Webb v. Powers

WOODBURY, Circuit Justice.

Several objections are urged in this case against a recovery by the plaintiffs, which are formal rather than substantial. One is, that the assignments, under which they claim, do not appear to have been recorded. But they are still valid as between the parties, and as to all persons like the defendants, not claiming under the assignors. See cases in Leland v. The Medora [Case No. 8,237], Mass. Dist., Oct. 1846. Another is, that the plaintiffs are not proved to be citizens of the United States. But that being averred in the bill, and not denied by the answer, must be considered as admitted. There are some other objections, which have either been removed by evidence, or probably may be; and hence, if the ease can be decided on the merits, without delay and expense as to any formal objection, it will be better for both parties that this should be done. Passing by, then, the other preliminary exceptions, how does this case stand on the merits? The report of the master is in favor of the defendants. Prom the care evinced in the examination, and the high character of the gentleman who made it, much weight must be given to its conclusions. But the parties are entitled to a revision of it here, and, though the presumptions are in its favor, at the outset of the examination, yet if it cannot stand the scrutiny, to which it has been subjected in argument, and which the court is bound to bestow on it, the plaintiffs ought to succeed.

It may conduce to a more lucid exposition of the merits between these parties, as to the originality of their respective books, to ascertain, first, what, each claims as novel or peculiar. Neither of the parties makes any pretence to be inventors of dictionaries of flowers. Whether arranging them alphabetically or scientifically, and whether describing and defining them in prose or poetry, according to their classes and orders, or their medical virtues, or the sentiments they are accustomed to inspire, and whether illustrated by engravings of them, or the opinions of those most experienced in the beautiful hues and figurative language of flowers,— all this had been done before the first of these publications. It had been done, too, not only abroad, but in this country, and more especially in the “Flora's Dictionary,” published in Baltimore, in 1S30, and republished in 1S31, with the reputation of having been compiled by Mrs. Wirt. In the preface to the plaintiffs’ book, Mrs. Hale acknowledges her obligations to other writers on this subject, and more especially to the author of Flora's Dictionary, just described. And in the preface to the book of the defendants, Miss Edgarton also expresses her indebtedness to others, who had labored in this garden before her, and especially to the “Flora's Interpreter” of the plaintiffs. Again, there is much discrimination to be used in inquiries of this character, between different kinds of books, some of which, from their nature, cannot lie expected to be entirely new. Thus, dictionaries of all descriptions, when on like subjects, philological, lexicographical, professional, or scientific, must contain many definitions and descriptions, almost identical; as must gazetteers, grammars, maps, arithmetics, almanacs, concordances, cyclopae-aias, itineraries, guide books, and similar publications. In these, if great errors have not previously existed, or unusual ignorance to be corrected, no great novelty is practicable or useful; unless it be to add new discoveries or inventions. new names, or words, or decisions, — so as to post up the subject to more recent periods, — or unless it be to abridge and omit details, and condense a more voluminous work into a smaller and cheaper form, so as to bring its purchase and use within the reach of new and less wealthy classes in society. Some similarities, and some use of prior works, even to copying of small parts, are in such cases tolerated, if the main design and execution are in reality novel or improved, and not a mere cover for important piracies from others. Trusler v. Murray, 1 East, 363, note; Gray v. Russell [Case No. 5,728]; 12 Ves. 270; 16 Ves. 269; 17 Ves. 422. What was there novel, then, in the combination and materials of the plaintiffs' book which the defendants have copied? Nothing in the arrangement, except that the “class and order and description of the flower-’ are placed on the same page, with its name and interpretation, instead of being in notes at the end, as in the second edition of Flora’s Dictionary. In the materials there is, also, a novelty in' the special designation of the sentiment in the plaintiffs’ book, which is not in Flora’s Dictionary. But the defendants have not imitated that, and hence it becomes unimportant. All, then, which the defendants have copied in the arrangement, which did not exist in other books than the plaintiffs’, and to which the plaintiffs of coursé have no exclusive claim, is the mere transfer of the notes to the same page with the flower to which they relate, — a closer juxtaposition; and all in the materials of the plaintiffs, which are original, and have been copied verbatim, are a few “poetic significations.” or definitions, being about twenty in one hundred and forty-eight, and consisting of only one hundred and fifty-six words out of the whole volume. In three or four other instances, some of the significations are varied in form slightly, but not in substance; and in nineteen cases, parts of the descriptions of flowers, and their localities, in prose, are used by the defendants, which were employed by the plaintiffs. The defendants offered to prove, in explanation of this, that the plaintiffs had copied in this way still more extensively from others; and it is difficult to conceive of different works, describing the appearance and locality of the same plants, not using like language, and often in some particulars the same, if the plant or flower has been long known, and the notices of them are, as in these cases, very brief, being embodied frequently in a single line. In compiling dictionaries of all kinds, gazetteers, and similar works, the materials of all must, to a considerable extent, be the same, and to such an extent are allowable; and the novelty or improvement, as before remarked, can be substantial in scarcely any case, unless the matter is usefully abridged in bulk and price, or a material change is made in arrangement, or more modern information is added in valuable quantities, or important errors are corrected, or important omissions are supplied. While, on the one hand, a prior compiler is not permitted to monopolize what was not original in himself, and what must be nearly identical in all such works on a like subject; yet he, who uses it subsequently to another, must not employ so much of the prior arrangement and materials as to show that the last work is a substantial invasion on the other, and is not characterized by enough new or improved, to indicate new toil and talent, and new property and rights in the last compiler. That is the cardinal distinction. Thus a material addition is made to a common dictionary, which shall, like Webster’s, add definitions of a large number of words before omitted; or quotations from the authors, who have employed the words in the sense adopted, like Johnson’s; or rules for the proper pronunciation of each word, like Walker’s; or the roots from which the word has been derived, like several others. And no one would complain of a new dictionary as an infringement on former ones, if it contained any of these important additions, and had not in other respects servilely copied but a few definitions of old words from any one former author. Now was the defendants’ book of this character, or otherwise? A little further scrutiny into this ease will show, whether the change here by the defendants was real or only colorable. They followed, to be sure, the arrangement of the plaintiffs, but that arrangement was not novel with them, except putting on the same page, one part of the account of the flowers, which before had been placed in notes at the end. This could hardly be deemed of sufficient importance to justify a prosecution, unless connected with other infringements as to materials and design, or unless this was a change more essential in some other respects than a mere transfer of similar matter from one page to another. But of this more hereafter. Besides this, however, it is contended. that the defendants have copied materials and design also to such an extent, as to be convicted of a substantial infringement.

