MACMILLAN CO. v. KING
District Court, D. Massachusetts
223 F. 862
1914
OPINIONBY: DODGE
OPINION: [*863] DODGE, District Judge. The defendant is charged
with infringing the plaintiff's copyright in "Principles of
Economics," a work in two volumes by F. W. Taussig, Professor
of Economics in Harvard University, published in 1911 by the
plaintiff, and copyrighted under the act of 1909. The bill
alleges that the defendant has --
"printed, published, and leased or sold unauthorized, unfair,
and unlawful abridged copies or other versions of said book."
An injunction and accounting is prayed for. 35 Stat. 1075.
The Copyright Act of 1909 secures to the owner of a copyright
in a literary work an exclusive right to "print, reprint,
publish, copy and vend the copyrighted work" (section 1a),
and to "make any other version thereof" (section 1b). It provides
that the copyright shall "protect all the copyrightable component
parts of the work copyrighted, and all matter therein in which
copyright is already subsisting." Section 3 (Comp. St. 1913,
@ 9519).
The answer denies the allegations above quoted from the bill.
The defendant alleges that he is a teacher by profession;
that numerous persons come to him for private instruction
in various subjects, one of them being economics; that in
teaching economics he makes use of and teaches the contents
of the copyrighted book; that the book is sold for use as
a text-book, and is studied by his pupils as such, and that
they resort to him for aid in such study; that each of his
pubils is recommended and expected to possess a copy of the
book, and in general does so; that all of them possess copies,
so far as he knows; and that if any do not is a matter beyond
his control, copies being accessible in the libraries or in
the hands of friends to them all; that in advance of each
conference relating to the subject with his pupils, he prepares
for them brief memoranda or outlines covering the ground to
be dealt with; that each of these consists of a single sheet
of typewritten matter, relating only to the subject-matter
to be dealt with at the conference; that, if any sheet is
taken away after the conference, an account is kept, and it
is returned the next week; that all are subsequently destroyed;
that none are sold or leased; that they are not bound or paged;
that no use is made of them, apart from the use above described;
that they go into his pupils' hands only on the understanding
that they are to be used by the individual pupil and returned
as above; that, except as stated, they are not published or
distributed; and that his regular fees for instruction are
fixed without regard to the use of the memoranda, and are
the same whether the memoranda are used or not.
He alleges, further, that what he does as above is within
the license and consent given by implication in distributing
and selling the books, is within the custom of teachers, and
is not an infringement of the complainant's copyright.
The defendant's allegations as to the actual use he has made
of his "memoranda" are in general supported by the evidence,
except that certain memorandum sheets, nine in number (marked
Exhibit H), appear by his own testimony to have been prepared
by him for use, not at a particular conference dealing with
a particular part of the book, but for tutoring in preparation
for a final examination in one of the [*864] Harvard courses
in economics; and that these were intended to outline all
the subject-matter covered in that course during a certain
term. These he said he loaned to the pupils tutored in that
course, to be kept for "a few days," to be returned, not the
next week, but immediately after the examination. It did not
appear how long before the examination they were loaned. They
were put in evidence by the plaintiff, in whose possession
they were at the time, and appear, therefore, not to have
been in fact returned to the defendant by the pupils to whom
he loaned them.
1. Are the memoranda referred to such in character as to constitute
"copies" or "other versions" of the copyrighted work, within
the meaning of the act, if printed, reprinted, or published,
within the meaning of the act?
I first consider 30 sheets of the memoranda, furnished for
use as evidence by the defendant himself, and agreed to be
specimens of all by a preliminary stipulation made by both
parties May 9, 1913, before any other evidence had been taken
in the case. That "materials for said memoranda or outlines
were drawn from" the copyrighted book is also expressly agreed
in the same stipulation.
The 30 conferences with his pupils, for which the defendant
prepared these memoranda sheets, were to be on successive
dates, never at a less interval than one week, beginning with
October 6, 1911, and ending with May 24, 1912. The conferences
appointed for four dates in October and for November 3 and
10 would seem never to have been actually held, although sheets
for those dates were prepared. On the remaining dates conferences
were held, and a sheet of memoranda prepared for each was
used.
The memoranda sheets used on December 8, 15, and 22, besides
dealing with parts of the copyrighted book, dealt also with
parts of a different book upon the same subject, by another
author, and in no way involved in this case. The sheets prepared
for or used on the other dates deal each with a part of the
copyrighted book. Certain chapters of the book, occupying
in all not quite 60 of its more than 1,100 pages, are not
dealt with in any of the sheets. The remaining chapters of
the book may be said to be covered by the remaining sheets
taken together; but the order of the book was not followed
throughout in the successive conferences, earlier portions
of it being sometimes passed over until after later portions
had been dealt with.
