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Schroeder v. Morrow


decided: August 10, 1977.


Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 74 C 3750 - Prentice H. Marshall, Judge.

Pell, Tone and Wood, Circuit Judges.

Author: Tone

TONE, Circuit Judge.

In this action for infringement of a copyright on a gardening directory, some copying was conceded. The issue is whether it amounted to infringement or, as the District Court held, was permissible because limited to information in the public domain. We hold that infringement occurred.

Plaintiff Marion S. Schroeder was the compiler of The Green Thumbook, for which a concededly valid copyright was issued. Defendants are the publisher and the printer of the accused book, The Gardener's Catalogue. We cannot improve on the description of the books and the manner of their preparation which appears in the unpublished memorandum decision of the District Court:

"THE GREEN THUMBOOK is a booklet of 63 pages with a page size of 6 1/4 inches by 9 inches and retails at $2.95 per copy. It is a listing of sources of supplies, equipment, information and associations of all types for the gardening enthusiast. Its author, Marion S. Schroeder, described its purpose as follows:

'If you want to . . .

* plant wild strawberries or wild rice,

buy perennials by the 6-pack or pine cones in 5-bushel lots,

* mix soilless mixes or learn how to garden under lights,

* grow beans on your balcony or mushrooms in your basement.

"After some introductory instructions on how to use the GREEN THUMBOOK, it contains nothing other than listings of the names and addresses of suppliers of seeds, plants, materials, equipment, books, periodicals and plant societies, together with brief descriptions of each. It concludes with an alphabetical index which is comprised of the proper names of the suppliers, etc., and subject matters, e.g., ' Birdhouses, how to build, 53,' id. p. 57.

". . .

"Thus, a typical entry is the first one. Appearing on page 6 of the work, under the category 'SEEDS. . . .' is the following:

'BURGESS SEED and PLANT CO., Galesburg MI 49053. 616-665-7079. Vegetable seeds and plants; some flower seeds; fruit and nut trees and berries; ornamental nursery stock; perennials and bulbs; wide variety of garden supplies. Many new plant introductions each year. 42 p., 8 1/2 x 11, color il.'

"Specifically, the GREEN THUMBOOK includes the following material which is in issue in this case:

1. 350 plant and seed suppliers broken down into 37 categories.

2.94 gardening equipment suppliers broken down into 3 categories.

3. 40 plant societies under that single caption.

4. 6 magazines under that single caption.

"THE GREEN THUMBOOK listings with respect to plant and seed suppliers comprise the bulk of the work which is here in issue and consist of the name and address of the supplier, a description of the supplier's plant specialty, catalogs and price lists available from the supplier.

"The listings with respect to gardening equipment suppliers consist of the name and address of the supplier, in some instances a description of the equipment sold, in other instances a code and explanatory text indicating which of five types of equipment the supplier sells, and catalogs and price lists available from the supplier.

"The listing with respect to plant societies consists of the names and addresses of 40 organizations, membership dues, a description of its periodical and occasionally a mention of special publications and services of that society.

"The listing with respect to magazines consists of the name and address of the magazine, subscription rates, and a description of its general content.

"Marion S. Schroeder testified to her methodology and efforts in compiling the GREEN THUMBOOK. Insofar as the list of equipment dealers under the caption 'Tractors, Tillers, Cultivators and Chippers' (pp. 36-37) she concededly used lists contained in a copyrighted publication Lawn and Gardening Marketing, published by Intertec Publishing Corp. of Kansas City, Missouri. Insofar as the listing of plant societies (pp. 38-40), although she did not acknowledge copying from the uncopyrighted Directory of American Horticulture, published by the American Horticulture Society, she did testify that she had it in her possession and utilized it in her work. As for the balance of the entries which are here in question, the evidence is that while the names of the suppliers and publications are publicly available, their collection, appraisal and description were the result of Marion S. Schroeder's individual effort. She kept extensive index files in respect to them, had personal dealings with them and utilized her own expertise as a gardener in categorizing, describing and appraising them.