The leading inquiry then arises, which is decisive of the general equities between these parties, whether the book of the defendants, taken as a whole, is substantially a copy of the plaintiffs? whether it has virtually the same plan and character throughout, and is intended to supersede the other in the market with the same class of readers and purchasers, by introducing no considerable new matter, or little or nothing new. except colorable deviations?

We have already stated the quantity of materials literally copied, amounting to only about one hundred and fifty-six words. Perhaps half as many more may be considered substantial uses of the plaintiffs’ book. But what are the differences? numerous or not? essential or trivial? To illustrate the differences in these two works, in order to see whether they are substantial or otherwise, it will be necessary to compare first their prefaces. They of course profess to relate to like subjects, as do all mod-cm Floras of this character, and must therefore, as before remarked, contain something of the same matter. But do they really and materially in any respects differ? Their claims and pretensions, in the prefaces, are certainly not the same. The book of the plaintiffs claims merely some novelty in its arrangement, and the use of American poetry to illustrate what is there called the sentiment of flowers. The novelty in arrangement, as before shown, does exist, but is very trifling so far as regards anything imitated by the defendants. But there was another novelty, perhaps more material, which was not imitated by them, in giving first some European or anonymous poetry on the signification of each flower, and then separately some remarks by American authors, illustrative of the sentiment inspired by each flower. This last, and this substitution of American sentiments and authors for foreign ones, seem to me to constitute the great novelty and attraction of the plaintiffs’ book, in its matter, over others on this subject, -which had preceded it. In this way quotations are introduced from sixty to seventy different American poets, and twenty to forty pieces from some of them, besides the many beautiful extracts given from foreign poets under the other head of illustrating the ‘‘signification of flowers.” In this way the authoress of the plaintiffs’ book was original, in these important particulars, but not in giving a poetical language to flowers, or discussing a sentiment in them, a symbol of affection, as these had existed here before and in Europe, and in the East for ages, if not since Paradise. This authoress also attempted to unite some botanical instruction with poetry; but that was not a new union or combination, nor did she, however highly gifted and favorably known, in other respects, pretend to furnish any scientific information beyond what is contained in Linnmus, .Tussieu, Eaton, and other botanists, nor even to emulate Darwin’s “Loves of the Plants.” On the other hand, what novelty did the authoress of the defendants’ book aim at? the same? or none? She claimed none in the arrangement, and that of other writers on flowers, and that especially in the plaintiffs' book, where original, was in some degree followed, as before shown, in transposing notes from the end to the page to which they apply. But even in arrangement the last was not like the plaintiffs’ in a few important particulars. There is not one piece of poetry cited to show the signification, and another piece to show the sentiment, as in the plaintiffs’, but generally only a single piece for each flower, and that to illustrate •merely what she calls the sentiment. But in materials, the defendants’ book furnishes, and professes to furnish, a striking difference. The .poetry», instead of being quoted from American authors of celebrity, like the plaintiffs’, claims to be chiefly original by Miss Edgarton herself, and her title to it is not denied in the answer or the argument. The substance, the staple of the book, is then truly original, and not colora-bly so; as much as if she had undertaken to publish a volume of poetry, chiefly original, on the subject of Flowers. Again, Mrs. Hale’s book, belonging to the plaintiffs, is one in several respects of higher and more ambitious pretensions than the defendants’; pretensions, too, well sustained. It is an octavo volume. It consists of some two hundred and twenty-four pages. It has two colored engravings; has a double index, one to the flowers, and one to their interpretations, and double pieces of poetry to each flower, usually extracted for one purpose from distinguished foreign poets, and for the other from distinguished Americans; and has five pages of instruction and explanations in botanical science, as an introduction; and has been sold per copy at one dollar, or one dollar and twenty-five cents. "While, on the other hand, the defendants, in the preface, claim only the merit of a book on the subject much less expensive, and chiefly original in all its poetry, instead of extracts from eminent writers; and it is only a small duodecimo, instead of an octavo, with but one hundred and fifty-one pages, of that reduced size, instead of two hundred and twenty-four, and of larger size; and it has no scientific introduction on botany, has no plates or engravings, and only one index to the flowers; has no double illustrations of the signification and sentiments, and sells for merely twenty-five cents a copy, or less than one fourth of the price of the other.

