Da Prato Statuary Co. v. Giuliani Statuary Co.

WILLARD, District Judge (after stating the facts as above). [1] The motion of the complainant for a temporary injunction, so far as it is based upon the claim of unfair competition, is denied. It is necessary, however, to consider whether such an injunction should be granted on the ground that the defendant has infringed the complainant's copyright. [2] The complainant, has offered evidence tending to show that 117 of the cuts contained in its catalogue have been copied in the defendant’s catalogue; but no proof has been presented to show that [92] any of these photographs so used by the defendant have been copyrighted by the complainant, except 18. The evidence shows that as to these 18 photographs or cuts the complainant has complied with the provisions of the law for the purpose of securing a copyright. That cuts similar to these 18 cuts of the complainant appear in the defendant’s catalogue is not disputed. Some attempt is made to explain the source from which the defendant derived its cuts. The affidavit of Giuliani and the affidavit of McCoy state that defendant’s cut No. 372, which is like complainant’s cut No. 2,739, was made from a photograph sent from Italy. Gaul, the president of the complainant, in his second affidavit states that this is impossible. An examination of the two cuts, in the light of what is said by Gaul in his affidavit, satisfies me beyond a doubt that the defendant’s cut 372 was made, not from a photograph taken in Italy, but was made from a photograph of complainant’s cut 2,739. I am also satisfied that the same thing is true with reference to complainant’s cut 2,737, copied by the defendant’s cut 373, and complainant’s cut 2,741 copied by defendant’s cut 371. As to defendant’s No. 371, it is to be observed that Giuliani says that it was taken from a photograph sent from Italy, while McCoy says it was copied from a photograph sent to the defendant by the Vermont Marble Company. The defendant does not apparently deny that its cut No. 187 is a copy of the complainant’s cut 913, but it says that cut 913, together with cut 2,737, had been previously published by the complainant in an uncopyrighted circular, or art review. This the complainant denies, and the defendant has not produced any such art review, which was not copyrighted. The defendant further claims that complainant’s cuts 346, 348, and 349 were published in a catalogue of Benziger Bros., of Cincinnati, without any reservation of copyright by the complainant. The defendant, however, produces no copy of that catalogue. This it should have done. List Pub. Co. v. Keller (C. C.) 30 Fed. 772. As to the other cuts included in the 18 above mentioned, no explanation is offered by the defendant. [3] It having been proven that the defendant has copied one or more cuts, a finding that the others as to which no explanation is made were also copied is easily supported by the evidence. Chapman v. Ferry (C. C.) 18 Fed. 539, 542; Lawrence v. Dana, 4 Cliff. 1, Fed. Cas. No. 8,136.- It is therefore proven that the defendant has copied 18 of the cuts included in the complainant’s copyrighted catalogue, which cuts had not before appeared in any uncopyrighted publication. [4] The representations in the complainant’s catalogue are proper subjects of copyright. Burrow-Giles Lithographic Co. v. Sarony, 111 U. S. 53, 4 Sup. Ct. 279, 28 L. Ed. 349; Bleistein v. Donaldson Lithographing Co., 188 U. S. 239, 23 Sup. Ct. 298, 47 L. Ed. 460. [5] A trade catalogue may be the subject of a copyright. Maple v. Junior Army & Navy Stores, Law Rep. 21, Chan. Div. 367 (1882). In the case of Lamb v. Grand Rapids School Furniture Co. (C. C.) 39 Fed. 474 and which was a case of a trade catalogue, and was cited by the defendant, it did not appear that the defendant’s cuts [93] were copied from the plaintiff’s cuts, and the court assumed that defendant’s cuts were made from photographs of its own stock. In the case of J. L. Mott Iron Works v. Clow, 82 Fed. 316, 27 C. C. A. 250, it appeared that the particular illustration claimed to have been copied were those of a wash bowl, slop sink, bathtub, footbath, sponge holder, brush holder, and a robe hook. It was held that pictures of these objects were not proper subjects of copyright. But the objects there illustrated are very different from the objects illustrated in the catalogue in this case. All that was decided in the case of Baker v. Selden, 101 U. S. 99, 25 L. Ed. 841, cited by the defendant, was that a claim of exclusive property in a peculiar system of bookkeeping could not, under the law of copyright, be maintained by the author of a treatise in which that system is exhibited and explained. [6] The complainant having copyrighted its entire catalogue was entitled to the protection of the copyright law as to each cut contained therein; Copyright Act March 4, 1909, c. 320, § 3, 35 Stat. 1076 (U. S. Comp. St. Supp. 1909, p. 1290) Dam v. Kirk La Shelle Co., 175 Fed. 902, 99 C. C. A. 392. [7] The complainant’s catalogue contained 2,813 cuts; of these 18 which were legally copyrighted were reproduced in defetidant’s catalogue which contained 393 cuts. Though the number thus reproduced is small, yet it is sufficient to justify the granting of an injunction. Lawrence v. Dana, 4 Cliff. 1, Fed. Cas. No. 8,136; Campbell v. Scott, 11 Simons, 30; Leslie v. Young & Sons, 6 Rep. 211, House of Lords (1894); West Publishing Co. v. Lawyers Co-operative Publishing Co., 79 Fed. 756, 25 C. C. A. 648, 35 L. R. A. 400. The injunction should, however, be limited to the 18 cuts that have been copied. List Pub. Co. v. Keller (C. C.) 30 Fed. 771; Campbell v. Scott, 11 Simons, 30; Leslie v. Young & Sons, 6 Rep. 211, House of Lords (1894). Let an injunction issue, restraining the defendant, as prayed for in the hill, not as to its entire catalogue, but only as to the 18 cuts described on page 8 of the affidavit of Godfried J. Gaul sworn to on April 20, 1911. In the last line of the affidavit, however, the number of the defendant’s cut should be “371” instead of “381.” The complainant will furnish a bond in the sum of $5,000.