Occasional portions of some of the sheets do no more than
refer to the book for its treatment of a particular topic,
the reference conveying little or no notion to the student
of what is found in the book about the topic. Examples are:
(Feb. 16, under heading Taussig on Interest)
9. Rate differs in different countries. Why?
10. Justification of interest -- for and against.
(Feb. 23.) Industrial Crises: (a) Periodicity -- 1818, 1825,
1837, 1847, 1857, break, 1873, 1884, 1893; also a double pulsation
(severe, mild); some worldwide, some limited; (b) Jevon's
theory of sun-spots and its value.
If the defendant's sheets had been constructed upon this plan
throughout (and without infringement of the copyrighted index),
it might be said that he had done no more than provide students
with [*865] visible means to aid their study of the book,
which would relieve their memories of the task of retaining
in proper order the principal matters treated of, and had
done nothing which amounted to substantial reproduction of
any of the author's treatment. The defendant offered in evidence
several so-called printed outlines or abstracts prepared by
other teachers for use in connection with other books. These
appeared, generally speaking, to be constructed according
to the plan just described. As to two of them, wherein a further
use of the author's ideas is made, one appears to have been
copyrighted by the author, the other by its maker, with permission
from the owner of a copyright covering the English translation
of the book.
The defendant's sheets certainly make a much more extensive
use of the author's ideas than is made in such occasional
passages as the two above quoted. For the most part they consist
of paragraphs more nearly like the following:
(March 8) Taussig on Taxes on Land and Buildings:
"(a) The peculiarity of the tax on land is that it cannot
be shifted, but falls on the owner. If a sale takes place,
the buyer deducts the tax and is tax free -- 'burdenless'
taxation. (b) On the other hand, the tax on buildings can
be shifted (except where demand is declining), and is shifted,
to the occupier, who in turn, if he is a merchant, shifts
it to the purchaser of his goods."
(April 25) Taxes on Land and Buildings. (a) A tax on land
"which is 'rackrented' cannot be shifted, and is no burden
to the owner. (b) A tax on buildings can be shifted to tenant,
because buildings cost just so much to erect. Where building
is used for business, tenant may shift again to consumers.
(c) According as the value of a property is in the land or
in the building, the owner pays more or less, and as value
of land rises, taxes rise, and thus some of unearned increment
is appropriated. (d) It makes practically no difference whether
tax is collected from owner as in U.S., or from occupier as
in England, that is if the taxes are fixed in amount. If the
rate is altered, then it does make a difference. European
and American basis of assessment also differ, the 1st being
annual rental value, the 2d selling value. Each has advantages
and disadvantages. (e) Workingmen pay taxes on dwellings,
shops, etc., either directly or indirectly. In England the
owner serves as tax collector, without tenant knowing it (unfortunate).
(f) In English-speaking countries, taxes on real estate are
chiefly local taxes. 'The same tendency is beginning to show
itself on the continent,' and the system is a wise one."
Chapter 68, pp. 515-527, of volume II of the copyrighted book,
is entitled "Taxes on Land and Buildings," and is divided
into sections numbered consecutively from 1 to 6. In the clauses
(a) and (b) of both the above extracts, prominent propositions
contained in sections 1 and 2, respectively, are (somewhat
roughly) condensed, everything said in the section by way
of proof, modification, illustration, or application being
disregarded. In the clauses (c), (d), (e), and (f) of the
second extract the same thing is done with regard to sections
3-6, inclusive, of the chapter.
It will be noticed that clause (a) contains one word, and
clause (f) an entire sentence, in quotation marks. The words
so quoted are taken direct from the book. Instances of such
quotation are frequent throughout the sheets. They are generally
short, consisting of one or two words only; the words selected
being usually such as would be likely to catch the attention
and remain in the memory. Instances of [*866] entire sentences
quoted are not so common, though there are several of them.
The language of the book is sometimes followed, without being
distinguished by quotation marks, though not for more than
a few words at a time, so far as I have noticed.
I next consider the nine pages of memoranda which were put
in evidence by the plaintiff while cross-examining the defendant
(Exhibit H). These, as has been stated, were also prepared
by the defendant from the book, for use in "tutoring" his
pupils for a final examination upon all the work in economics
supposed to have been done by the students at the University
who had taken that course during the second term of the year
1911-1912; and they were so used. They correspond generally
to the memoranda sheets prepared for his conferences on February
16 and on successive dates thereafter until and including
May 24. The portions of the book to which they relate are,
in general, the same as those covered by the memoranda sheets
for the conferences referred to; but the latter contain matter
necessarily omitted from Exhibit H, into whose nine consecutive
pages is further condensed what had occupied 15 of the separate
memoranda sheets. What has been said above of the memoranda
sheets will serve to describe what is found in Exhibit H.
In it, as in them, there is frequent quotation of words, and
occasional quotation of sentences from the book; the topics
treated are topics treated in the book, the attempt is made
to reproduce in abridged and paraphrased form (so far as such
reproduction is possible within the very narrow limits adopted)
the author's treatment of the topics selected, and the author's
order and arrangement of topics within the portions of the
book dealt with is followed, except for a certain amount of
transposition or repetition.