"In the spring of 1974 plaintiffs published the GREEN THUMBOOK and sought and obtained from the U.S. Register of Copyrights a certificate of registration. As of the time of trial, 600 copies of the book had been published and sold.

"In the fall of 1973 Messrs. Riker and Rottenberg began the development of the GARDENER'S CATALOGUE. It is of a substantially larger format than THE GREEN THUMBOOK, 320 pages in length, with page sizes of 10 3/4 by 14 1/2 inches. It retails for $6.95 per copy. It is a 'trade' paperback. It consists of a mixture of gardening nostalgia, old-fashioned prints, engravings and illustrations, miscellaneous garden advice old and new, old and current gardening advertisements, information on ecology, listings of suppliers of all types and listings of books and book reviews.

"The evidence shows that the GARDENER'S CATALOGUE was compiled through substantial expenditure of time, money and effort by Riker and Rottenberg and the professional staff of the Gardener's Catalogue, Inc. This staff included professional writers, editors, a horticulturist, graphic artists, a photographer, an art director, editorial and production assistants, and a typesetter and calligrapher.

"The production staff's efforts included compiling many lists of gardening sources such as societies, public agencies, vendors and suppliers of gardening items and equipment and then writing these groups in order to obtain catalogs, booklets and other related information. Included in these efforts was a request of the plaintiffs for a complimentary copy of the GREEN THUMBOOK for 'research purposes' which was received by the Gardener's Catalogue, Inc. in June, 1974.

"The conceded act of copying occurred as follows. After the GREEN THUMBOOK was received, it was cut apart and its various lists were indexed in files according to their subject matter along with other information in the files of the Gardener's Catalogue, Inc. In the final production, the lists from the GREEN THUMBOOK, together with other lists were delivered to the typesetters. Substantial deletions had been made from the GREEN THUMBOOK material. Thus, only the names and addresses of the plant, seed and equipment suppliers were used. There was no copying of the description of the suppliers' specialty or of its catalogs, price lists, etc. Various of the GREEN THUMBOOK'S categorizations or headlines were, however, used.*fn*

ROSES BY FRED COMUNDS, Box 68, Wilsonville or 97070. Wide general selection; good color photos. 24 p., 6 x 12.

STAR ROSES, West Grove PA 19390. (The Conard-Pylc Co.) 215-869-2486. Developers of Peace rare; many AARS awards. Excellent color photos in catelor. 52 p., 3-1/2 X il.

P.O. TATE NURSERY, R. 3, Tyler TX 75701. 214-593-1020. Roso specialist with 46 years of experience; many varieties; good descriptions. 6 p., 8-1/2 X 18-1/2, color il.

THOMASVILLE NURSERIES, Box 7, Thomasville CA31792. 912-226-5568. Many types of roses; rose test garden open to public, April through Oct. Also azalcas, camollias, daylilies, liriopes. 24 p., 6 X 9, il.

TILLOTSON'S ROSES, Brown's Valley Rd., Watsonville CA95076. 408-724-3537. Specialists in old, rare and uncommon roses; also modern varieties. Uniquo cataloz; good descriptions: yr also modern varieties. Uniquo cataloz; good descriptions and photos. 78 p., 6 X 9, $1.00.

MELVIN E. WYANT, Johnny Cake Ridge, Mentor CH 44060. 216-255-2553. Many varieties of Peace family and other roses; numerous bargain offers. 16 p., 8-1/2 X 11, color il.

Flora-tea roses, with numerous canes, each supporting groups of "candelabralike" stems, were introduced in 1974 by Jackson and Perkins Co., Roses by Fred Edmunds, Box 68, Wilsonville, Ore. 97070. Star Roses, West Grove, Penns. 19100. Stern's Nurseries, Geneva N.Y. 14456. P.O. Tate Nursery, R. 3, Tyler, Texas 75701. Thomasville Nurseries, Box 7, Thomasville, Ga. 31792. Tilletson's Roses, Brown's Valley Rd., Watsonville, Calif. 95076. Melvin E. Wyatt, . . .

