public, and deprives the plaintiff of its right of control. It is well established that the private circulation of information or literary composition, in writing or in print, for a restricted purpose, is not a publication which gives the public a right to use it. Prince Albert v. Strange, 1 Macn. & G. 25; Jefferys v. Boosey, 4 H. L. Cas. 815, 867; Exchange Telegraph Co. v. Gregory, [1896] 1 Q. B. 147; Exchange Telegraph Co. v. Central News Co., [1897] 2 Ch. 48; Bartlett v. Crittenden, 4 McLean, 300, Fed. Cas. No. 1076. See, also, Tompkins v. Halleck, 133 Mass. 32, 43 Am. Rep. 480; The Mikado Case (C. C.), 25 Fed. 183, 23 Blatchf. 347; Press Publishing Co. v. Monroe, 19 C. C. A. 429, 73 Fed. 196, 51 L. R. A. 353. It has been held in Ladd v. Oxnard (C. C.), 75 Fed. 703-729, and in Jewelers' Mercantile Agency v. Jewelers' Weekly Pub. Co., 155 N. Y. 241, 49 N. E. 872, 41 L. R. A. 846, 63 Am. St. Rep. 666, that where a company published a reference book, or a book of mercantile agency credit ratings, to an unlimited number of subscribers, under a stipulation that the book was furnished as a loan, and not as a sale, and that it should not go into other hands, there was a publication. Each of these suits was brought under the United States copyright Act for an infringement of the copyright, and the decision was on the ground that by reason of publication the copyright was not perfected. In the latter case three of the judges did not agree that there was a publication. The thing sent out in these cases was a book designed to be preserved and used for a considerable time. It was in a convenient form for transfer from hand to hand, and for use from time to time by different persons. We do not think that these cases very much resemble the case before us. The information given by the plaintiff in this case, as we infer, is of specific facts for particular persons or classes of persons, adapted to their interests, and furnished from time to time as the facts are ascertained. It seems very unlike the sale or loan of a large printed book, designed to be distributed among a large class of persons. We think the case falls within the principles laid down in the cases first above cited. It makes no difference that the information in some of these cases was furnished by telegraph, and that in this it is furnished orally, or in writing or in print. We are of opinion that the averments of the bill do not show a publication which deprives the plaintiff of its rights or property. We have considered the case without reference to the question whether it would be possible to obtain a copyright upon the plaintiff's compilations, for we think its rights are the same, however this question might be decided. It would seem, however, to be impracticable to obtain copyrights in the course of the plaintiff's business, whether the material would be a subject for a copyright under the statute or not. We do not deem it necessary to consider at length the objections raised by the special demurrer. Although the averments of the bill are not so full as might be desired, we are of opinion that they are sufficient. Demurrers overruled. 210. HASKINS v. RYAN COURT OF CHANCERY OF NEW JERSEY. 1906 71 N. J. Eq. 575, 64 Atl. 436 SUIT by Harry C. Haskins against Thomas F. Ryan. Heard on demurrer to bill. Bill dismissed. Robert H. McCarter, for complainant. Richard V. Lindabury and William H. Page, Jr., for defendant. STEVENS, V. C. To the bill in this case a general demurrer is pleaded. The bill alleges, in substance, that during the years 1898, 1899, 1900, and 1901, the complainant devoted a large part of his time to the study of industrial conditions connected with the output of pig lead in the United States, and had conceived the plan of uniting the outstanding lead interests, which had not already become a part of the National Lead Company, into one company, and had either procured options thereon or had opened negotiations for their purchase; that in the spring of 1901 "he had crystallized and formulated a complete plan for the combination of the white lead industries in the United States not already in the National Lead Company; that he laid such plan before the defendant, a capitalist; that he sought his co-operation and aid, and himself agreed to contribute, if necessary, as much as $200,000, if the defendant would join him therein, and also contribute enough to carry the enterprise through." The bill alleges, further, that defendant, to quote from the bill, "expressed a willingness to join your orator therein, provided an examination of the plan and papers by the attorneys and experts of said Ryan [the defendant] confirmed the statements of your orator made to him." The bill then alleged that the complainant submitted the plan to Ryan's attorney, and was subsequently told by him that he had submitted it to Ryan, and had indorsed