It seems to me that the defendant's method of dealing with
the book has resulted in an appropriation by him of the author's
ideas and language moreextensive than the copyright law permits.
It is true that the whole book has not been thus dealt with;
but the copyright protects every substantial component part
of the book, as well as the whole. Though the reproduction
of the author's ideas and language is incomplete and fragmentary,
and frequently presents them in somewhat distorted form, important
portions of them are left substantially recognizable. If they
had not been so left, the defendant's evident purpose could
not have been accomplished. It seems obvious that what he
was trying to give, and what his pupils were trying to get,
was an acquaintance with the contents of the book, which should
resemble as much as possible that acquaintance which they
would have obtained for themselves by following with sufficient
diligence the University course of instruction for which the
book was the appointed text-book. Nor do I see any reason
to doubt that, as the author testifies, these "outlines" might
readily "cause the student to think he (could) meet the minimum
requirements without using the book itself." It cannot be
said that the outlines go no further than to "give just enough
information to put the reader upon inquiry" regarding the
contents of the book. It was because the alleged infringing
"version" went no further than this that no infringement was
found by the court in G. Ricordi & Co. v. Mason (C.C.) 201
Fed. 182-185 (on appeal 210 Fed. 277, 127 C.C.A. 125). [*867]
It gave in half a page an abridged synopsis of the copyrighted
libretto of an opera, covering 46 pages. It was said, in refusing
the preliminary injunction (201 Fed. 183):
"The abridgments which have been condemned by the courts involve
colorable shortening of the original text, where immaterial
incidents are omitted and voluminous dissertations are cut
down, but where the characters, the plot, the language, and
the ideas of the author are pirated."
It was further said on final hearing (201 Fed. 185):
"Of course, if the defendant's stories consisted of mere modifications
of the copyrighted works, or abridgments thereof, reproducing
portions of the dialogue, words, or phrases, the scenes, and
characters, a different question would be presented."
Following here a similar principle of distinction, I must
hold that the defendant's sheets are not, in any event, such
abridgments from the copyrighted book as he has the right
to make, and that they constitute "versions" of substantial
portions of the book, such as the plaintiff alone has the
right to make.
2. The defendant has neither leased nor sold his sheets. "Printing"
I must regard as including typewriting or mimeographing, for
the purposes of the act, and he has therefore "printed" them.
Can he be said to have "published" them, as the bill alleges,
in such sense as to make his publication an infringement,
entitling the plaintiff to an injunction?
It is not necessary, in order to constitute publication, that
they should have been offered in the market to whoever chose
to buy them. There may be a limited publication, which will
entitle the owner of the copyright to an injunction. Ladd
v. Oxnard (C.C.) 75 Fed. 703, 730. And, as held in that case,
there may be such publication, although the number of persons
to whom copies are delivered is limited, and their rights
to the copies also limited by agreement with them. Although
the defendant issued the infringing sheets only to his own
pupils, and to them only upon agreement that they should be
returned to him within a limited time, the evidence relating
to Exhibit H shows either that the agreement was not fulfilled
in every case, or that these sheets were copied before being
returned. No precautions against such copying appear to have
been taken. I must hold that sufficient publication of the
outlines has been shown to constitute infringement.
If the above conclusions are right, I am unable to believe
that the defendant's use of the outlines is any the less infringement
of the copyright because he is a teacher, because he uses
them in teaching the contents of the book, because he might
lecture upon the contents of the book without infringing,
or because his pupils might have taken their own notes of
his lectures without infringing.
3. The evidence can hardly be said to show that the infringing
outlines have injured the sale of the book. Nothing more appears
than that they might do so, by enabling students to get along
without the book who otherwise would have had to buy it. The
plaintiff's loss, if any, prior to the filing of the bill,
can hardly have been of substantial amount, because the two
volumes of the book were copyrighted, respectively, on September
25 and October 4, 1911, and the bill was filed [*868] June
7, 1912. The outlines prepared and used by the defendant during
the University year 1911-12 are thus the only ones involved
in the case as it now stands. The defendant's uncontradicted
evidence is that the number of students who used his outlines,
whether in conference classes or in separate tutoring for
examinations, did not exceed 15 at the first and 17 at the
second term of the year. The evidence shows, however, that
outlines similar to Exhibit H, though not precisely the same,
were prepared from the book by the defendant and used during
1912-13 in tutoring for mid-year and final examinations. If
an injunction is refused, it is obvious that continued use
of similar outlines, such as that heretofore made, may well
result in damage more substantial than any shown by the evidence
thus far submitted. Proof of actual damage is not necessary
for the issuance of an injunction, if infringement appears
and damage may probably follow from its continuance. Reed
v. Holliday (C.C.) 19 Fed. 325, 327; Sampson, etc., Co. v.
Seaver, etc., Co. (C.C.) 134 Fed. 890; Id., 140 Fed. 539,
72 C.C.A. 55. It is understood that no accounting is desired
by the plaintiff, and an injunction only is sought. To that
I think the plaintiff is entitled, and there may be a decree
accordingly.
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