West Publishing Co. v. Lawyers' Co-Operative Publishing Co.

COXE, District Judge. I have delayed deciding this motion until the last moment before starling for the Xew York circuit, and have given to its consideration all the time which could he spared from other matters even more pressing. I have reached the conclusion that the temporary stay should be vacated; that the defendant should enter into a bond, if required to do so, conditioned to keep an account of ail digests sold and for the payment to the plaintiff of such damages as the court may award iu case the final decree is for the plaintiff; that an injunction should issue restraining future infringements of the plaintiff’s copyrights, and also restraining the selling of the present digest to all persons except the defendant’s regular subscribers, and those with, whom it has contracted to deliver copies by agreements made before the service of these motion papers. I do not pretend that this order does absolute justice, hut 1 think that it approaches as near to fhafc result as any order that can be made, while the matters in dispute are undetermined. My reasons for this conclusion may be hastily summarized as follows: Both parties compile and publish law digests. ‘ Tho moving papers present some 55 instances of alleged piracy in the defendant’s digest. Since the argument, another statement, containing 108 similar instances, has been forwarded; making in all 163 alleged cases of piracy. Some of these employ language so nearly identical with the copyrighted language that the presumption is well-nigh conclusive that it was copied from the plaintiff’s books. As to others the contention [268] is made by the defendant that the similarity of language is accounted for by the fact that both paragraphs were copied verbatim from the opinion of the court. It is impossible to verify this contention without a long, wearisome, and complicated comparison, which the court has no time to make, and should not be called upon to make. I am confident that if this examination is sent to a referee it will delay the matter for several weeks at least. The plaintiff having failed to satisfy the court, in view of the defendant’s affidavits, that an injunction should issue at once, the court will hardly be justified in permitting the preliminary stay to continue in order that the plaintiff may have time to make a stronger case. If the stay continues it will- work great injury to the defendant, for which there is little, if any, redress. Should it subsequently appear that the defendant is right as to a large proportion of the paragraphs in dispute it will be too late to offer any reparation for the serious injury which has been done. The court should be very sure, much surer than it can be at present, that the plaintiff is right before dealing so fatal a blow to the defendant. i The defendant’s digest has been issued during the past year in semimonthly pamphlets which have been regularly sent to the plaintiff, who is a subscriber. Their contents, presumably, were known to the plaintiff several months ago. The plaintiff has waited until ;the defendant’s digest is printed and ready for delivery, and now seeks to have the alleged pirated paragraphs stricken out or the entire volume suppressed. If this action had been commenced two months ago the court would have had ample opportunity to determine with accuracy what is and what is not pirated. The defendant would then have been directed to omit objectionable matter, which could have been done without great injury or expense. Now, however, an injunction will compel the mutilation of a completed edition, and, perhaps, a printing of a new edition, with its attending expense and delay. I cannot think that the court will be justified in so harsh a measure where the infringing matter is so small a proportion of the entire work. It is said that the total number of cases digested in defendant’s book is 19,000. The disputed paragraphs, therefore, ' assuming that all are pirated, amount to less than 1 per cent. It is apparent that the damage to the defendant, should an injunction issue as prayed for, would be entirely out of proportion to the damage which the plaintiff will suffer if the preliminary writ is refused. The plaintiff has already supplied its customers with the digest published by it for 1892. It has had no interference from the defendant, and it cannot be maintained, therefore, that the defendant’s digests are likely to displace any of the plaintiff’s digests or entice away any of the plaintiff’s customers. It is the duty of the court in all these cases to take into consideration the situation of both parties, and not to issue the writ except in the plainest cases, where the result will be irreparable injury to the defendant without corresponding advantage to the plaintiff. It is always wiser, in such cases, to wait for the final proofs. In Sargent v. Seagrave, 2 Curt. 553, 557, Judge Curtis said: [269] “The court looks to the particular circumstances to see what degree of inconvenience would be occasioned to one party or the other by granting or withholding the injunction.” In McNeill v. Williams, 11 Jur. 344, the vice chancellor said: “The court has, of late years especially, given great weight to the consideration of the question, which of the two parties to the dispute is more likely to suffer by an erroneous or hasty judgment of an interlocutory nature against them; and to the consideration also of the very possible if not probable effect which an injunction may have to ike defendant’s prejudice in an action. I have in this case to weigh, on the one hand, the suspicious nature of the defendant’s case, for suspicions, I confess, upon the present materials, it appears to me to he, and the probable mischief from not interfering at present in his favor, if he should ultimately prove to he right; and, on the other hand, the possibility — the rational possibility'— for I am unable to bring myself to deny the rational possibility — that the plaintiff may be right. 1 have also to consider the mischief generally that may he done by interfering in this stage of the cause if the defendant shall ultimately appear to he right, including particularly the possible prejudice which may be created against them in an action by the existence of an injunction. IJpon the whole, I think the ends of justice in this case will be better answered by,, abstaining from granting the injunction at present.” In Bramwell v. Halcomb, 3 Mylne & C. 739, the chancellor said: "It is obvious that it is 1he interest of both parlies that the injunction should he dissolved; for if, in consequence of piracy, the defendant is, in fact, selling the plaintiff’s work, the plaintiff will have the profits of the publication; but if, on Hie contrary, no jiiracy has been committed, a very great hardship is inflicted on the defendant.” In Spottiswoode v. Clarke, 2 Phil. Ch. 157, the facts were in many respects similar to those in the case at bar. The chancellor said: "But the greatest of all objections is that the court runs the risk of doing the greatest injustice in case its opinion upon the legal right should turn out to be erroneous. Here is a publication which, if not issued this month, will lose a great part of its sale for the ensuing year. If you restrain the party from selling immediately you probably make it impossible for him to sell at all. You take property out of his pocket and give It to nobody. In such a case, if the plaintiff is right, the court has some means at least of indemnifying him, by making the defendant keep an account; whereas, if the defendant be right, and he be restrained, it is utterly impossible to give him compensation for the loss he will have sustained. And the effect of the order in that event will he to commit a great and irremediable Injury.” See, also, High. Inj. § 1026; Walk. Pat. § 702; Drone, Copyr. pp. 517, 518. It is thought that the plaintiff will be fully protected if its copyrights are respected in the future and damages are paid for whatever injury it may have sustained from past infringements, and especially so, if the defendant is enjoined from selling its digests to new customers until it has prow id its innocence of the present charge.