944
I'EDEBAL REl'ORTll:R,
vol. 49.
infringement, w:biah is aCQordingly so ordered and with of suit to be against the defendant. The usual reference WM1' be had, if desired, by complainant.
,,'J4EB,RIAlrI tt al. : ", :; i
SIl"'l'INOSPUB; Co. , ·.
j
OOu'i't,B. .'
York. March 16, 1898.) ··
1.
The',d,ate I,811!l'PQ, ,the titie-pa, a, re"p,rint of webster,,'S, Dictionary, edition of 1847,-the ,Ojlptright haviDll eltpll'll4.-indicatell the date it was printed, and is not a revres6nU,Uon' 'tll1at it is anew Ei41tion 'of that year, though the book does no\ 'tepreseDt itPlf·tp )be a mere reprlnt. " . Defendant advertised a reprint of 1847 edition of Webster'. Dictionary, tbe COPYllig,bt' pired,'as "lates,t ed,it,iO,n, 10,000 n,ew, word.. " etc., Old, price IS,i, and tbat ne,\" low price, of 'I was ppssibleb,1,tmprQvements ill maChinery, etc. bn application of owner of tbe copyright,of llubsectuenteditiolill, ttl,at def,em,4,1\11,tbe,' ,enjoiBe,d',agai, nst"ithe .fu,rtber ciro,Ulati"OU of suoh ,misleading, , advertiseJl1entl"an!l already extensive circulation, apfinted slip must'therelilier be til' etch book, stating it to be a reprint of the edi· tion of 1841; " ' :, ' , ,,!6JI:,
..
,
. ,
'
"
There is cllaracteristicof a traCie-mark in the words "Webster's I>lctiGn"ry , 'orin the torm of that workasulfually printed by G. & C. Merriam., Buoh ... to prevent Ql!e ,by others in "publillbing old e!litioDB on whioh copyright 1lu. expired. Merriam v. Slwe 00., .7 hQ.,Rep. 411, ,
no
In Equity. ,am bl Siftings PUbJi,sqilig COmpanr Charles N.,Judicm, forplamtIffs. . Pierce &:Pi8her, for defendant.
and others Granted. ' "
the Texa.t .
SHIPMAN, Distnot JUdge,' This is .. bill in equity, brought by" the plaintiffs, Wh9, and are owners, of the copyrights in ,various editiona and publishers thereof, to restrain of Webster's 1Jnapridged fo,r sale" or selling a c4eap reprint of the edithe, tionof 184:7 import that it is a copy ofthe edition Qf one of its successors, upon whjch editions the plaintiffs have a large amol,lnt of money, and which have had a Tpe bill is not\>ased upon any supposed trade-mark high Dictionary." It has no, substantial foun. rights in imitation, or simulation of the external appeardation upqn any ance of the edition of 1864. Its proper foundation is upon the alleged atte;mptB of the defendaJ;lt to wss off upon the public a reproductiQp ofan.infe.ril;>r edition which hJld long since gone out of the market as the superior and widely known edition which and int9 published by the plaintiffs or their predecessors had been at great expense. The bill alleges, in substance, as follows: That the edition of1864:, whi,ch was p,ublished originally by the firm of G. & C.
MERRIAM V. TEXAS SIFTINGS PUB. CO.
