Scottish Court of Session Decisions

In July 1891, Harpers, Limited, engineers, Albion Iron Works, Aberdeen, brought an action of suspension and interdict against Barry, Henry, & Company, Limited, engineers, Aberdeen, to have them interdicted “from printing, or otherwise multiplying, and also from publishing, issuing, or circulating, or selling and exposing to sale, a book or catalogue of transmission power appliances titled as follows, ‘Barry, Henry, & Company, Limited, Founders, Engineers, and Millwright Transmission of Power Appliances,’ and recently published, issued, and circulated by the respondents; and further, from printing, publishing, issuing, or circulating or selling and exposing to sale any copies, whether exact and literal copies, or colourably altered and modified, of a book entitled ‘Catalogue VI., Harpers, Limited, Albion Iron Works, Aberdeen, Scotland,’ being a catalogue of accessories for the transmission of power, or of circulars Nos. 1, 2, 28, 31,14, 16, 18, 32, embodied in said catalogue, or any of said circulars; which book or catalogue and circulars are duly entered at Stationers' Hall, in terms of the Act 5 and 6 Vict., cap. 45, and of all which the copyright belongs to the complainers as registered proprietors thereof.”

The complainers stated that they had “for about twelve years past carried on a large and increasing business, particularly in the manufacture of pulleys and shafting, in Aberdeen. In connection with the said business, and for the furtherance thereof, the complainers commenced the preparation of illustrated circulars, and they engaged in connection with the preparation thereof several of their most skilled employees, with the view of having the results of the highest practical and scientific skill embodied in the designs, and specially in the calculations of weight, dimensions, strength, cost, &c., of numerous elaborate appliances for the transmission of power, specified in the said circulars and in the book after mentioned. Very great labour, time, and expense were bestowed in the preparation of said circulars and book, and the same have proved of the greatest value in the trade, and the result of the issue and publication thereof by the complainers has been a very large accession to the business done at their said foundry, which business has increased at a most rapid rate from the date of said publication until the issue of the colourable imitation thereof by the respondents as after mentioned. The costs incurred in connection with the printing, issuing, and advertising said circulars and catalogues, were upwards of £3000, and the same embody the fruits of almost continuous labour of the highest and most skilled kind which could be procured for a period of about eight months continuously. The said book or catalogue and circulars are those specially referred to in the note of suspension…. They are issued by the complainers gratuitously to their customers, and to the trade generally, for the purpose and with the effect of obtaining orders for goods and promoting their business. An announcement of the fact that they are entered at Stationers' Hall, and that they are copyright, appears upon each page of the publications. The complainers have recently discovered and aver that the respondents have prepared and issued to the trade the book or catalogue mentioned in the note of suspension, and circulars, price lists, and others, which are truly copies of, and in many parts identical with, or only colourably different from said book or catalogue and circulars, the copyright of which is the property of the complainers. … The said piracy has been accomplished by the respondents in the following circumstances. The respondents' company was formed about twelve months ago by four of the leading employees of the complainers, along with a capitalist, and they

Page: 119↓

erected works and machinery in Aberdeen expressly for manufactures similar to the complainers… . With regard to the contents of the said publications by the respondents, the method adopted by them was as follows:—They were aware of the novelty and great value to the trade of the complainers' publications, it being the fact that prior to the issue by the complainers of their said circulars and catalogue, separate estimates and relative calculations of the most elaborate description had to be made with reference to the items of every order, the consequent loss in time, labour, and money in the trade being very heavy, and that all this had been saved by the highly useful publications of the complainers. Instead of proceeding in an independent manner to prepare for themselves price lists, measurements, catalogues, &c., they procured copies of the complainers' publications, laid these before servants and others employed by them, with deliberate instructions to make up catalogues, lists, calculations, drawings, &c., from them, taking such occasion as they conveniently could to make now and again certain trifling alterations thereon, such as, that when proportions of one-third, one-half, one-fourth, &c., were mentioned in complainers' catalogue, these proportions should in the respondents' catalogue be inserted as percentages. The contents of the respondents' catalogues were thus inserted without independent investigation or calculation, and the chief or sole labour of the whole productions was in the effort to avoid exact identity of language. Both the respondents and their said employees were throughout said operations cognisant that the object of the respondents' efforts was to pirate the results of the complainers' labour, time, outlay, and skill.”