it "as comprehensive, feasible, and attractive"; that through the efforts of Ryan's agents options had been obtained upon most, if not all, of the properties upon which the complainant had options, and that on January 20, 1903, the United Lead Company was organized as a corporation under the laws of New Jersey, and under the direction and control of Ryan proceeded to acquire and now owns the interests in nearly all the companies, firms, and individuals named in complainant's plan, and is capitalized with a capital stock of $15,000,000 and has issued bonds for $17,000,000; that in the formation and exploitation of this company the defendant, Ryan, "has made an enormous profit, the amount of which is unknown to complainant," and that a combination substantially as planned by complainant has taken place, or is about to take place, with the result of great profits to said Ryan. The bill then charges that Ryan's act of availing himself of the information complainant had collected and had only disclosed to Ryan "upon the agreement and understanding on the part of the said Ryan that he would join your orator in the said scheme and share with him in the profits arising therefrom is contrary to equity"; but I do not understand that by this general charge it is intended to allege any other understanding or agreement than that contained in the stating part of the bill, viz., that Ryan had expressed a willingness to join complainant in his project, provided an examination of it by Ryan's attorneys and experts should confirm complainant's statements. The bill asks for a discovery and account of Ryan's profits and a decree that complainant is entitled to a share of them. Ryan is the sole defendant. It is perfectly plain that no recovery can be had in this case on the basis of a completed agreement broken by Ryan. . . . As I understand the complainant's argument, he does not rest his case on any such basis. His contention is this: "The plan is my property. The defendant has appropriated it to his own use. I claim an account of the profits arising from its appropriation." If, in point of fact, the plan has been wrongfully taken or appropriated, the remedy, if any, would appear to be an action on the case for damages; the amount of damages being its fair value. But the plaintiff does not, and in this court could not, demand damages. He asks for a discovery and an account of profits. The fact that he has not been able to cite any precedent for the claim he makes is not, of itself, conclusive, if he can bring himself within the principle upon which an account is given. The complainant has, undoubtedly, the right to claim protection in this court for his manuscript. It would seem that, without any reference to whether the plan is or is not open to the objection that it seeks to create a monopoly (Kerr on Inj. p. 186; Oliver v. Oliver, 11 C. B. N. s. 139), he would have the right to restrain its publication or to prevent its use; and, in the case of an author, the law does more than protect the manuscript, regarded as a material thing of ink and paper. The combination of words of which it is composed (whether written down, or acted, or sung before an audience admitted on payment of a fee) is also protected, and publication is restrained, even if the manuscript be destroyed and an attempt be made to reproduce it from a copy rightfully in the possession of another, or even from memory. The work is protected indefinitely before publication by the common law (Aronson v. Baker, 43 N. J. Eq. 366, 12 Atl. 177; N. J. State Dental Ass'n v. Denticura Co., 57 N. J. Eq. 594, 41 Atl. 672; Denticura Co. v. New Jersey State Dental Soc., 58 N. J. Eq. 582, 43 Atl. 1898), and for a limited time after publication by the statutory law of copyright. The law has never attempted to go beyond this, and to enjoin, for the benefit of the author, after publication, the use of the ideas contained in his work. In the case of secret processes of manufacturing, the law does, to a certain extent, enjoin the use of ideas. It would, of course, on the same principle on which it affords protection to the unpublished manuscript in the hands of the author, enjoin the publication or exhibition of the paper containing the formula; but it does more. In enjoining the use of the formula, it restrains the wrongdoer from putting the idea formulated to practical account. Stone v. Grasselli Co., 65 N. J. Eq. 756, 55 Atl. 736, 63 L. R. A. 344, 103 Am. St. Rep. 794. The protection ends when the secret becomes known. In the case of patent rights the statute goes still further. It affords protection for a limited period to a certain class of ideas, known as "useful inventions," after the inventor has published them to the world, and because he has so published them. The valuable right here protected is not, as in the case of copyright, the manuscript or