Scottish Court of Session Decisions

This was an action in the Sheriff Court of Forfarshire by William White, of Abergavenny, Monmouthshire, cement manufacture, to have William Briggs, asphalt manufacturer, Arbroath, interdicted from infringing the pursuer's copyright in a series of pamphlets relating to “Hygeian Rock Composition,” entered at Stationers' Hall under the provisions of 5 and 6 Vict. cap. 45, on 3rd September 1889, by publishing the same or any portions of them, or colourable imitations of them, in the form of advertisements.

The pursuer's pamphlet advertisement, the copyright of which was said to be infringed, was a paper-covered book of 40 pages, described as “White's Hygeian Rock Building Composition, rendering walls damp-proof,” while the defender's advertisements were two leaflets, entitled “Healthy Houses, Damp-proof Building Rock Composition, trade-mark ‘Tenax;’” and “Damp-proof Building Rock Composition, trade-mark ‘Tenax;’ instructions for use.” There was no doubt that the pursuer's pamphlet was published previous to the publication of the defender's advertisement.

The pursuer averred—“These leaflets are copied from the pursuer's pamphlet with merely colourable alterations, and are substantially identical therewith, and the first of them contains a drawing to show the way in which the invention is to be used, which is an exact fac-simile of a drawing shown in the pursuer's pamphlets. The method of building described in the said circulars, and of using and applying the building composition described in the said circulars, is the same as that specified in the pursuer's patent and described in his pamphlets, and the defender's building composition, which is the same or similar to that patented by the pursuer, could not be used for the purposes described in the defender's circulars without infringing the pursuer's patent.… The printing and circulating of the said circulars is an invasion of the pursuer's copyright in the said series of pamphlets.”

The parts of the pamphlet which the pursuer alleged were pirated by the defender were the words—“By its use great economy can be effected, inasmuch as the patentee will guarantee a 9 inch wall built on his system to be stronger than an 18 inch wall built in the ordinary way with mortar, in addition to possessing the immense advantage of being absolutely waterproof.” “For the walls of large reservoirs, swimming baths, gasholder tanks, sea walls, basement and cellar walls, damp courses, this composition is unrivalled.” The defender's advertisement stated—“It renders brick walls, &c., perfectly damp-proof, and greatly increases their strength. So much is this the case, that a wall built of two half-bricks on the flat with ‘Tenax’ run in is much stronger than an 18 inch wall built in the usual way, making its use very economical.” “It is specially suitable for cellar and basement walls, damp courses, reservoirs, tanks, swimming baths,” &c. The pursuer's pamphlet showed, inter alia, two sketches, each displaying a brick wall built of two rows of bricks, with a space between the rows into which the rock composition could be run. The lower sketch showed how, by the use of a chair of sheet-iron, the composition could be run in. The defender's first leaflet reproduced these drawings, the only difference being that the sheet-iron chair was shown in the upper sketch.

The pursuer pleaded—“(1) The pursuer having a copyright in the said series of pamphlets is entitled to have the same protected from piracy, and he is entitled to interdict as craved. (2) The pursuer having obtained letters-patent to protect his invention is entitled to have the defender restrained either from infringing the same himself or publishing statements calculated to induce others to do so. (3) Separatim—The circulars issued by the defender being calculated to induce the public to infringe the pursuer's patent, the pursuer is entitled to interdict as craved, with expenses.”

The defender pleaded—“(2) The pursuer having no valid copyright in the series of pamphlets founded on, the action falls to be dismissed. (3) Assuming the pursuer to have a copyright in the pamphlets referred to, the defender not having infringed same, is entitled to be assoilzied.”

The Sheriff-Substitute allowed a proof, from which these facts appeared.