They pleaded—“(1) The complainers' catalogue and circulars being the product of their labours, outlay, and experience, and the complainers being the owners of the copyright therein, the respondents are not entitled to use and appropriate the same, or any material parts thereof, for their own benefit, and to the damage of the complainers. (2) The respondents having printed, published, issued, and circulated the price list and catalogue complained of without the consent of the complainers, and in violation of their proprietary rights, the complainers are entitled to interdict as craved.”

The respondents averred—“The contents of the complainers' circulars are mainly derived from sources common and well-known to the trade. In particular, the complainers have, in addition to the ordinary and familiar works on mechanical engineering and mill-gearing, used in the preparation of their circulars the following works”—…

And pleaded—“(2) In respect that the respondents have not in any way violated the rights of the complainers, interdict ought to be refused. (3) The complainers alleged copyright is invalid in respect of want of novelty in the said catalogue and circulars.”

The Lord Ordinary ( Low) allowed a proof, the substance of which appears from his Lordship's subsequent note, and from the opinion of Lord M'Laren. It practically established the statements made by the complainers.

Upon 5th March 1892 Lord Low granted interdict in identical terms with the prayer supra.

“ Opinion.—There is no doubt that the respondents' catalogue is substantially a copy of that of the complainers. That is established by the evidence of Aberdein, Tyre, Milne, and Little, who made up the respondents' catalogue, and who describe what they did. It is true that the prices are not the same in the two catalogues, but it is not disputed that the prices in the complainers' catalogue formed the basis upon which the prices in the respondents' catalogue were fixed. Those who compiled that catalogue cannot, on the view of the evidence most favourable to the respondents, be said to have applied their minds to the matter to any greater extent than that (1) they considered how much they could take off the complainers' prices in respect that their improved tools and machinery enabled them to manufacture somewhat more cheaply than the complainers could do; and (2) they slightly raised the prices of some of the heavier articles, because they thought, from the experience which some of their number had had in the complainers' works, that the latter had been in the habit of charging a price for these articles which was too low and did not pay. That is the full extent to which the respondents' catalogue represents independent mental labour. In other respects it is practically a copy of the complainers' catalogue.

The contents of the complainers' catalogue may be conveniently considered under three heads. It contains (1) a list of the articles manufactured by the complainers, with the price of each article; (2) certain rules whereby the price of an article if a size not specified in the list may be ascertained. These are called ‘extension rules;’ and (3) certain rules whereby the amount of horse-power which a pulley or gear-wheel of a particular size will transmit may be calculated. These are called ‘power-rules.’

The bulk of the catalogue falls under the first head, and I shall, in the first place, consider how the case stands in fact and in law in regard to the price-lists.

The respondents contended that there could not be copyright in a price-list. If, they argued, a manufacturer had articles for sale, he was entitled to say so, and to publish a list of the articles with their prices, and if he chose to advertise them at the same prices as a rival manufacturer, he had a perfect right to do so. As a general statement, I think that these propositions are sound, but the question is, whether they are applicable to the circumstances of this case?

There is this peculiarity in the price-list in this case, that before the complainers' catalogue was issued, no manufacturer of

Page: 120↓

the articles contained in the price-lists (with a few exceptions, the principal being pulleys of less than 7 feet in diameter) could tell a proposing purchaser what the price of a piece of machinery would be without a somewhat complicated calculation. It appears that articles of the kind dealt with in the catalogue are not kept in stock, but are invariably made to order. When an order was received, or, I should rather say, when a quotation of prices was asked, a cost-sheet of the machinery required had to be made up. In the first place, a drawing had probably to be made, and, at all events, the weight of the pulley or wheel, or whatever the machine might be, had to be calculated. Then the foreman of each department—moulder, engineer, wheelwright, and so on—had to estimate how much time the work in his department would take. The data thus supplied were then given to a skilled clerk, who worked out the price, adding to the cost of production a sufficient sum to give a reasonable profit and cover oncost charges, the cost of carriage, and matters of that sort. Of course a cost sheet once made up might serve for subsequent orders for a similar article, but except in so far as the manufacturer had cost sheets made up in his own works, the process which I have described had to be gone through before he could tell a customer what the price of the article wanted would be. This seems to me to involve an important distinction between the price-lists in this case and a price-list of articles constituting the ordinary stock of a shop or warehouse.

