• BtiTRNELL ";CROWN.
  

993'

lation of the peIialltiws of'the state'; It was 80 held: by tliesupreme court of Illinois in Kennedy v. People, 122 Ill. 649, 13 213; and to the same effect are v. Fowle, 1 Saw"., 497, Fed. Cas. No. 6,041; U.S. v. Walsh, 1 Abb. Fed. 16,635; Ex parte Bergman, 18 Nev. 331, 4 Pac. ,209; Harris v. Bridges, 57 Ga. 407; McCool v. State, 23 Ind. 131; Long v. McLean, 88N. C. 4; Lathrop v 39 Barb. 396; Cooley, Const. Lim. (4th Ed.) .· The appeal in the first case is dismissed, and the judgment iri the other case affirmed at the cost of the
BURNELL v. CHOWN et aL (Circuit Court, N. D. Ohio, W. D. October'22, 1895.) No. 1,266.

f

1.

An averment that a printed title of a book was furnishei{ to the Ii,brarian of congress by complainant,and "thereafter; within the time and in the manner prescribed ,by' law, your orator did all the things required by law to be done in order to secure to himself the full ment of all rights apd privileges" granted by the, copyright laws, is to,sufficient to show title. It must be directly averred that, within 10 days after publication, two' copies of the' book were deposited in' the office' of the librarian of congress.
SAME-!NFRINGEMENT-COMPIJ,ATION SHOWING FINANCIAL STANDING.

TV OBTJ\IN-PLEADING.

'

",

'.

)

'., ....

"

I.

Complainant conceived and put in operation a scheme for collecting, classifying, and putting in convenient form information in .respect t<;> the financial standing of business men in towns or counties, with a key thereto,the same being intended for the use of business men intbe same locality or district. Defendants, by means of the. same method of c<;>llecting,classifying, etc., obtained, ·Qy their own original efforts, .like information in respect to the standing of parties in a different county. Held, that this was not an infringement of complainant's right of coPYright, under the statute, or of his common-law right of property in his own compilation, in case the mere private and limited circulation thereof should be as not amounting to a publication. Perris v. Hexamer, 99 U. S. 674, applied.

This was a bill in equity by A. So Burnell against C. M. Chown, E. G. Chown, and the Chown Commercial Company, to enjoin an alleged infringement of a copyright.
The bill avers that the plaintiff is a citizen and resident of the state of Iowa, that he concei'ved the plan of gathering and imparting the information referred to in the opinion, and used the same by cir'culating bound copies of said information to subscribers in various localities. He that the defendant, after having fully. acquainted himself with the plaintiff's conception and plan of adapting the same to the uses of business men, went to the city of Lima, In the county of Allen, in the Northel'll district of Ohio, and there, without license or authority from the plaintiff. and with the purpose and intent of infringing upon his rights, began the work of collecting information and imparting the same to business men in that eounty. The key which plaintiff used In his work is as follows: N-Prompt pay, and financially good. P-Prompt pay, regardless of means. W-Slow pay. but financially good. G-Slowpay, and limited means. cash on delivery.

v.69F.no.l0-63

J'EDElU'L:REPOBTEB,

vol. 69.

... 1tey, follows: . A,"":;!':l:'oJipt··pay, and·gOpd;for Jarge aIDounts. wad and. gooq ,.for sll',lall" amounts,. Jr-.;.Slo\Vpay,' but good fot' large amounts.. M:-'-SIow pay,but good' :rOt' moderate amounts. X-Require" cJish on 4eliy.ery.
tiff. ' M. A. Houguciid, for "

""