945
Merriam (the predecessors of complainants) was a complete revision of the earlier editions of the same dictionary, compiled and edited by Noah Webster and others,at ,and before the year 1847, and was revised at the expense ofS1lid G.& C.Merriam, and direction of Rev. Noah Porler, D. D., and others, aod was at great expense printed and published by said firm, which had the exclqsive right to publish and sell The Merdaffis had puplished an edition of 1847, which was a, revised edition of the original edition ,of Webster's Dictionary printed in the 1828., Said dictionary ofl847 was at the time of its publicaof considerable value, llnd was justly esteemed, and was commonly known trade as the "Edition of 1847." To it the pUl>in the year 1859, added numerons improvements, such as tables of illustrations, synonyms, an appendix of new words, etc., and the book copyrighted, and, became known to the public as the "Edltion,Qf t859." The dictionary of 1847, so improved, bore upon its title-page,a Atatement that the same was revised an4 by U Chauncey A.Goodrich," and upon the pages immediatelyf6110wing the titlepMea as to the times when the same was"copyrightedj and, upon following, the publisher's preface, and a succinct his'tory ,of eai(i, edition in the form of an essay Revised Editiop,"",l,;h the dfl.te thereof; and, npon the ,pages immediatelY,following a history of the several editions ofaaic! dictionary and ofsail,l, No4tllWebster, from Which the date of publication and copyright thereof,and of the prior editions Oou1d easily be gathered. The exclusive right to print, publish, and' sell said book up to the year 1889, under copyright 1aw:s of the United States" belonged to said G. &0. Merriam and their successors, who continulldtio publish and sell the same up to the time of the publication of the revised edition of 1864, and thereupon said books of 1847 and 1859 were withdrawn from the market, and said book alone became known among the trade and by purchasers as Dictionary, Unabridged," and supplanted and rendered obsolete all previous editions of said dictionary, and thereafter no copies of any editions previous to 1864 were printed, or were bought and sold, except as second.hand books. Subsequently said G. & C. MerriaDl' for the, purpose ofmaking said book still more valuable, in the year 1879 of the year 1864, containing a added a supplement to the large number of new words, and in the year 1884 added a fUrther new and still larger supplemel)t or appendix to this same dictionary, containing new tables, aU whiCh 'additions said G. & C. Merriam made a part of said dictiomiry by binding the same together, and sold the same as separate and,9istinct editions thereof, under and by the same name of Webster's, Dictionary,. or Webster's Unabridged Dictionary, and by which said dictionary of the year 1847 was rendered still further obsolete and unsalable, each of which editions were duly copyrighted. That there is se.t forth in, each copy of said book of 1864, as well as in each copy of all later editions of said dictionary l a history of each of the editions, together statement of the year when the same, and each of them, was by means of which the exact dates of composition and of v.49F.no.1l--60
.0'
mtmAL
V'o1.49.
lHio:\Vn,'oroould: be Rscerderi;1and was fQrtbe #y.()f tha,yoo:l' 1864; wIth its,salds1;ipplement ",ail in State,s of tIiElEn$l;l'sb-speakiog':WpiId: .·. By rea?Ct,he in edihorl'of 'the year 1864, wIth .saId :at fair . reUtil'for lefl$ th an 'about$!2 a ,copt, arid at 'wIMleslile for less than 88 to 810 a oopy;WpiJe 'said wlflibut !lold ,ftir;' : and can now be, bought, only, at book-store, for about 82 aq°I>Y· ..·...... . " " ," .'.. , ....., .. ' ." .foregoing billJlare true. After the copyright an'd 1859. hltd Co., of CliF and pl1bhshed a copy pfsQmtichof the the words anddefinitioIl!!,'with the principal part 0'(111e in theedi\ion of 1659;' includ iog itsap" pendix: ofqew A-.s this 'copy was made frop:1j>hot0-'li.thographic \Vere ·. .. The tItle-page was the J)al't Of the ,and, milddltion, Whichw(tS contained in the book, and at'th e appeare'd',' type, words, btE;:W: bgi'lvie' 9qmpany; 9-15 River street.' 1890. book does nQtcontainth",: qdpyi-ight notices; historical tbeauthor,edit<lr,lind pUblisher; or theadvertiselrient wbich'werecontained in the. editiOri of 1847. It is bound in the ordiharY' leather' bindIng of dic.tionaries and of Weqster's J)icti9nary,and upon the lidoftlle cover the'Y0rds "Ogilyie's Editi,oD:.,1' Of .the .book has' the words "Webster'F. in the ordinary.: J>]ace. in the name of thehorllf is printed,add be:. 19W is a label,containing the' words, "1,500 Illustrations and ,Appehdix ''fhe bOo4, taken. by itself, does not' profess to be a of the n?r tQ. bE) a,late that asserhoblS by the figur(ls"1890" upOn;the titY&.pagej ahd lam; tothebeliefthat'these words denote the ,,:h.ich a,pook ispri*ted, it is of that yeaz::"J The book IS,1O .appe'$rllillce, a poorly executed'reprint, upon poor' pAper, of the dictionl1ry:part ofan ol4'\YebDictionary,and; ,wbulli: not deceive an person, who exit, and who had a ,general knowledge ofthe subject;ouHheune4'ueated might easily beq1isled into the was a' 'modern .The 'which publishes a weeklypa1)er "Texas Siftingei;u;aM: baspitr<;ihased or obtained the option of opylhga large number ofcljpies of the Ogilvie bOok, Whichitis now. undertaking to sell. . As' an 'addItional induoerilent. to' subscribe for its pathe amilial price or which is dollars; 'it offers to furnish for five dollars its weekly paper a copy of Webster's Dictionarl,by whi<:h
.....