Mr Harper's object in preparing his catalogue was to get rid of the necessity of constantly making up cost sheets, and he hoped to derive (and says that he has in fact derived) various advantages from an accurate and exhaustive price-list. The chief advantages claimed by the complainers are the following:—In the first place, the pricelist saves the time, and therefore the expense, which was formerly occupied in making up the cost-sheets. In the second place, the price of each article specified in the list being carefully worked out and checked, is accurate and reliable, whereas the price brought out in a cost sheet was not so reliable, as the foremen are apt to make mistakes in their estimate of time. In the third place, a catalogue enables a person proposing to fit up machinery to see at once what the cost will be, thus saving him the trouble and delay of communicating with the manufacturer as to the kind of machinery which he requires and getting an estimate of cost made out.

These are undoubtedly great advantages, and if they have been obtained by the complainers' catalogue, it is a work of very considerable practical utility. Although the respondents tried to insinuate that cost sheets are still made up by the complainers, there is a great weight of evidence to the effect that the complainers' catalogue has been found of great use, not only to themselves as the manufacturers of the machinery, but to engineering firms who supply and erect machinery but do not themselves make it, and to consulting engineers who advise mill-owners and the like as to the kind of machinery which they should use. It is to these classes of persons that manufacturers like the complainers must to a great extent look to bring them business, and it is obvious that a catalogue which would be useful to such persons would be likely to prove a great advantage to the complainers.

Then it was said that the price-lists do not represent in any proper sense original work, and that anyone with reasonable experience in the business—for example, clerks like Tyre and Aberdein—could without much difficulty have compiled the price-lists with the aid of published catalogues of other firms, text-books of engineering, a few cost sheets to serve as guides, and a moderate knowledge of arithmetic. Now, certainly Mr Harper did not find it such an easy matter to make up the price-lists in the complainers' catalogue. He may have fallen into some exaggeration as to the number of hours a day which he devoted to the preparation of the catalogue, but it undoubtedly cost him a great deal of labour. In order that he might give his whole time to the preparation of the catalogue, he engaged a competent manager to look after the works in Aberdeen, and took up his residence in the neighbourhood of London, where he worked continuously at the catalogue for a period of some six months. Mr Harper has had great experience of the business, and he is evidently a man of considerable intelligence, and I do not believe that he wasted his time in unnecessary work. In order to attain the object which he had in view, it was obviously necessary that the results which he brought out should be accurate. A very little overstating or understating of prices might have been attended with serious consequences, because if the prices had been put too high, it would have had the tendency to drive away business; and if they had been put too low, it would have cut down the profits of the firm. He says that he therefore calculated and checked the price of every article carefully, and that the great bulk of the prices were deduced from actual cost sheets or from calculations made upon a similar basis.

The respondents further say that the complainers' catalogue is to a great extent merely a compilation from sources common and well-known to the trade, such as trade catalogues, circulars, and hand-books of engineering. The respondents furnished a long list of catalogues and circulars which they averred were the sources from which the complainers' catalogue was compiled, but in the end only a very few were founded on as containing price-lists like those of the complainers, and chiefly Vaughan's, Richard's, and Carter's. No doubt in these catalogues there are pricelists of articles contained in the complainers' catalogue, and indeed part of Carter's price-list was supplied by Mr Harper himself, but it is plain that when the complainers' catalogue was published, it alone gave a complete and exhaustive

Page: 121↓

price-list of the machinery for the transmission of power with which it deals. From no published works could the information given in the complainers' price-lists be obtained without calculations of a more or less complicated description, and in many cases without having cost sheets made up by persons possessing the necessary skill and knowledge.