James M.:Brown; WalterF. Brown, and D. C. Henderson, for plain·

RICKS, District Judge. This is a bill, filed by the plaintiff, asking for an injunction to, prel"ent the defendants: from appropriating, or in any idea, book, and record of obtaining, collecting, classifying, putting into convenient form, and making record thereof, for the uses of business men, the experiences of busine,ss men''1with '\Vith them on credit, and of ' leasing, selling Or deliverjng such, experiences and records to any person whatever,", which ideas,conceptions, etc., are fully setout in thebilI. The bill avers, in substance, that the plaintiff conceived the idea. of gathering, ftolD personal investigation and labor, the standing of citizens, with, respect to their credit, in certain localities, sometimes embracing' cities, sometimes counties, and sometimes a wider territory. The standing and credit of these citizens were expressed by letters and num.bers, in a manner which served as a key, business men within the same territory, dealing with and from. such citizens, might at a glance ascertain their credit, their financial standing, their promptness in the payment of their debts, and such other 1'nformation of that character, useful to merchants, manufacturers, and ,dealers. This information, so arranged, was put in the form of bound volumes, either typewritten or printed, and sold to subscribers only. The matter was intended for the special and private information of the persons who pm"chased this compilation. The averment of the bill is that one of the defendants served for a number of years in the office of the plaintiff, there learned of this conception, idea, plan, and arrangement for collecting and imparting this information, and afterwards associated with him the other defendants, who made a similar publication for use in Ohio and elsewhere. The bill avers, in .one part, that a printed title of this book was furnished the librarian of congress, under the copyright law, and subsequently avers that "thereafter, within the time and in the manner presctibed.by law, your orator did all the things required by law to be done. in order to secure to himself the full enjoyment of all rights and privileges granted by the laws of theland governing copyrights." A demurrer was filed to this bill. One of the grounds for demurrer is that the bill does not aver what was done by the plaintiff in order to entitle him to the benefit and protection of the copyright laws of the United States, andreferen'ce is more particularly made to the paragraph just quoted as being a conclusion of law, and wholly insufficient to show that the plaintiff has complied with the statutory requirements in. order to entitle him to protection under

BURNELL' e. CROWN.

995

ilie copyright laws. In view of the closing part of the tirie' for the plaintiff, I do not know that it is necessary to pass upon this question; but, being left still uncertain as to whether the plaintiff relies upon his common-law rights or statutory rights for protection, I proeeed to consider this ground of demurrer. The copyright aet provides explicitly just what authors and publishers shall do in order to entitle them to protection under that act. One mthese requirements is that, within 10 days after publication, two copies of the book shall be deposited in the offi'ee of the librarian of congress. I think this is afaet which must be averred in order to show affirmatively that the plaintiff has complied with the statute. Plaintiff's solicitor, in the closing paragraph of his brief, says:
"But all the foregoing authorities are in cases for infringement of copyt'lght under the statute. Our case Is one where the scheme,. plan, and con· -ceptlon of the author, which is being appropriated by the defendants, has never been published, and although he has taken steps to protect himself if be should publish the same, yet, never having pUblished the same, all his 'Common-law rights are preserved in full force,'"

It may therefore be proper to consider this controversy with ref· -erence to plaintiff's rights at common law. The American Trotting Register Association, in 1894, filed a bill in this court to restrain W. H. Gocher and A. W. Parrish from pUQlishing a list of trotters and pacers having made a record of 2 :30 or better. The bill proceeded upon the charge that the complainant had compiled such a list of horses, published in what is known as -"Wallace's Year BookS," which compilation was the result of original information and facts gathered from original sources by complainant's industry, and at its expense. In the answer, the defendants elaimed that all the facts stated in complainant's books were obtainable from other independent sources, and exhibited to the court a large number of publications which contained lists of trotters and pacers having the records stated by complainant Affidavits were filed on both sides, which' proved that, while the defendants might have been able to compile all of their information from original sourres, yet it was apparent, from the evidence, that they did not do so, but availed themselves of the industry of the complainant, and did use tables which it compiled at great expense and labor. In that ease, this court held:
"A mere compilation of facts is protected by the copyright law, as well as original matter showing invention. There are numerous cases which hold that any compilation, or any tables or statistics, which are the result of the author's industry, and which are gathered at his expense, cannot be bodily used by an infringer. Although the same facts could be gathered ·by the infringer, he must do so at his own expense, and as the result of his -own industry. It would be wrong to permit him to extract bodily from a ,copyrighted book tables, facts, and statistics, and hand them over to the :printer in the form the copyrighter has prepared them, merely because it was more convenient for the printer. It he were permitted to do this, he would avail himself directly of the industry and expense to which the periIOD who copyrighted the work was. subjected," 70 Fed. 237.