On a computation it will be found, that the plaintiffs’ book is on so different a scale as to contain near three times more matter than the defendants’, besides being so different in the substance and originality of it; and that it illustrates many more flowers, being two hundred and thirty, while the defendants’ illustrates only one hundred and forty-eight. The stock used in each per volume, differs in a still greater ratio; and in the defendants’, from its smaller type as well as less matter, is probably not one fourth of that in the plaintiffs'. For a further illustration, using their own favorite language and symbols, both of these works are flowers, and not destitute of charms; but one is more like the magnolia grandiflora or ja-pónica in size and attraction, and the other, like the wayside violet or anemone. They both come from females, with loveliness peculiar to their sex; but they still essentially differ; as one develops matronly experience and more ripened graces, while the other is just opening her buds and blossoms. It will thus be seen, that the book of the defendants is much less complete and useful than that of the plaintiffs; is suited for a different and humbler class of readers; and would, in truth, be little more than an abridgment. if its poetry was not chiefly original, and some of its other features so different. See the case of Johnson’s Itasselas, in Dodsley v. Kinnersley. Amb. 403; Bell v. Walker, 1 Brown, Ch. 451; Gods. Pat. 339. Considering then its form and substance, its design and use, my mind strongly inclines to the conclusion, that the aim of Miss Ed-garton in preparing the defendants’ book was in truth what she describes it to be in her preface, to furnish original poetry on the sentiment of flowers, and to do it in such a form as to be much less expensive, and to circulate in hands, which could not so well afford to purchase the existing and larger and more expensive treatises on that subject. In effecting this object, she did not aspire to novelty in arrangement, or discoveries in science as to botany, but in, some respects copied from others, and among them from Mrs. Hale, as she had a right to do in some degree, and to some extent, if it was not her main.design to compile a like treatise, with only colorable but not real differences. The copying of errors or mistakes in such cases is therefore not unusual, and only shows the fact more clearly of the actual copying in those particulars, but cannot affect the question, whether they are enough in quantity and value to characterize the whole work or its main design to be a piracy. 12 Ves. 270; 17 Ves. 422; 1 East, 363; Mawman v. Tegg, 2 Russ. 385. That depends on other considerations.

