the ground that it did not allege that before the publication of the plaintiff's book a printed copy of its title was delivered at the office of the librarian of congress, or deposited in the mail, addressed to him, at Washington; that it did not allege that, within 10 days after publication, two copies of the book were delivered at the office of the librarian of congress, or deposited in the mail, addressed to him at Washington; and that it did not show that a notice of such copyright had been inserted, in the form prescribed by law, in the several copies of each edition of the book which had been published.

On the 12th of May, 1884, the court entered an order sustaining said demurrer, giving leave to the plaintiff to amend his bill, and ordering that the defendants plead, answer, or demur to the bill as amended.

On the 24th of June, 1884, Donohue & Henneberry filed a separate answer to the bill, and on the same day the corporation defendant filed its separate answer. Each answer took issue on all the material allegations of the bill. The answer of Donohue & Henneberry alleged that they were employed by the corporation defendant to manufacture the books complained of in the bill, and that the plaintiff was not entitled to a discovery from them, as asked in the bill, as to the number of copies of the piratical book they had on hand, because such discovery would subject or tend to subject them to a penalty or forfeiture. The snswer of the corporation took issue on the material allegations of the bill, and alleged that the corporation employed the firm of Donohue & Henneberry to print and manufacture the alleged infringing book, admitted its alleged sale thereof, and averred that it had sold about 9,500 copies of the principal book and about 44,000 copies of a cheap edition, but averred that the plaintiff was not entitled to any discovery from it of the number of books it had on hand, because such discovery would subject or tend to subject it to a penalty and forfeiture.

On the 3d of September, 1884, the plaintiff filed replications to the two answers; and on the 17th of October, 1884, the court referred the case to a master in chancery 'to take proof and state an account therein.' It appears by the record that in November and December, 1884, and January, 1885, the testimony on behalf of the plaintiff was taken in the city of New York before a United States commissioner, and was filed in the court on the 28th of February, 1885. The testmony on the part of the defendants was taken before the master in Chicago in May, July, and November, 1885, and was filed in the court on the 27th of April, 1886.

On the 17th of November, 1886, an order was entered, stating that on motion of the plaintiff, and with the consent of the defendants, leave was given to the plaintiff to file an amendment to his bill in place of the original amendment, which had been removed from the files; and on the same day amendments to the bill were filed, setting forth that the firm of Charles Scribner & Co., on the 26th of May, 1871, delivered at the office of the librarian of congress at Washington a printed copy of the title-page of the book, which title-page is set forth in the amendments; that on the same day said librarian recorded the name of such book; that on the same day, within 10 days from the publication of the book, the firm delivered at the office of said librarian two printed copies of the book, which were complete copies thereof, and of the best edition thereof published; that, prior to the publication of the book, said firm caused to be printed, on the page immediately following the title-page of each copy published, words giving notice of the copyright, that such words and notice are printed in each copy of said book published; and that said firm did everything required by law for the securing of the copyright. The amendments also set forth that the plaintiff, under the firm name of Charles Scribner's Sons, on the 18th of September, 1880, delivered at the office of the librarian of congress, at Washington, a printed copy of the title-page of the new edition of said book, containing the printed words of the title, and on the same day the librarian recorded the name of such book; that on the 15th of November, 1880, and within 10 days from the publication thereof, the plaintiff delivered at the office of said librarian two printed copies of the book, of the best edition thereof published; that prior to the publication of the book, he caused to be printed, on the page immediately following the title-page of each copy published, words giving notice of the copyright; that such words and notice are printed in each copy of said book published; and that he did everything required by law for the securing of his copyright in said book.

The record shows that on the 30th of November, 1887, an entry was made in the record of proceedings in the cause, setting forth that the case on that day came on to be heard on pleadings, proofs, 'and master's report and exceptions.' There are not in the record any exceptions to a master's report.

There is an entry in the record of the proceedings in the cause, made February 23, 1888, setting forth an order which states that, on motion of the plaintiff's solicitors, he was allowed 'to file a certified copy of copyright in place of such proof heretofore filed and lost.' The record shows that on the 24th of February, 1888, there were filed in the court the certified copies of papers from the office of the librarian of congress, which are set forth in the margin.

On the 6th of April, 1888, the defendants filed in the clerk's office a motion to strike from the record, as evidence in the cause, the certificates of the librarian of congress so filed, because (1) neither of them was in proper form or properly authenticated; (2) neither of them was in compliance with the order of February 23, 1888, 'because no other certificates having the like purport or effect had been ever offered in evidence nor lost from the files in said cause;' and (3) they were incompetent and irrelevant.

On the 7th of April, 1888, the court entered an order overruling the motion to strike from the files 'the certificates by the librarian of congress, filed as testimony in this cause.'

The cause was heard by Judge BLODGETT, who filed an opinion on April 9, 1888, a copy of which is contained in the record, and on the same day the court entered a decree which stated that the case was heard upon the bill, answers, and replications, and proof taken in the cause, documentary, oral, and written, 'and upon the master's report herein, with exceptions thereto.' The decree granted a perpetual injunction, restraining the defendants, and each of them, their officers and agents, from printing, publishing, binding, selling, or exposing for sale, or causing or being in any way concerned in selling or exposing for sale, or otherwise disposing of, any copy of the book described in the bill as having been published by the defendants under various titles, (which titles are set forth,) and any copy of said book under any title whatsoever. The decree adjudged that the defendants' book was an infringement upon the rights of the plaintiff as owner of the copyright of his book, the title of which is given in the decree, and that he was entitled to damages for such infringement; and upon the proof the court fixed the amount of such damages at $1,092, 'being the amount of the profits shown by the proof* to have been made by defendants from the defendants' infringement,' and that the plaintiff recover that sum from the defendants, and each of them, with costs. The defendants took an appeal to this court.

Newton A. Partridge, for appellants.

[Argument of Counsel from pages 499-501 intentionally omitted]

Walter C. Larned, for appellee.

Mr. Justice BLATCHFORD delivered the opinion of the court.