In this case, the plaintiff has gone to original sources of information, and by great industry and by some originality has compiled this information, and has conceived a plan by which it could be imparted

996

FEDERAL BEP6RTEB,

yol. 69.

ina V'eny clear rand' sPIi!e;dy way forthe.infoJ.'IIlation! of' those who purqhased ilhe right to use :it. BuUt :will hardly· be contended that, beCauSeffohn Smith gathered infotmation as to the ·credit, business method:s>,atandardforp:romptpayment of debts, etc., of all the citi· zenll ().f;the city· of Toledo, and arranged a plan by, which this infor· malmon might be imparted, by the<use of a key, to the merchants of theupity of Toledo, rthat ·therefore, James Jone$ could not, by his ownindustry,research,:and labor, gather similar information as to ineniu"Cuyahoga, county, and impart that information by some similar. plaiJl;;or. key to the: merchants 'of Cuyahoga county. The latter cannot be said to have copied the production of the former. Con· general plan of John Smith, he nevertbeless gathered his information·as the result of bis own in· at his own expense. . The only thing that the general 'plan of imparting this informaJ.iootoU1q§e who purchased the production of his labor. Would he, by doing this, violate the law? ' , In thg J;leI,'risv, R.exawer, 99 U. S. 674, the supreme court held:""" '", .. , , '
,"The rigpt "qf:anauthor,Qr a pUbiisher, under the copyright law, is in'fringed oJ;1ly' ''When other pers'ons'prodti'ce a substantial copy of the whole, or of a inate'I'lil} 'part, of'the book or other thing for which he secured a therefore,· the owners of 'a copyright for maps of certain copyright.' . wards ot of New surveye4. under the direction of insurance ,¢ said city, wbJcll exhibit each lot and building, and the classes as shown by tM different colbringand characters set fonh in the reference.' brought his: bill "to restrain the publication of similar maps of the city of Philadelphia, held, that the bilI could not be sustained."

"The tn'anl! were made after a careful survey and examination of the lots and bUildings in the enumerated ward's of theeity; and were so marked with arbitrary coloring and signs, explained by a reference or key, that an ,insurer could see at a were the general characteristics of tIle differentbuildings within the territory delineated, and many other details , of construction and necessary for his information when taking risks. . They are useful contrivances for the dispatch of business, but of no ,value whatever except in c()nnection with the identical property they purport to describe." made the ,necessary examination and survey, and pub. lished a series of maps of Philadelphia. At first, he used substantially the same. system of colpring and signs, and consequently substantially the same key" that had, be'eJ,ladopted by the complainants. but afterwards he changed. bi!> signs sO)J.lewhat, and, of course, changed his key. 'l"he question we 'areJo conSider is Whether the Pllblication of the defendant infringes the copyright of. the complainants, and. we thInk It does not. A ,1;cQPyright give's the lluthor' br,publisher the exclusive right multiplying ¢opies of what he has written or printed.· * *. It needs no argument to show that, tliedefendant'smaps are not copies, either in wliole or in part, of those .of tM <:omplainants.'l'hey are arranged sUbstantially on the same plan, but of the represent Philadelphia, while those of the complainant reijresent New York. They arc not only not copies of each o1rher,bu1l<iheydo, notcony'ey. the same information."

Chief Justice Waite, in 'delivering the opinion of the court, after stating the fl1Cts, said, with reference to the map of the city of New York: ' '

NoW,while this is ac·Mt! underthecopyrigbt law, the principle is -the same under the common law, and it seems to me it is applicable

BURNELL ". CROWN.