Upon 22nd July 1890 the Sheriff-Substitute ( Robertson) issued this interlocutor:—“Finds in fact that the pursuer has patented an invention which claims to be original, and by which brick walls are consolidated and rendered damp-proof: Finds that with a view to introduce and advertise his invention the pursuer has printed and circulated the pamphlet piracy of which is complained of: Finds in fact that this pamphlet is of no literary value or merit apart from the invention which it advertises: Finds that the defender also claims to have invented a similar process, and has circulated the notices complained of with a view to introduce and advertise his process: Finds in fact and in law that in so doing the defender has not infringed any copyright in the pursuer's pamphlet: Therefore refuses the prayer of the petition, under reservation of the pursuer's right to proceed against the defender for an infringement of patent by injunction, interdict, or otherwise as he may be advised: Finds the pursuer liable in expenses, &c.

“ Note.—By 5 and 6 Vict. cap. 45, no one can protect himself against infringement of copyright unless he has duly registered in accordance with the Act. The pursuer duly registered his pamphlet last May, so he is now in a position to protect himself against infringement. It appears that the defender began to print and circulate the notices complained of in April 1889; he also printed a thousand copies in September

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1889; so that the infringement complained of took place before registration. This, however, does not prevent the pursuer now raising action—See Goubard v. Wallace, W.N. 13, and Coppinger on Copyright, p. 146. So that I can sustain the relevancy of the action and consider the merits. I have no doubt a pamphlet may be the subject of copyright. The term ‘book’ used in the Act includes ‘catalogues, tracts, abridgements, digests, expensive designs, and the like, so long as these claim to be original and to be the product of mental effort apart from mere advertisement.’

In the case of Hotten v. Arthur, 1 H. & M. 603, a bookseller's catalogue was protected by the Court because short anecdotes or descriptions of the books were appended to the catalogues. As Vice-Chancellor Page Wood remarked, these were the product of mental exertion, and the publisher had a right of property in them apart from the books which they described. In the case of M'Farlane, 10 R. 801, a trade book of designs was made the subject of protection, and the Court allowed a proof of the piracy, the designs being very costly, and having been all made from original castings or patterns in the possession of the publisher. In the same way a cemetery stone mason, who published a book of monumental designs taken from tombstones, was held to be entitled to protection. But an ordinary advertisement, which has no value or use except to make known the kind of business of the advertiser, is not within the scope of the copyright law. Coppinger, p. 97, and perhaps the case of Cobbett v. Hood, L.R., 114 Eq. 407, best illustrate the principles of copyright law. Lord Romilly says—‘Wherever letterpress bears the trace of original composition it is entitled to protection, but not where it simply describes the contents of a warehouse, the exertions of the proprietor, or the common mode of using familiar things.’

