## Facts

- G. & C. Merriam Co. long published dictionaries marketed as “Webster’s” and was closely identified in the trade with that name.
- The underlying 1847 “Webster’s Unabridged Dictionary” text entered the public domain after its copyright expired in 1889.
- George W. Ogilvie published an enlarged and revised dictionary based on the public-domain 1847 work and used “Webster’s” in the title.
- Ogilvie’s book identified him as publisher on its cover and title page, but his circulars and advertisements used material drawn from Merriam’s promotional literature and tended to suggest his book was a new Merriam edition or successor in Merriam’s series.
- Ogilvie sought to stop Merriam from sending trade communications asserting Merriam had the exclusive right to use “Webster” for dictionaries.
- Merriam counterclaimed to stop Ogilvie from using “Webster’s” and from employing misleading promotional materials likely to confuse purchasers.

## Issues

1. Whether Merriam had an exclusive right to the word “Webster” as a dictionary title, permitting it to bar competitors from using “Webster’s.”
2. Whether Ogilvie’s labeling, advertising, and promotional practices constituted unfair competition by implying his dictionary was Merriam’s latest “Webster” or part of Merriam’s series.
3. What equitable relief was proper where Merriam overstated exclusivity and Ogilvie engaged in misleading marketing.

## Decision

- The First Circuit substantially affirmed the decree below, with modifications to the form of relief.
- The court held Merriam had no exclusive trademark right in “Webster” for dictionaries and could not exclude others from using the term in a nondeceptive manner.
- The court held Ogilvie’s advertising and presentation were misleading to the extent they suggested affiliation with or succession to Merriam’s dictionaries, constituting unfair competition.
- The decree provided injunctive relief: Merriam was restrained from asserting absolute exclusivity in “Webster,” and Ogilvie was restrained from promotional and presentation practices likely to cause confusion and was required to clearly distinguish his product from Merriam’s.

## Legal Principles

- A word that has become generic or descriptive of a type of product in the trade is not subject to exclusive appropriation as a trademark.
- Entry of a work into the public domain permits competitors to reproduce and revise the work, but does not permit marketing designed to mislead buyers as to source, sponsorship, or continuity with another producer’s line.
- Even where a term is free for all to use, unfair competition occurs when a seller’s advertising, trade presentation, or descriptions are likely to cause purchasers to believe the goods are those of another.
- Equitable relief in unfair-competition disputes should be tailored to prevent future deception; where both parties are at fault, courts may favor corrective injunctions over monetary remedies.

## Conclusion

The court held that “Webster” could not be monopolized as a dictionary name, but competitors using the term must market their dictionaries in a way that clearly avoids confusion with Merriam’s publications; injunctive relief was fashioned to prevent both false exclusivity claims and deceptive passing off.


G. & C. Merriam Co. v. Ogilvie, 159 F. 638 (1st Cir. 1908)