99'1

to the' case under consideration. The defendant, in this suit, has adopted the same plan forgathering his information, and the same plan for imparting his information. But the information does not concern the same persons, is not to be used by the same persons, and is concerning a people living in a territory entirely different from that covered by the plaintiff's publication. The most that Cl'n be claimed on behalf of the plaintiff is that the defendant has appropriated his scheme, device, conception, and idea for gathering and imparting this particularinformation. Many books copyrighted sharetlre same fate, without infringement. An author conceives a plot for a novel. He locates his characters, surrounds them with scenery, climate, productions, and customs pecul,iar to that locality. He weaves the thread of his novel, and has his' characters born, married, and die, according to his plot. His book is copyrighted ?-cceptedby the {'ubHc as one of' thrilling interest, and thousands and tens thousands of copies are sold. Another author selects his characters, locates them in a different climate or country, with different surroundings, has substantially the same plot as to their birth, life, and death, and the book meets with equally popular reception. OIle in in a copy of the other; yet the second writer unquestionably adopted the design, the scheme, the plot, and many of the ideas of'the former. The framework and the are the same, the book is the product of as much industry, knowledge, and literary ability as the former, but is not, within legal terms, an infringement. But it is contended that this information, so gathered and compiled by the plaintiff, has never been published; that it is his own private property, and he has a right to protect himself against this publication. Conceding that, according to the averments of the bill, there has been no publication of the plaintiff's work, within the meaning of the law, the work has nevertheless been put in the form of a book or manuscript for convenient reference and use, and has been circulated among those who have purchased copies of it. Whether this is a legal publication or not is immaterial. As before stated. in my judgment, they have not made a copy of it which would be an infringement under the copyright law, or an invasion of the plaintiff's rights under the common law. Even if this is unpublished, and still private manuscript, the defendants have not copied it, any more than the map of Philadelphia was a copy of the map of New York, in the case cited in 99 U. S. In that case, the defendant's map had a key, had arbitrary signals and signs by which the information was imparted to those who bought the map, just as in this case the defendants use a key similar in plan to the plaintiff's, and his general plan for imparting the information they have gathered. In the latter case there is no more a copy than there was· in the case of the map. The defendants are not appropriating to any extent, or iIi any respect, the result of the labor, research, and industry of the plaintiff, by which the information for his publications or manuscript has been gathered. They have simply availed themselves of the plan by which this information was ascertained and imparted, and have shown just as mach industry, have gone to sources of original infor'mation, and have at great expensecomlliled their information, aDd

998

I'EDEBAL REPORTER,

vol. 69.

used It. .Admitting that they have gathered this information and seek to impart it upon the same plan which the plaintiff has con· ceivedand originated, that conception is not a matter which can be protected by either the copyright law or the common law. For these reasons, I think the demurrer must be sustained, and the bill dismissed.
HOORE MANUFACTURING & FOUNDRY CO. v. CRONK HANGER CO. et a1. (Circuit Court, N. D. New York. October 15, 1895.) No. 6.325.
P4TENTll-INFRINGEHENT SUITS-BILL BY LICENSEE-NECESSARY PARTms.

A patebtee entered into an agreement by which he "licenses, empowers, and authorizes the said company to make, use, and sell for use throughout the United States" any devices secured by his letters patent, "the said license and authority to exist only for six years"; and, "in case said company desires it, they may terminate said license and their liability under It by serving a written notice upon" said patentee. Held that, In an action tor infringement, the grantee cannot sue without joining the patentee as a party complainant.

This was a bill by the Moore Manufacturing & Foundry Company against the Cronk Hanger Company and others for alleged infringement of a patent. Benedict & Morsell, for complainant. Charles H. Duell, for defendants. COXE, District Judge. The amended bill contains the written agreement under which the complainants assert title to the patents in suit. It provides as follows:
"The I!laid Moore [the patentee] hereby licenses, empowers and authorites the said company [the complainants] to make, use and sell for use throughout the United States, exclusive of all others, any and all of the devices secured by letters patent of the United States Issued to said Moore, * · · the said license and authority to exist only for six years from and after the 1st day of August, 1893. * * * In case said company desires it, they may terminate said license and their liability under It, by serving a written notice upon said Moore that they so elect, and paying to him all royJ\lties due thereunder up to the date of service of such notice."

The ground of demuITer is that the complainants are licensees merely and cannot maintain the bill alone,-Moore being the owner of the legal title and a necessary party to the suit. The instrument referred to is, upon its face, a license. It calls itself a license over and over again. This fact, though not controlling, is significant as showing the intent of the parties. The license is not for the full term of the patents, but six years only, a part of the consideration beIng the yearly payment, in semi-monthly installments, of $3,000, "as royalty or license fees." The complainants have the right at any time to terminate "said license." It is a personal license merely. There are no words permitting a transfer by the complainants. Walter A. Wood Harvester Co. v. Minneapolis-Esterly Harvester Co., 61 Fed. 256; Nail Factory v. Corning, 14 How. 193. It does not give complainants all that Moore possessed.. patent "grants" to