CHAPTER IV. TRADEMARK RIGHTS IN TITLES OF BOOKS, PERIODICALS AND PLAYS. § 85. Trademark in title of a book.-Upon this subject there has been less harmony of opinion than would be expected. It has been said by the Court of Appeals of Maryland that “A publisher has either in the title of his work or in the application of his name to the work, or in the particular marks which designate it, a species of property similar to that which a trader has in his trademark."' Mr. Browne in his learned treatise on trademarks says: "Can printed books be protected by trademarks? Yes, as mere merchandise; no, as literary productions." 2 This is true, in so far as it asserts that marks or devices may be used to distinguish the product of the publisher or book dealer.3 He says further: "There seems to be no sufficient reason why the title of a book may not be deemed a valid trademark," and thereby expresses the error contained in the careless dictum of the Maryland court quoted above. The correct view is stated in clear terms by Mr. Rowland Cox, in his note to Clemans v. Belford: 5 "It is necessarily true that the name of a book is, under all circumstances, a descriptive term which means a particular thing. The book is created and given a name, and the name is added to the language as a term of description. If a copyright is taken, the owner of the copyright enjoys, as long as the privilege continues, the exclusive right to the use of the name; and when the privilege expires, the name, always a descriptive term, becomes publici juris. If the book is not copyrighted, the literary matter becomes publici juris as soon 1-Robertson v. Berry, 50 Md. 591; Price & Steuart, 153. 2 Browne, Trademarks, sec. 116. 3-Mr. Browne cites six cases in support of this proposition, neither one of which is applicable. All related to property right in the as it is published, and the name of the literary matter goes to the public as an incident of that which it describes. If there is language in some of the cases which seems to indicate that the name of a book can be protected as a trademark, reflection will demonstrate that it can not be made good. The names of periodicals and newspapers, as distinguished from books, are protected as in the nature of trademarks; and in many instances the publications in connection with which the names have been used were proper subjects of copyright. In some cases they contained, or might have contained, articles in connection with which the statutory privilege had been acquired. But the name which has been protected has never been simply the name of a book, but always that of a constantly changing series. Thus the term 'Old Sleuth Library' was distinctly arbitrary, and never the name of a particular book or literary production, and for this reason it was in an accurate sense a trademark, and must continue to be as long as the publication was continued. But if the publication of the periodical were discontinued for a period of years, the name would cease to be arbitrary and take its place in literature as indicating a definite collection of articles, pictures, etc., and as soon as it acquired that settled meaning, it would, in the absence of copyright, become publici juris. It is now established law that there is no trademark right in the title of a book. Judge Wallace stated the rule very lucidly when he said: "Neither the author or proprietor of a literary work has any property in its name. It is a term of description, which serves to identify the work; but any other person can with impunity adopt it, and apply it to any other book, or to any trade commodity, provided he does not use it as a false token to induce the public to believe that the thing to which it is applied is the identical thing which it originally designated. If literary property could be protected upon the theory that the name by which it is christened is equivalent to a trademark, there would be no necessity for copyright laws." This doctrine is fully sustained by the later cases.? There may be unfair competition in the composition of a book or in its advertising. But "there must be shown an intention to palm off defendant's book for the plaintiff's book. The burden. is on the complainant to make clear and satisfactory proof of 6-Black v. Ehrich, 44 Fed. Rep. 793, 794. 7-Merriam v. Holloway Puh. Co., 43 Fed Rep. 450 (opinion by Mr. Justice Miller on circuit); Merriam V. Famous Shoe and Clothing Co., 47 Fed. Rep. 411 (opinion by Judge Thayer); Merriam v. Texas Siftings Pub. Co., 49 Fed. Rep. 944 (opinion by Judge Shipman); Kipling v. G. P. Putman's Sons, 120 Fed. Rep. 631; 57 C. C. A. 295. fraudulent intent and deceit. Similarity of chapter headings alone would not support the charge of unfair com petition."' 7 Here, as elsewhere, the broad doctrines of unfair competition may be invoked, even in the absence of copyright. In a case where the plaintiff published an uncopyrighted compilation of hymns and poems, bound and illustrated in distinctive fashion, and the defendant copied the work, in a cheaper manner, the court said: "The injury likely to be done plaintiff is twofold. First, it is threatened with a loss of sales and subsequent profit; and, secondly, it is threatened with a loss of reputation as a producer of fine and artistic books. * Upon the general right of the plaintiff to protective relief we can not see any reason why the same rule should not be applied to a book that has been applied to a game, or to cigars, or to anything else which is distinguished by a label, or by the distinctive form or style of the package. The decisive fact is that the defendants are unfairly and fraudulently attempting to trade upon the reputation which plaintiff has built up for its books."8 * § 86. Trademark in title of periodical.