Believing then the main design in the defendants’ book to have been different in important respects from that of the plaintiffs’, in regard to the production and publication of original rather than extracted poetry to illustrate the sentiment of flowers, and in several tilings varying in material details from the plaintiffs’, with a view to make it less expensive and to circulate among a different class of readers, rather than be a substitute with the same class, I see in this no infringement on the copyright of the plaintiffs, and do not consider this design and the execution of it to be void, because in carrying it out a use is made in its botanical descriptions of former works to some extent, and their arrangements in part copied. Wilkins v. Aikin, 17 Ves. 422; Gods. Pat. 215; Cary v. Kearsley, 4 Esp. 168. More especially the plaintiffs cannot complain of this, when they have done the same as extensively in respect to others. The nature and value of the parts copied, being chiefly definitions and descriptive epithets, indicate no appropriation of much mental toil in others, any more than does the small quantity. White flowers must in all such books be described as “white,” and red as of a “red hue,” and those from India as belonging to the East; and it is so in like cases, and of like character, in several of the similarities here. 3 Mylne & C. 740; 4 Esp. 168. They could not be described in any other way, if described naturally and truly. But when these copyings or close resemblances have gone further. and beside the few lines of description and the few parts of others have encroached on one feature in the arrangement, new or peculiar in the plaintiffs' book, they do. thus combined, probably constitute a legal infringement of their copyright; but they hardly seem to furnish a sufficient ground for the extraordinary interposition of this court by a permanent injunction. I say, both combined; for in a work of this character, partaking so much, of the nature of a dictionary, these copies of definitions, so few and unimportant in number and value compared with the whole work, are not, independent of following the plaintiffs’ plan, to be regarded as a violation of the plaintiffs’ copyright, when the main design is of a new and different character. They are nothing compared with what is ordinary, and almost inevitable in all new works on such a subject. Nothing compared with what is usual in reviews of a work, and is there allowable as being neither a rival nor substitute. Bramwell v. Halcomb, 3 Mylne & C. 738. Nothing improper in an abridgment. If the leading design is truly to abridge and cheapen the price, and that by mental labor is faithfully done, it is no ground for prosecution by the owner of a copyright of the principal work. Gods. Pat. 238; Gray v. Kussell [Case No. 5,728], But it is otherwise, if the abridgment or similar work be colorable and a mere substitute. Butterworth v. Robinson, 5 Ves. 709. One test of this is the quantity and value of the matter extracted. In 1 Camp. 97, a ease is stated of seventy-five pages copied out of one hundred and eighteen. In 2 Ituss. 38S, the close imitation of copying was twenty pages out of 1’orty-eigkt, or nearly one half, and hence vitiated the work. 11 Sim. 31. And in 1 East, 363, twenty pages were copied lit-eratim et verbatim. Here it is but parts of twenty or thirty lines out of near seven thousand. The former, so great a quantity, indicates theft, animus furandi. The latter, so small a quantity, indicates rather illustration, and comports with the preface acknowledging aid from the plaintiffs’ work, but having some different and material purposes to accomplish, and not being a mere substitute, with no essential changes. Gods. Pat. 216; Eden, Inj. 381, note; Roworth v. Wilkes, 1 Camp. 97; 2 Kent, Comm. 382; 8 Ves. 225. Where nine tenths was copied, an injunction was clearly proper (1 East, 358), but not where only one tenth was copied (Amb. 403). See, also, Folsom v. Marsh [Case No. 4,901]. Or as here, not one two-hundredth.

But the aspect of this case becomes somewhat different and more favorable to the complainants. when we add to this the other circumstance, that a small part of the novelty in the arrangement has been imitated. Though small in value, such an imitation or appropriation of another’s invention may be actionable; and the subject of an injunction, perhaps, if easily separated from the rest of the book. Emerson v. Davies [supra]; Lewis v. Fullarton, 2 Beav. 6; Barfield v. Nicholson, 2 Sim. & S. 1, 6; 16 Ves. 270; Wilkins v. Aikin, 17 Ves. 424; Stockdale’s Case. 12 Ves. 270; Gray v. Russell [supra]. But it is doubtful, whether this small transfer of matter to a new place is sufficient alone to sustain a copyright, without some new and additional materials; and more doubtful still whether an injunction ought to issue, when the whole is pervaded or leavened by it, and the whole destroyed on account of it, rather than damages given only to the extent or value of the encroachment. But here the adoption of the new feature in the arrangement, however small it be, pervades the whole work, and no permanent injunction can issue against it without destroying the whole work as now compiled. I think, therefore, that such a remedy, applied to a case situated like this, would be disproportionate, unsuited to the case, and hence unjust. Whatever damages the plaintiffs have thus sustained may, however, be obtained by a suit at law, without destroying the whole work; and that is therefore the more equitable relief in a state of facts like these. Drew. Inj. 199; Bell v. Whitehead. 17 Law J. 441 [8 Law J. Ch. (N. S.) 141]; 9 Law J. Ch. (N. S.) 323; 1 East, 385. On the contrary, where the violation is clear, and the part copied can readily be separated, then an injunction is usually proper against that part. London Lat. Comp. v. Bedells, Webst. Pat. 140; 13 Rep. of Arts, 167; Emerson v. Davies [supra]. So, where a party wilfully mixes or interweaves the property of another, with his own, with a bad motive, and so as not to be easily separated. he may bo required at times to lose the whole. 2 Russ. 385; 2 Brown, Ch. 85. But here the motive does not seem to have been culpable, the plan cannot be separated from the work, and the plaintiffs can obtain ample redress at law in damages, without destroying the whole.

