Jewelers' Mercantile Agency, Ltd. v. Jewelers' Weekly Publishing Co.

The judgment appealed from enjoined the defendants from making any use of the plaintiff’s reference books or confidential sheets, and from copying, appropriating, printing, publishing, or using in any way, information taken therefrom, or furnishing such information to others. Such judgment is based on the following facts found by the court: The plaintiff, a domestic -corporation organized in 1883, has ever since been engaged in the business of a mercantile agency, which consisted in obtaining from various sources information regarding the places of business, street addresses, particular kinds and extent of business, commercial standing and mercantile credit, of individuals, firms, and corporations engaged in the jewelry trade, throughout the United States ■and Canada, and in furnishing confidentially, for the use of subscribers, such information. This information, obtained at considerable expense, is twice a year printed in the form of a reference book, which is furnished exclusively for the use of plaintiff’s subscribers. A duplicate, of smaller'form, is furnished upon like conditions. These books are leased to subscribers, upon a contract printed in each, which restricts the use of the book, and requires its return to the plaintiff, no copy of the book ever being sold. The plaintiff also issues weekly to subscribers a confidential sheet of changes and corrections, furnished subject .to the conditions of subscription. The defendant corporation was organized in January, 1891. This corporation took over the business which before had been carried on by the defendant Rothschild, and still earlier by both of the individual defendants. Some time prior to the incorporation, the individual defendants had been subscribers to the plaintiff’s book, but their subscription ended in 1886, and was not renewed. Prior to the defendant’s incorporation, one Keller suggested to Rothschild the issue of a “jewelers’ weekly complete -directory,” and he was permitted to undertake the compilation of the book, without special oversight on the part of Rothschild, or other officers of the corporation. Much of the information thus ■compiled was obtained by copying names and addresses from directories belonging to the Trow Directory Company, except for those states of which that company had no directory; and, in respect to these, a list of jewelers was furnished, which, according to the statement of a manager of the directory company, was purchased from a lady named White, without inquiries as to where -she got it. This book, when printed and issued, was sold for $3 a copy, and came in direct competition with plaintiff’s reference book, for the use of which plaintiff received from subscribers $75 a year.

Plaintiff’s claim, in substance, is that the defendants unlawfully

Upon such testimony, and the evidence appearing, and the books themselves, the court below found that the defendant corporation’s book contained material information, directly copied or otherwise appropriated from the plaintiff’s confidential reference book, and that the information so-copied and appropriated formed an important and necessary part of the defendant corporation's directory; that such acts, unless restrained, would be a substantial injury to the plaintiff in its business,—and directed the entry of the judgment appealed from. To obtain a reversal of such judgment, the defendants insist (1) that this court has not jurisdiction to grant any relief in this action, because the work from which it is claimed information was wrongfully taken is a copyrighted work; (2) that this action cannot be maintained by the plaintiff, because it has lost any literary property it ever had in its reference book of July, 1890, by publishing the same ; (3) that no information contained in the defendant’s book was ever obtained by it or its-agents, in any way, from any of the plaintiff’s books of July, 1890, or from any of its books or sheets; (4) that the complaint against Rothschild and Ulman must be dismissed on the merits, as the plaintiff offered no testimony to substantiate its charges, made against them in its complaint.

First, upon the question of jurisdiction. The plaintiff did not, in its complaint or upon the trial, invoke the copyright law, or seek a remedy for a violation of its copyright. It stood upon its common-law right to unpublished material, in which it insisted it had always retained exclusive property. It is not necessary for us to determine whether, had it obtained a copyright, and waiving its remedy thereunder, it could stand upon its common-law right, though there appears to be authority for the proposition that the statute conferring jurisdiction in cases relating to copyrights upon-the federal courts does not affect any pre-existing jurisdiction which exists at common law independently of all statutes. Isaacs

“ But if jurisdiction is, by the statute, conferred upon the federal courts in a case like this, the act does not purport to, and does not, make the jurisdiction exclusive, or deprive state courts of jurisdiction in actions, legal or equitable, touching the common-law rights of authors. At most, the statute gives parties within its provisions, and not claiming the benefits of a copyright under the laws of the United States, a cumulative remedy, and a choice of tribunals. The jurisdiction of the state courts, in cases in which it had before been exercised, was not taken away, or in any respect impaired.”

There is nothing inconsistent with those cases in that of Potter v. McPherson, 21 Hun, 562 , relied upon by the appellants, which holds that:

“If the book lias been copyrighted under the laws of the United State, while that would secure to the plaintiff the right to restrain its publication by the defendant, under those laws, it would not afford this court jurisdiction over the subject-matter of the controversy.”