-In 1859 Vice-Chancellor Stuart enjoined a defendant who had begun the publication of "The Penny Bell's Life and Sporting News" from publishing any newspaper under that name, or any other name in which the words "Bell's Life" should occur, the application being made by the proprietors of "Bell's Life in London." In the course of his opinion the vice-chancellor said: "This is an application in support of the right to property. Thus was distinctly recognized the right of trademark in the title of a periodical publication. Long prior to this time, however, equity had suppressed this species of piracy between publishers, the first reported case being that of Hogg v. Kirby, where the complainant was the proprietor of a magazine called "The Wonderful Magazine" and the defendant's publication bore substantially the same name with the addition of the words "New Series, Improved." The injunction was granted by Lord Eldon. 10 7a-Manton, J., in Kennerley v. Simonds, 247 Fed. Rep. 822, 829. 8-E. P. Dutton & Co. v. Cupples, 102 N. Y. Supp. 309. 9-Clement v. Maddick, 1 Giff. 98; 5 Jur. N. S. 592; 33 L. T. 117; Seb. 174. 10-Hogg v. Kirby, 8 Ves. 215; Seb. 10. Lord Eldon also restrained a defendant from the publication of a court calendar which 11 In the United States Chancellor Sandford was the first to recognize this right, in 1825, although he refused to enjoin the use of the title "The New York National Advocate" on the application of the proprietor of "The National Advocate," both names being applied to newspapers published in the city of New York, holding the names to be substantially different; and this notwithstanding the fact that the defendant had been the editor for the publisher who had sold "The National Advocate" to the complainant. The chancellor did not expressly hold the title of the paper to be a trademark, but treated it as part of the goodwill of the printing establishment. Indeed he seems to have treated the subject solely from the standpoint of unfair competition, ignoring the question of technical property right, as did Chancellor Walworth in 1840 in refusing to enjoin the use of the title "New Era" on the application of complainants who published the "Democratic Republican New Era," saying inter alia, "There could be very little excuse for the editor of a new paper who should adopt the precise name and dress of an old established paper, which would be likely to interfere with the goodwill of the latter by actually deceiving its patrons." 12 In 1867, however, a clear cut opinion of the Court of Common Pleas of the City of New York recognized the property right in unmistakable terms. The plaintiffs, proprietors of the "National Police Gazette," applied for an injunction to restrain the publication of the "United States Police Gazette" by the defendants. Brady, J., said: "The title of a newspaper may be a purely original one, and the proprietor for that reason entitled to its exclusive use. He may create a word, or combination of words, for the particular designation of his paper, and in that way acquire an exclusive right to the use of the name employed. He may combine, as the plaintiffs have, well-known English words in common use. It also ** appears that the plaintiff's paper has been published weekly under that name for many years, that its he was issuing as a continuation of the complainant's work. Long man V. Seb. 15. Winchester, 16 Ves. 269; 11-Snowden v. Noah, Hopkins, Ch. R. 347; Cox, 1; Seb. 41 12-Bell v. Locke, 8 Paige, 75; Cox, 11; Seb. 65. circulation is large and valuable, and that it was the only police gazette, eo nomine, published in the United States at the time of the publication of the paper complained of by them. From these facts it is apparent that the plaintiffs have acquired a right connected with the publication of a newspaper called the National Police Gazette, which must be preserved against any fraud attempted to be perpetrated against them." 13 In 1870, in the Philadelphia Court of Common Pleas, Judge Paxson said: "the name of a newspaper is a trademark. As much so as a label stamped upon a bale of muslin." 14 But this was mere obiter dictum, as the learned court was dealing with the mark and dress of a stove polish. Subsequently the Superior Court of New York City, per Monell, J., said: "I do not understand that the protection which the law affords to 'trademarks,' even assuming the name of a newspaper to be a trademark, goes so far as is claimed in this case. The protection which has been granted to that species of property has never, I believe, been extended over anything that was the subject of a patent or a copyright, but is confined to appropriations of names designating some particular manufacture or business. There can be no such property in a newspaper except, perhaps, in the name or title of the paper, which is the only continuing portion of it. The contents of each issue are the composition or creation of the editor or contributors, are varied each day, and when given to the public all literary proprietorship in them is lost. And the law of trademarks, like the law of copyright, can not be applied to a work of so fluctuating and fugitive a character. 15 As late as 1881 Sir George Jessel, master of the rolls, said: "It does not appear to me that there was any invention in the combination of 'Splendid Misery,' any more than there |