Both parties have relied upon the opinion of the district judge in this case, being in their favor, when refusing a temporary injunction, but ordering an account of sales to be kept and the plates not sold. He thought more light would be flung on the case at the final hearing, by the testimony of Hiss Edgarton being particular as to the extent she used and meant to use the plaintiffs’ book. But neither party have asked leave to offer it, and the inclination of his mind seems to have been, that the part of the arrangement claimed to be original by the plaintiffs, and followed by the defendants, was hardly sufficient to justify an injunction. A novelty in arrangement, especially so trifling as this, without any new material connected with it, seemed to him, and still seems to him to be, of questionable sufficiency to be protected by a copyright. The master seemed to be of the same opinion, on the ground “De minimis non curat lex.” Slight changes, like the use of chapters and verses, where none existed before, as some hundreds of years ago in the Bible. or the introduction of punctuation, which is said not now to exist generally in acts of parliament. or the use of sections instead of pages, which in modern times is reviving only an ancient practice, would all have higher claims to novelty and usefulness, than merely transferring the same material from one page at the end to another in the central part of a book, as here. Some machines have been changed merely by inverting their position; but they are not deemed entitled to protection. But, however this may be sufficient or not, to claim legal protection (and I am inclined to think it is.), my opinion, as before intimated, is, that the use of it should not be enjoined against, when it runs through the whole book, and cannot be separated from the rest. It would generally be equitable and just to let the party, under such circumstances, seek redress for it by damages in a suit at law. It is not a suitable case for the exercise of a peremptory injunction, which is chiefly to aid legal rights, and in cases of copyrights runs against specific parts copied. It is usually done to work substantial justice between the parties, rather thaq destroy the whole book of the defendants, for the small infringement in the arrangement, if otherwise it was novel, and unexceptionable, and useful to the community. See cases where a part may be enjoined against, 17 Ves. 422; 11 Sim. 31; 2 Russ. 385; 3 Mylne & C. 737.

This conclusion renders it unnecessary to decide on the point how far the conduct of the plaintiffs, in the purchase and sale of the work of the defendants, and in some delay to prosecute, should bar this application, though redress might perhaps be still had at law. On this see Eden, Inj. 207; 7 Ves. 1; 19 Ves. 447; 3 Mylne & C. 711; Rundell v. Murray. Jac. 311; Lewis v. Chapman, 3 Beav. 133; 8 Ves. 224. note. And for the same reason, the motion by the defendants to file a supplemental answer, in order to allege that matter more specifically, need not be acted on. On the necessity for this, see 2 Daniell, Ch. Prac. 814; Taylor v. Carpenter [Case No. 13,784]; Doggett v. Emerson [Id. 3,908]. Delay in this bill is also urged against it; but length of time so as to bar, by any statute of limitation, must be pleaded. 19 Ves. 447; 2 Jac. 311; cases cited in Hunter v. Marlboro’ [Case No. 6.908]; Taylor v. Benham, 5 How. [46 U. S. 233. And if to bar, independent of the statute, a change of circumstances and injury by the delay must appear.

Another point made was, the master’s refusal to go into an inquiry as to the extent of color-able imitations. Though in the master’s situation I should have been disposed to make the inquiry, there was some ground for his refusal, after the hearing was over, it not having been pressed before. It is pretty decisive, however, that such instances were not frequent, or they would earlier have been suggested, or could more readily be pointed out. And there is no pretence that they can exist in the great mass of the defendants' book, as it professes to be original matter, and no exception has been made that it is not truly original.

The intent not to be guilty of piracy, which has likewise been referred to in the argument, would not be material, if much had actually been copied, and the new work was a mere substitute. But if this be doubtful, the intent not to pilfer from another, colorably or otherwise. for the substantial portions of the new work, may be important. In fine, as, from all the evidence in this case, it seems quite clear, that the main intent was to make a much cheaper work, and one with original poetry, rather than colorably to republish the plaintiffs’ -or any similar book, I think the prayer for an injunction must be refused.