I am therefore of opinion that the pricelists of the complainers were to a great extent novel, that they were of practical utility to the complainers by giving them a great advantage in the prosecution of their business, and that they were the product of experience, knowledge, and labour on the part of Mr Harper. The question is, whether the mere fact that the catalogue is one of articles which anyone may make, and which many manufacturers do make, and which anyone may sell, and advertise for sale at any price he chooses, excludes the price-lists from the privilege of copyright? I am of opinion that the question must be answered in the negative, both upon authority and principle. It has been held that illustrations of articles of everyday use, such as tables, chairs, and bedsteads, and which are sold in every upholsterer's shop, are protected— Maple & Company v. Junior Army and Navy Stores, 21 Ch. Div. 369; that a directory of the names and designations of the occupants of the houses and shops in a town cannot be copied— Kelly v. Morris, 1 Eq. 697; and that lists of registered bills of sale and deeds of arrangement fall under the provisions of the Copyright Act— Trade Auxiliary Company v. Middlesborough Protection Association, 40 Ch. Div. 425. The principle underlying all these cases is that a person is entitled to reap the benefit of his own skill and labour, and that a publication, which is not a mere collection from sources open to all but the product of mental labour, entitles the author to a copyright. Of course the respondents are entitled to issue a catalogue of the articles which they manufacture, and if they like to offer these articles for sale at the same price, or at a lower price than the complainers, they are entitled to do so. Further, if the respondents think that the scheme of the complainers' catalogue is a good one, they may, I apprehend, compile a catalogue upon the same system, but they must do it for themselves, and are not, in my judgment, entitled simply to copy a work which is the product of the knowledge and labour of the complainers. Vice-Chancellor Sir W. Page Wood states the law in Kelly v. Morris in terms which appear to me to be entirely applicable to the present case—‘In the case of a dictionary, map, guidebook, or directory, when there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to set about doing for himself that which the first compiler has done. In the case of a road-book, he must count the mile-stones for himself. In the case of a map of a newly discovered island, he must go through the whole process of triangulation just as if he had never seen any former map, and generally he is not entitled to take one word of the information previously published without independently working out the matter for himself, so as to arrive at the same result from the same common sources of information, and the only use which he can legitimately make of a previous publication is to verify his own calculations and results when obtained.’

But the respondents maintain that if any part of the price-lists are protected, it can only be the prices, because there can be no copyright in a list of articles, and that the prices in their lists are not copied from the complainers, but were arrived at by independent calculation. I doubt if it is a legitimate way of looking at the matter, to split the price-lists up into a list of articles and a list of prices. But assuming that the prices only can be taken into consideration, I am of opinion that the respondents did not arrive at their prices by independent calculation in any proper sense of the term, but copied the complainers' prices with only slight and colourable alterations. I have already stated what appears to me to be the fullest amount of independent mental labour with which the respondents can be credited, and I do not think that it amounts to much. They took the complainers' prices as their standard, and, in the general case, simply cut a little off these prices, and in a few cases added on a little. But unless they had had the complainers' prices to work upon they could not have arrived at their prices without a great amount of labour. They took advantage of the labour of the complainers to save themselves trouble, and the only calculations which they can suggest that they made were (1) what percentage in the cost of production was saved by their improved appliances, and (2) whether, in the case of a few of the heavier articles, the manufacture of which is attended with various contingencies, they should not allow a larger margin than the complainers had done. But that, in my judgment, is not sufficient to make the respondents' price-lists original work, nor, if the views which I have expressed are sound, to prevent their lists being treated as an infringement of the complainers' copyright.

Passing now to the extension rules and power rules, the respondents contend that there is no copyright in them, because they are simply a statement of old and well-known rules. They admit, however, that the form in which the rules are expressed is new. Now, as regards the extension rules, they are no doubt rules of practice known generally and recognised in the trade, but they are expressed in the complainers' catalogue in very neat and comprehensive terms, and must have cost altogether a good deal of thought and trouble. If, however, these rules had only stood alone, the question whether they are protected would have been one of considerable difficulty. They do not, however, stand alone, but are just one of many

Page: 122↓

matters which the respondents have thought it worth their while to copy, and may therefore, I think, be legitimately taken into consideration as showing the wholesale way in which the respondents have availed themselves of the complainers' work.

The power rules seem to me to stand in a different position from the extension rules, and are more favourable for the complainers. These rules are not claimed by the complainers as new in the sense that they are discoveries of Mr Harper. It is admitted that the scientific truths which the rules embody were known and applied in practice. What is claimed is that the statement of the rules is original, and that they are put in a simple, practical form, which renders them easy of application, and also available to a class who have not the education required to make use of them in any form in which they had previously been stated. I think that this is proved to be the case, and the respondents, at all events, cannot say that the way in which the complainers state the rules is not a good and useful way, because they have copied it, instead of adopting some other form in which the rules had previously been or might be stated.