Potter v. McPherson is authority for holding that where the plaintiff seeks a remedy, under the copyright law, for an injury to property rights thus secured, the United States courts have exclusive jurisdiction. Where, however, as here, no remedy is sought under the copyright law, but the plaintiff is standing upon its common-law rights, this court, seemingly, would have jurisdiction. It is unnecessary for us authoritatively to decide this question, however, for the reason that no copyright was secured by the plaintiff. It is true that the initiatory steps were taken with a view to acquiring such rights, but the failure torn ake a publication essential to obtain a copyright prevented the securing of the same. As held in Boucicault v. Hart, 13 Blatchf. 47 , Fed. Cas. No. 1,692, publication must be made within a reasonable time after entry of the title and deposit of the two copies. And, for a definition of “publication,” we find it stated in Drone on Copyright (page 284):

“ A book is published when printed copies are sold unconditionally to the public. To constitute a publication, it is essential that the work shall be exposed for sale, or gratuitously offered, to-the general public, so that the public, without discrimination as to> persons, may have an opportunity to enjoy that for which protection is granted. Printing, itself, cannot amount to a publication,, for the obvious reason that a book may be withheld from the pub- ” lie long after it is printed.”

We think, therefore, that as the plaintiff never secured a copyright, and as this would prevent the relief it has sought upon an application to the federal courts, this court had jurisdiction to entertain the action, and, upon suitable proof, to grant relief.

This conclusion, to some extent, disposes of the appellants’ second assignment of error,—that plaintiff, by reason of publishing its reference book in various ways, had lost any literary property it ever

Apart, however, from this, the appellants insist that plaintiff has lost its common-law right to any literary property it ever had in its reference books, by printing and offering them to any one who would become a subscriber, and that the mere making of a contract with the subscriber to return the book, and keep the information confidential, is not sufficient to make the publication a restricted one. In this we think the appellants overlooked the facts appearing, that the book was never sold, and that its use was restricted; and, though printed and issued to subscribers, this was not such a publication as would destroy the plaintiff’s original property rights in the book. We think the authorities amply ■support the respondent’s view that, both in England and in this country, an author or compiler has the right to his literary property, at common law, without0 respect to the copyright statutes, and that, although such right may be lost by publication, yet a person may print any number of copies, of which he remains the owner, and, by contract, may so restrict their use to those to whom he lends them as to retain his original rights. This has repeatedly been held to be the law with respect to trade and other directories. Kelly v. Morris, L. R. 1 Eq. 697 ; Morris v. Aslibee, L. R. 7 Eq. 34; Prince Albert v. Strange, 1 Mac. & G. 25 ; Palmer v. De Witt, 47 N. Y. 532 ; Sold and Stock Telegraph Co. v. Todd, 17 Hun, 548 ; Kiernan v. Manhattan Quotation Telegraph Co., 50 How. Pr. 194 ; Tabor v. Hoffman, 118 N. Y. 30 , 34; 27 St. Rep. 756 ; High. Inj. §§ 994, 996, 1011. Nor do we think that the selling or offering to sell the names and addresses contained in the books on envelopes sent by it to .nonsubscribers would constitute a publication, so as to destroy the plaintiff’s literary property in ■such books.

In regard to testimony as to the correct spelling of the names -of jewelers, such evidence, when first offered, was objected to upon the ground that the plaintiff’s book in which the names were -contained was copyrighted; and this objection, which was made, not only to such testimony, but to the plaintiff’s books themselves, was, of course, properly overruled, for the reason already stated,—that the court had jurisdiction. So the objection to what the witness said as to how one of the jewelers was doing business, if placed upon the ground of hearsay, might have been good. But the objection to such evidence was that it was immaterial, and, in view of the issues, the fact which such evidence was elicited to prove was very material. It is true that, at the close of the testimony in which instances in the state of New York were given of misspelled names, a motion was made to strike out, as hearsay, all the evidence as to what was told the witness by persons whom he saw, as to their correct names. But this motion was properly denied, and for the reason stated by the trial judge,—that no objection to the admission of such testimony was taken when offered. It will not do to take a general object which is not good, or speculate upon what a witness may testify to, and then, if not agreeable to the one against whom the testimony is given, move to strike out such testimony, or, upon appeal, seek to destroy the effect thereof by presenting specific objections, which would have been good, had they been presented at the time the testimony was taken.

The only serious question presented is whether, upon the testimony, which was amply sufficient to sustain the judgment as against the company, there was enough to support the complaint ns against the defendants Rothschild and Ulman. The court, in two

Upon the whole case we think the conclusion of the trial judge-—that the plaintiff had exclusive rights of property in its book, and in its confidential sheets and their contents, and that the publication by the defendant corporation in its directory of information copied or appropriated from the plaintiff’s reference book, issued confidentially to its subscribers in July, 1890, was a violation of the plaintiff’s right of property, and tended to produce, and continued to produce, substantial injury to it, for which the plaintiff had no adequate remedy át law—was right, and justified the issuance of the injunction. As said upon the argument, exclusive of the question of costs, which, as compared with the labor and expense entailed upon the defendants by the preparation of the record and of this appeal, was not serious, we fail to see, if the defendants’ disclaimer of taking the plaintiff’s property was sincere, how they would be injured by the injunction. The reason,

All concur.