Mulches help feed rose-bed soil and plants, too, of course. Besides Mrs. Carlin's sawdust-wood-chips-cottonseed-meal mixture, materials that make good mulch run from shredded bark to sugarcane, cocoa-bean hulls and coffee grounds. "It's foolhardy to attempt to grow roses without mulching," says Glaes. He uses shredded pine bark or cocoa-bean hulls, applied at approximately a 2-inch level after spring pruning and feeding. I haven't had to cultivate my rose beds in 25 years," he adds. For weed control, moisture conservation and added fertility, a layer of organic matter - peat, ground corncobs, hay shredded leaves, cottonseed hulls, redwood sawdust are all effective. Apply mulch about a month before plants bloom, first pulling any weeds (carefully, since rose roots may grow close to surface) and raking soil lightly. Spread material evenly around plants to a depth of 2 to 3 inches or more.

"This same approach was taken with respect to the plant societies and magazines. Only the names and addresses were utilized. No information was copied respecting dues, the names of monthly publications or the contents of the publications.

"While virtually all of the names and addresses appearing on 27 of the 63 ages of the GREEN THUMBOOK were copied, they comprise only 3 1/2 pages or approximately 1% of the total printed material appearing in the GARDENER'S CATALOGUE. Nevertheless, page 4 of the GARDENER'S CATALOGUE states:

'The articles and illustrations it [The Gardener's Catalogue] contains represent only the top of the proverbial iceberg as far as available gardening information is concerned. The words and graphics are meant to be entertaining as well as informative. However, the most important strata of this book is buried in the source lists and bibliographies.'

'At this point you can buy nothing directly through the GARDENER'S CATALOGUE. Most of the ads in this book are antiques meant to show how little things have changed. All the where-to-buy-it information is contained in the source lists.' (Emphasis supplied)

"Furthermore, while the copied information comprises only 1% of the GARDENER'S CATALOGUE, it is commingled with the other materials in the accused book.

". . .

On October 28, 1974 an initial printing [of the Gardener's Catalogue] was completed; on November 11, 1974 another printing took place.

". . .

"Subsequent to the notice of infringement, the GARDENER'S CATALOGUE was revised and no contention is made that the revision infringes plaintiffs' copyright. However, substantial numbers of the originally allegedly infringing version were sold after notice of infringement."

Copyrights on compilations such as plaintiffs' are provided for in § 7 of the Copyright Act, 17 U.S.C. § 7:

"Compilations or abridgments, adaptations, arrangements . . . or other versions of works in the public domain or of copyrighted works when produced with the consent of the proprietor of the copyright in such works . . . shall be regarded as new works subject to copyright under the provisions of this title; but the publication of any such new works shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof, or be construed to imply an exclusive right to such use of the original works. . . ."

The District Court held that § 7 protected Marion S. Schroeder's "descriptions of the various sources and publications" and "the totality of her work," but not the categorized lists of names and addresses otherwise in the public domain. Because the compilers of defendants' catalogue had "limited their copying to information . . . in the public domain," and had eschewed those marks of originality for which Marion S. Schroeder was entitled to "the reward of a compilation copyright," they had not infringed the copyright. Plaintiffs appeal from the judgment, and defendants cross-appeal from the District Court's denial of their request for attorneys' fees.

We hold that plaintiffs' copyright was infringed. An original compilation of names and addresses is copyrightable even though the individual names and addresses are in the public domain and not copyrightable. Leon v. Pacific Tel. & Tel. Co., 91 F.2d 484 (9th Cir. 1937); Jeweler's Circular Pub. Co. v. Keystone Pub. Co., 281 Fed. 83, 87-88 (2d Cir.), cert. denied, 259 U.S. 581, 66 L. Ed. 1074, 42 S. Ct. 464 (1922). As the latter case observed, only "industrious collection," not originality in the sense of novelty, is required. See also Gelles-Widmer Co. v. Milton-Bradley Co., 313 F.2d 143, 146 (7th Cir.), cert. denied, 373 U.S. 913, 83 S. Ct. 1303, 10 L. Ed. 2d 414, 137 U.S.P.Q. (BNA) 913 (1963). Thus we reject defendants' contention, first raised at oral argument, that the "novelty" requirement of patentability is applicable to copyrights as well. Cf. L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir.) (in banc), cert. denied, 429 U.S. 857, 97 S. Ct. 156, 50 L. Ed. 2d 135 (1976), distinguishing between the "novelty" required for patentability and the "originality" necessary for copyright protection. The copyright protects not the individual names and addresses but the compilation, the product of the compiler's industry. Another is entitled to make his own compilation of the same names and addresses, using information in the public domain, but he is not entitled merely to copy the copyrighted list. G. R. Leonard & Co. v. Stack, 386 F.2d 38, 39 (7th Cir. 1967).