."
J
per,
and
',;
.1· .
L.
MERRlAoM 'fl. TEXAS SIFTINGS PUB. CO.
947
is meant whioh it describes in one of its advertisements way; , " " i "Latest "Weight pOllnds,: Contains 1,615 pages, 1,500 nlustrations\ ,Price $8.00, but given free only to Texas Sifting subscribe,rs." .,," , In another advertisement it is called "Latest Edition. Price $8.00." After 100,900 qopies of the dictionary had been printed for the defendar\t, advertisement continues, as follows: Diqtionary has heretofore been sold for no less a sum than cheapness of pap!!r, and $10.00 a "copy, but. owing to tht"l wonderful econornr ,in labor connected with the improvements in mach'inery. that enables publIshers to print tl'n sheets in the same time and at the same that they used to print Olle, we can offer this great and yaiuahle dictionary at a very'mlleb smaller pl'!cethan it has ever been olferedbefore." In another advertisement, "Siftings and this J;>ictionary, which in Another advertisement ' . contains this language: .. Mr. E. M. of tbe, :Philadelphia Inquirer, says: ''this is the copy of Webster's Dictionary I ever saw.' The editor of the Philadelphia Times, who fl'ceived one of these dictionaries, wr.tes: 'It is immense. Inclost:d lind live dollars. Send ailatht!r copy. We lIeet! it in our business. t to
itself is worth $10.0U, will be delivered," etc.
It is proved that two a student iti a college in Pennsylvania, and the other a hotel.keeper in Pennsylvania-became subscribers to the paper aUll, bought the book upon the faith of these ildvertisements,supposing thafth,ey were,respectively tQ obtain a copy of the edition of Webster's ,Dictionary they knew comml1ndeu a high price. The illducemenfto send 85 to the publishers WIlS the expeCtation of obtaining, a copy of the edition for which $8 or $10 was the ordinary price, and .which they desired to own.' TheSe lJ,uvertisemel1ts were intended Bnd were calculated to deceive persons'Who were not larQilinr wjth business. ' They did qeceive at least two persons. They have, undoubtedly accOJpplished, to sOme extent, the purpose for wqicA they were issued. The ingenious wording of the advertisements, and the plausiLle of the reasons which permitted an $8 tobe given, (91' '1, would Quturltlly mislead many persons who ''YElre anxious a' valuRQledipt}onary, which they had theretoforebeell unahle to obtn'in. Theoll)Y $8 or $10 copy of Webster's Dictionary is a copy of the edition of 1864, or of one of its successors, and the etlort of the defendants is to palm off upon the public its copies, which are worth from $1.50 to $2 each, as the book of the plllintiffs, which is a of much higher intrinsic value. No direct evidence was given of the amount of the matter in dispute, but it is easy to see from the testimony that the amount is such as to give this court jurisdiction. Upon the 1acts the law has been recently stated with clparness. Merrillm v. Publishing Co., 43 Fed. Rep. 450; Merriam v. Slwe, etc., Co., 47 Fed. Rep. 411; Black v. Ehrich, 44 Fed. Rep. 793. The plaintiffs are not entitled to an exclusive use of the name "Webster's Dictionary" upon copies of editions the oopyrights of which have expired,
FEDERAL REPORTER,
vol.
49."
edition of fS'47 lind JSQ9can be, reproduced, bya publisher, over, his Own name, provided"he maltes,'no misrepresentatipfis to the public to pelieve that it is "8.Dother book, the right to publlsh which iathe exclusive property of the plaintiff. The mere form or size of the volume in which Webster's D'i:ctionary has ordinarily'appeared does not, in the mind of the public, cOnnect the plaintiffs with the manufacture of the dictionary, and there is no characteristic of a trade-mark iIi such ordinary form or size. A court of equity would not prohably hold, that the mere act of this book, taken discomiected from any other the repres¢ntatiotlapradvertisemants,' or lldvertised 'what it actually is, woulq. be the, subJect of an injunction, upon the ground that such act was an unlawful competition in trade. ,The gist9fthis case consists in the factthattl;1e defendant, in its attempts to sell the hook, made free and oh:nisrepresentations, which ,hitended and 'calcuwas the one which lated to mislead the public into a belief that the plaintiffs., '. That such was the had long been produced and sold by natural effect'otthe defendant's, c'annot be doubted. ,artifice of any sort, 'Wrongs of this description, whel'eby, the goods of Olile manufacJ,nrer become confused in public mind with by Rcourt of the g09ds ()f some other manufacturer, mllY be The defendant should be enequity." ,Merriam v. Shoe,eic., Co., joined against ftiecirculatid'n or use of advertisements or circulars which tend to misrepresent the character of the edition of Webster's Dictiona,ry, into We that is a reproduction of a of that work; and espemallyagalllst the use of the advertisementsjl'hichare in evidence in this case, or of similar advertisements.' rf'ihebook had not been advertised I'n the mannenvhich has beeu (iesCl:ibed, I should not think it proper to require the defendant to place apy notice in the volume itself; but, inasmuch as these advertisementS have been extensively circulated, and' orders forthe book may received' by the defendant, which will be the fruit of each book delivered by it or.its agents should cona,Iiotice, 1>Y printed slip attached to the that it is a reprin't of the. edition 'of 1847 of Webster's, Dictionary, with a of the audItions thitt have been ma,de therElt!>,. atld which the book contains.