writing, regarded as a peculiar combination of words or figures, but the idea or conception to which those words or figures give rise, so far as that idea or conception may admit of material embodiment. If the idea contained in the patented device of A suggests to the mind of B another idea, which would not have arisen in the mind of B but for the stimulus of the prior idea, A can claifn no property in that, and yet B has mentally appropriated A's idea and made it the basis of his own; and I do not suppose that it has ever been contended that the entire public are not at liberty to subject A's idea to such investigation and discussion as it may desire. The wrong does not commence until the attempt is made to make or dispose of its material embodiment. I now come to the precise question here involved. It is this: Has the complainant a property right in the scheme or idea to be found in his plan, as contradistinguished from the property right which he has in his manuscript, regarded as a combination of words and figures - a thing of ink and paper? A right is defined to be that interest which a person actually has in any subject of property, entitling him to hold or convey it at pleasure. But that can hardly be styled "property," over which there is not some sort of dominium. Now, as I have already said, the combination of words and figures contained in complainant's plan belongs to him absolutely. Its publication or reproduction or exhibition in any form may be enjoined. But the idea contained in the plan differs from the ideas to which I have already called attention in this important respect: It involves the voluntary action and co-operation of many different men. When I say voluntary action, I mean action not restrained by contract; for the allegation that complainant had "options" is altogether too vague to warrant an inference that they are still subsisting, or that complainant had the means of availing himself of them without the aid of outside capital. Besides, the allegation is, not that he has procured options on all the properties which it was proposed to combine, but that he either had options on them or had "opened negotiations for their purchase." The means of carrying out the plan, of giving effect to the idea, lay, therefore, beyond his control. It was an idea depending for its realization upon the concurring minds of many individuals, each of them unbound by contract and free to act as he chose. Such a project or idea can scarcely be called "property." It lacks that dominium, that capability of being applied by its originator to his own use, which is the essential characteristic of property. It differs fundamentally from the secret process or patented invention which is capable of material embodiment at the will of the inventor alone. It is worthless unless others agree to give it life. It was, as far as complainant was concerned, an idea pure and simple. Now, it has never, in the absence of contract or statute, been held, so far as I am aware, that mere ideas are capable of legal ownership and protection. Says Lord Brougham, in delivering his judgment in Jeffreys v. Boosey, 4 H. L. Cas. 965: ... "Volat irrevocabile verbum,' whether borne on the wings of the wind or the press, and the supposed owner instantly loses all control over it. . . . He has produced the thought and given it utterance, and eo instante it escapes his grasp." Yates, J., in his dissenting opinion in the great case of Millar v. Taylor, 4 Burr. 2302, 2366, an opinion which was afterwards concurred in by the House of Lords, said: "Where are the indicia or distinguishing marks of ideas? What distinguishing marks can a man fix upon a set of intellectual ideas, so as to call himself the proprietor of them? They have no earmarks upon them." A case much like the present is that of Bristol v. Equitable Assurance Society of New York (Sup.), 5 N. Y. Supp. 131, id. 132 N. Y. 264, 30 N. E. 506, 28 Am. St. Rep. 568. There the complainant confidentially disclosed to the president of a life insurance company a system of soliciting life insurance devised by him. It was alleged that the company, after the disclosure, used the plan without complainant's consent. On demurrer, it was held that the plaintiff could not recover for the alleged use. I am therefore of opinion that complainant has no property right in his plan regarded as an idea. Having no property right, he has no right to an account. . . . I think the complainant's bill should be dismissed.1 211. FONOTIPIA, LIMITED v. BRADLEY VICTOR TALKING MACHINE COMPANY v. SAME UNITED STATES CIRCUIT COURT, EASTERN DISTRICT OF NEW YORK. 1909 IN EQUITY. 171 Fed. 951 Ralph L. Scott (Philip Mauro and C. A. L. Massie, of counsel), for Fonotipia Limited and Columbia Phonograph Co. 1 [NOTES: "Things subject to ownership as property: Ownership in plan." (H. L. R., XX, 143, 156.)] |