The validity of plaintiffs' copyright is not disputed. It is clear from the District Court's findings that the bulk of the compilations in plaintiffs' directory were made with substantial independent effort and not by merely copying from other sources. The use of another copyrighted directory to obtain sources of information or for verification and checking, to the extent it occurred, was not wrongful and did not put plaintiffs' compilation beyond the protection of the statute. See G. R. Leonard & Co. v. Stack, supra, 386 F.2d at 39. The compilers of defendants' book, it is also clear, simply copied into their own book, without any independent effort or even verification, virtually all the names and addresses appearing on 27 of the 63 pages of plaintiffs' book. The large staff that prepared defendants' book was saved "a few days" time and effort by this copying at a time when they were working "14 to 16 hours a day, seven days a week" to meet a deadline, which they barely met. As the Second Circuit held in Orgel v. Clark Boardman Co., 301 F.2d 119, 120, cert. denied, 371 U.S. 817, 9 L. Ed. 2d 58, 83 S. Ct. 31 (1962):

"Appropriation of the fruits of another's labor and skill in order to publish a rival work without the expenditure of the time and effort required for independently arrived at results is copyright infringement." (Footnote omitted.)

Defendants are not exonerated by the fact that the compilers of their book copied only the names and addresses and not the accompanying descriptive material that appeared in plaintiffs' book. The copyright protected not merely the descriptive material but also "the selection, the ordering and arrangement" of the names and addresses. Edwards & Deutsch Lithographing Co. v. Boorman, 15 F.2d 35, 36 (7th Cir.), cert. denied, 273 U.S. 738, 71 L. Ed. 867, 47 S. Ct. 247 (1926). Plaintiffs' catalogue would have been copyrightable without the descriptive material. The inclusion of that material, which was also copyrightable, did not destroy the protection the law affords the compilation of names and addresses.

The District Court found it unnecessary to reach defendants' alternative defense of fair use, see Eisenschiml v. Fawcett Publications, Inc., 246 F.2d 598 (7th Cir.), cert. denied, 355 U.S. 907, 2 L. Ed. 2d 262, 78 S. Ct. 334 (1957), but expressed doubt as to the merits of that defense because "the material taken from plaintiffs' book, the Green Thumbook, was substantial in quantity and regarded by defendants as 'the most important strata' of the Gardener's Catalogue."*fn** This doubt was well founded, and we reject the fair use argument for the reasons on which the doubt was based. We add that the value of the material copied is demonstrated not only by the admission referred to by the District Court, but also by the fact that the copying of the material by the compilers without independent checking enabled them to meet an important deadline. See Mathews Conveyer Co. v. Palmer-Bee Co., 135 F.2d 73, 85 (6th Cir. 1943).

Finally, defendants' cross-appeal from the denial of attorneys' fees is frivolous. It is plaintiffs who are entitled to an allowance of attorneys' fees.

The judgment is reversed and remanded to the District Court for a determination of the appropriate relief and the entry of judgment in plaintiffs' favor. Whether an injunction is necessary at this time will depend on whether any copies of the infringing edition of the Gardener's Catalogue are still available for sale. Contrary to plaintiffs' contention at oral argument before us, damages need not be measured by the entire profit earned by defendants on the infringing book but may be in an amount commensurate with the value of the infringing material in relation to the book as a whole. Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390, 402, 84 L. Ed. 825, 60 S. Ct. 681 (1940).




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