lIB not a traae-:maikl
) il!
CHATTAN()OGA ME:DICINE CO. 11. THEDFORD.
949
CHATTAN()O(}A: MEDICINE
00.
V. THEDFORD
et 01.
(Ot7"cuU OO'Wl't, N. D. Georgta. November 11, 189L) 1'JU.DE NAJI'lI-TRANSFER_CONSTRl1CTION OJ!' CoNTRACT.
M. A. Thedford, owning a third interest in the right to make and sella compound known as "Dr. A. Q. Simmons' Liver J{edicine," formed a partnership with his two co-owners, and for a time they prosecuted the business under the name of "M. Ao 'fl\\ldford & Co." Thedtord afterwards sold his interest in the right to his co:partners, and also conveyed to them all his right to "the firm name and style of M. A. Thedford & Co.," "for the purpose of manufacturing, advertising, and selling the 'Simmons Liver Medicine,' " provided, however, that in the use of. the firm name he was not to be responsible, "it beinA' simply to be used as a trade-mark of the business." HeZd, that the grantees had the exclusive right to use the firm name in connection with the "Simmons Liver Medicine" only, and,notin connection with a medicine advertised as "K A. Thedford & Co.'sOriginaland only Genuine Liver Medicine or Black Dranght. .. !
In Equity. Bill by the Chattanooga Medicine Company against M. A. Thedford and W. J. Satterfield for an injunction. Denied. Tbis is a bill in equity. brought by complainant against defendants to enjoin the latter from manufacturing, advertising, and selling the medicine known as" M. A. Thedford's Liver Invigorator." For a proper understanding of the issues to be determined by the court iuits present decision, Which, is on the application for a temporary injnnction, a brief stateme.nt of the facts may be necessary. About the year 1840, Dr. A. Q. Simmons,a resident of north Georgia, began the manufacture and sale of what has since been known as "Dr. A. Q. Simmons' Liver Medicine," "Dr. A. Q. Simmons' Vegetable Tonic," etc. Subsequently, and about the .year 1856, Dr. Simmons transferred to his son-in-law, J. H. Thedford, therigbt to manufacture, advertise, and sell" Dr. A. Q. Simmons' Liver Medicines," by wbom, in 1872, the samewas transferred to bis son, MileaA. Thedford, one of the defendantsbere. In tbesame year, Miles A. Thedford, wbo had formerly lived in north Georgia, went to Chattanooga, and formed a partnership with Nicklin & Rawlings, a firm of druggists in that city, for the purpose of manufacturing, advertising, and selling said medicines. A few years thereafter, Miles A. Thedford went to Louisville, Ky;, where, in 1873, be formed a partnership with Ed ward Wilder and Robert L. Edgerton, under the firm name and style of Miles A. Thedford & Co., with the object of continuing to make, advertise, and Bell eaid "Simmons Liver Medicines;" using the same wrappers for their packages and bottles there that were 'used in nooga, except aato color of paper, ink, and place of manufacture. After .carrying on this business for a sbort time, Miles A. Thedford returned to Chattanooga, and on October 14, 1875, sold to William G. Smith and Charles McKnight a two-thirds interest in his right, title, and inter-est in the manufacturing,advertising, and selling "Dr. A; Q;'Simmons' Liver Medicine," at the same time forming a partnersbip with the said Smith and McKnight, under the firm name of k. Tbedf6rd & Co. .on November 26, 1876, MilesA. Tbedford conveyed to Z. C.Patten his remaining interest. in the rightto make, mix, manufacture, ad-