The rule which the respondents chiefly founded on is that on page 9 of the catalogue. That rule is admittedly what is called Tullis' rule, although the complainers state the rule in a somewhat although not materially different way from that in which Tullis states it. I do not think, however, that the respondents can maintain that there is not merit in the complainers' way of stating the rule, seeing that they have adopted it.

The rule upon page 17 is Hanson's rule, but he expressed it in the shape of a page of figures, and I think that to reduce the principle contained in that page of figures into a simple statement of two lines constitutes original work.

The rules in pages 25 and 32, although the principle involved was known and acted upon, were never before, I understand, formulated in the shape of rules.

I am therefore of opinion that the complainers have a copyright in the power rules. The fact that the principle set forth in the rules is not new seems to me to be of no moment. If that was a sufficient ground for holding that there was no copyright, then I do not think that such work as elementary treatises upon scientific subjects or text-books upon grammar or arithmetic would in the general case be protected, because such works do not happen to contain anything new in the sense that it was not known before, but to put known truths and principles in a new shape.

I am therefore of opinion that the complainers have a copyright in all the important parts of their catalogue, and as these parts have been copied by the respondents, either literally or only with colourable alterations, the complainers are, in my judgment, entitled to be protected by interdict.

The respondents reclaimed, but expressed their willingness to acquiesce in the interdict pronounced if their price-list which was struck at by the interdict against Nos. 14, 16, 18, and 32 was excluded from it.

They argued—The complainers and the Lord Ordinary had confused, two things—(1) Whether the publications were capable of being made the subject of copyright, and (2) whether there had been infringement of the copyright. The Lord Ordinary had made the amount of trouble involved, and not the result, the test of whether a publication was subject of copyright. Price-lists were not proper subjects for the protection of copyright— Cobbett v. Woodward, 1872, L.R., 14 Eq. 407. A man is entitled to sell what he manufactures at any price he pleases, to say at what price he will sell, and to publish his prices— Singer Manufacturing Company v. Loog, 1882, 8 App. Cas. 15. Grocers advertise cooperative store prices although they have not gone through the store calculations. It is no matter how the seller has reached these prices. Further, the sources of information were open to all, and the results depended upon mathematical methods of calculation, in which the complainers had no monopoly. Also, the price-lists were not identical, intermediate sizes of pulleys having been interjected, and considerable reductions made upon the articles common to both.

Argued for the complainers—If these price lists were a good subject for copyright, as they were, being the result of literary skill and labour, the infringement was virtually admitted. The mistake made by the appellants was in regarding these lists as price lists in the ordinary sense of the term. They were quite unique. They were not lists of prices well known in the trade and easily calculated. They represented months of labour and much mental ability. Such price lists had never been produced in the trade before, and yet the appellants, a newly founded firm, were able to start with a complete list but only by deliberately copying theirs. The deduction of 5 per cent. and the interpolated pages did not make the list an independent production. The appellants were entitled to make the calculations for themselves if they could, but the results would not be the same, for the calculations depended on trade experience as well as on mathematics. They were even entitled to send out circulars saying they would undersell the complainers by 5 per cent., and to use these price lists in their business, but not to issue them as their own price lists. It was always possible to get behind results to the method by which these results had been reached, and so to determine whether there had been fair independent work or only copy— Maidman v. Tegg, 1826, 2 Russell, 385; Lewis v. Fullarton, 1839, 2 Bea v. 6; Hotten v. Arthur, 1863, 1 Hemming & Miller, 603. There is copyright in a catalogue unless a mere dry list of names— Kelly v. Morris (directory),1866, L.R., 1 Eq. 697; Scott v. Stanford,

Page: 123↓

1867, L.R., 3 Eq. 718; Grace v. Newman (advertising catalogue), 1875, L.R., 19 Eq. 623; Maple & Company v. Junior Army and Navy Stores (illustrated catalogue, which overruled Cobbett), 1882, L.R., 21 Ch. Div. 369; Trade Auxiliary Company v. Middlesborough Protection Association, L.R., 40 Ch. Div. 425.

At advising—