In short, unless the pursuer's pamphlet has some value apart from its use as a mere advertising medium, I do not think it can fairly come within the scope of copyright protection. I have carefully read the pursuer's pamphlet. It may be described as a trade circular or intimation, partaking largely of the nature of an advertisement, and it explains a patent invention by which brick walls are consolidated and rendered damp-proof. This is done by pouring a cement between two brick walls built parallel to and within an inch of each other, and several drawings of walls illustrate the modus operandi of the invention. There is no literary merit or value in the pamphlet apart from the invention. And the drawings are only original in so far as they illustrate the patent, being merely figures of brick walls drawn in perspective. In the absence of all literary effort, whether poetic, dramatic, historical, or inventive, there is really nothing to steal or pirate except the idea of the patent itself. There are no smart pictures or jeux d'esprit—nothing which corresponds to the jocular and artistic originalties connected with Pears' Soap, for example, or to the playful allusion to ‘Darkest Africa’ which promotes the sale of Nubian Blacking. These are clever designs combined with witty ideas, which have cost some thought and trouble apart from soap and blacking. The young gentleman who ‘won't be happy till he gets it,’ and the young lady who was ‘washed ashore’ by soap, are amusing trade designs which I can quite suppose no one can appropriate or make use of in selling another soap. But in the present case there is nothing of that sort, and I have great doubts whether the Copyright Act applies. But even if it does, and even if the pamphlet is entitled to protection, has the defender pirated it? Assuming that he has discovered a cement also—perhaps a cheaper and better one — how is he to describe it and the method of using it except by using English words and terms which are necessarily similar to those used by the pursuer? I quote, for example, the following line of the pursuer's pamphlet—‘A cwt. will fill in about yards superficial, half-inch thick.’ The pursuer complains that the defender says exactly the same of his cement. Now, unless the pursuer is to be the only person in the world who is to be allowed to deal with a hydraulic mixture of this particular consistency and specific gravity, I fail to see any harm in the defender saying that his cement will cover a certain superficial area also; and if the pursuer is to be the only person in the world entitled to use this cement, then he must proceed against the defender for infringing his patent, not for pirating his pamphlet. The pursuer also complains that the defender uses his cement on the same subjects as are detailed in the pamphlet, such as ‘reservoirs,’ ‘baths,’ ‘tanks,’ ‘basement walls,’ and ‘damp courses.’ Surely the pursuer has no copyright in printing these words. In the same way I regard the illustrations. These are merely figures of brick walls. The pursuer complains that the defender's figure of a brick wall has the same number of bricks in it, and is drawn at the same angle of perspective as his own. But these figures are nothing in themselves except as illustrating the invention. I fancy anyone may draw a figure of a brick wall, even at the same angle as the pursuer has done, and with the same number of bricks in it. But in doing so, if he illustrates as his own a patented idea of another man's, then an action for infringement of patent will lie against him. But not surely one for infringement of copyright in a brick wall at a certain angle, and with so many bricks in it. So that, in regard to the line above quoted and the figure of the brick wall, in my opinion the pursuer might just as well claim copyright in the multiplication table or in the figure of a square.

I think the pursuer has mistaken his remedy. He ought to proceed against the defender for infringement of the patent, as threatened by his solicitor in May 1889. Whether he will succeed or not I cannot say, but according to Stubbs' Directory for the United Kingdom I see there are upwards of fifty makers of cements in London, and sixty more in the provinces, so that the

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pursuer may have some trouble.

I cannot better sum up this case than in the words of Lord Selborne in Singer Manufacturing Company v. Loog, L.R., 8 App. Cas. 15. He says—‘If the defender has a right to make and sell articles similar to the pursuer's, he has a right to say so, and to employ the terminology common in his trade, if he does this in a fair, distinct, and unequivocal way.’”

The pursuer appealed, and argued—It was plain, and even admitted, that the defender had pirated the illustration of the brick wall. That was infringement of copyright. The produce of one man's thought and labour was used by another in a book which was for exactly the same purpose as the originator's— Kelly v. Morris, March 8, 1866, L.R., 1 Eq. 697. The absence of letterpress did not matter, nor that the publication was not sold, but was simply used as an advertisement to push the sale of the advertiser's goods— Maple & Company v. Junior Army and Navy Stores, June 29, 1882, L.R., 31 C.D. 369. Besides the illustrations, there were various expressions taken from the pursuer's pamphlet, and although there could be no copyright in the words themselves, when the matter was looked at as a whole the piracy was apparent. It was not necessary that a great deal of the matter in the book should be taken if the idea was used for a competitive purpose— Bradbury and Others v. Hotten, November 14, 1872, L.R., 8 Ex. 1; Maclean v. Moody, June 23, 1858, 20 D. 1154; Morris v. Ashbee, November 10, 1868, L.R., 7 Eq. 34.

The respondent argued—There was no infringement of copyright, because nothing was taken that was subject to copyright. The defender's composition was intended for much the same purpose as the pursuer's, and to be used in the same way, and in description thereof it was impossible to use any other words than the pursuer had used beforehand. The pursuer had no monopoly of the English language, and the defender was entitled to say what his composition could be used for. The same rule applied to the design. It was simply a representation of a brick wall, and nobody could draw it any other way. It was always important to look at the amount of matter said to have been taken from any publication in a question of piracy. Here the amount was very trifling. The pursuer did not allege that the defender had infringed his patent, hence he had no interest in procuring an interdict against these advertisements.

At advising—