223 F. 247 | 2d Cir. | 1915
The bill of complaint is filed by an alien and subject of the king of Great Britain. The complainant resides and has, his principal place of business in London, England. The defendant is a citizen of the United States, residing in the city of New York, state of New York, and does business under the name of the American Code Company.
Complainant alleges that he secured in 1906 a copyright under the laws of the United' States for a book entitled “Bentley’s Telegraph Cyphers,” and.that he is the sole and exclusive owner of the copyright in that work. He states that the defendant, without his license, and against his will, and in violation of his rights, and in infringement of his copyright, has unlawfully, wrongfully, and injuriously printed, published, ánd sold books containing telegraph cyphers which are exact fac simile copies of complainant’s cyphers as contained in the copyrighted book. He seeks an injunction, an accounting of the profits, and damages.
“It is perfectly agreeable to tbe Principles of Natural Equity and Justice that every Author should be secured in receiving the Profits that may arise from the Sale of His works, and such Security may encourage Men of Learning and Genius to publish their Writings; which may do Honor to their Country and Service to Mankind.” Acts and Laws of Conn. Jan. Sess. 1783.
The act of 1790 granted copyright to such author only as may be “a citizen of the United States or resident therein,” and this continued to be the policy of Congress in the subsequent acts passed upon the subject until 1891. Prior to that time, and beginning as early as 1837, Congress was asked many times to grant protection to foreign authors and it repeatedly refused to do so. In this respect the United States pursued for years a policy less liberal than Great Britain and other foreign nations.
By the act of Congress of March 3, 1891, the provisions of the copyright laws of the United States were extended to citizens and subjects of a foreign state or nation only when such state or nation permits to citizens of the United States of America the benefit of copyright on substantially the same basis as to its own citizens, or when such foreign state or nation is a party to an international agreement which provides for reciprocity .in the granting of copyright, by the terms of which agreement the United States of America may at its pleasure become a party to such agreement. 26 Stat. p. 1106, c. 565. And the President of liie United States, acting under the provisions of the act, issued a proclamation on July 1, 1891, in which he declared that, as citizens of the United States had the benefit of copyright in Great Britain on substantially the same basis as the subjects of that country, those subjects were entitled to the benefits given under the Copyright Act of Congress of 1891. 27 Stat. pp. 981, 982. And under the Copyright-Act of 1909 the subjects of Great Britain are still entitled to the benefit of the privileges of copyright in the United States.
The act in section 8 declares that the author of any work made the subj ect of copyright by the act shall have copyright for such work under the conditions and for the terms specified in the act :
“Provided, however, that the copyright secured by this act shall extend to the work of an author or proprietor who is a citizen or subject oí a foreign state or nation, only:
“(a) When an alien author or proprietor shall be domiciled within the United States at the time ol the iirst publication of his work; or
“(b) When the foreign state or nation of which such author or proprietor is a citizen or subject grants, either by treaty, convention, agreement or law, to citizens of the United States the benefit of copyright on substantially the same basis as to its own citizens, or copyright protection substantially equal to th'e protection secured to such foreign author under this act or by treaty; or when such foreign state or nation is a party to an international agreement which provides for reciprocity in the granting of copyright, by the terms of*250 which agreement the United States may, at its pleasure, become a party thereto.
“The existence of the reciprocal conditions aforesaid shall be determined by the President of the United States, by proclamation made from time to time, as the purposes of this act may require.” Act March 4, 1909, c. 320, 35 Stat. 1077 (Comp. St. 1913, § 9524).
In accordance with the provisions of the act the President of the United States on April 9, 1910, issued his proclamation declaring that under the conditions of the act the subjects of Great Britain were entitled to the benefits of the act. 36 Stat. pt. 2, p. 2685.
“grants by treaty, convention, agreement, and law to citizens of the United States the benefit of copyright on substantially the same basis as to its subjects, and copyright protection substantially equal to the protection secured to plaintiff under the provisions of the laws of. the United States relating to copyrights.”
The defendant does not deny the complainant’s right to take out his copyright, or that he failed in doing so to comply in all respects with the requirements of the statute. It appears, however, that complainant, after having secured his copyright in the United States of “Bentley’s Telegraph Cyphers,” published in London in 1907 a larger book entitled “Bentley’s Complete Phrase Code,” which contained a substantial amount of the “Cyphers,” together with additional matter, and secured for that work a British copyright, on the title page of which appeared the following statement:
“This Code includes the Telegraph. Cyphers entered aceo'rding to act of Congress in the year 1906, by E. I. Bentley in the office of the Librarian of Congress at Washington, D. C. All rights reserved. Entered at Stationer’s Hall.”
Copies of this work, both prior to and subsequent to 1910, he sold, not only throughout the United Kingdom, but in the United States and other foreign countries; and it is claimed that “Bentley’s Complete Phrase Code” has acquired a recognized and enviable reputation both in England and the United States for reliability, usefulness, and economy in telegraphing or cabling. And it further appears that defendant is selling in the city of New York a book of the same size and color of binding as the complainant’s work, and on the cover of which he has placed the words “Bentley’s Complete Phrase Code” in gilt letters of the same size as are used in the English publication, and that it contains an exact and complete phrase code published by plaintiff, as to subject-matter, preface, specimens, and title page, with certain unimportant exceptions. It is this work which it is claimed infringes the copyright which complainant secured in this country in 1906 upon “Bentley’s Telegraph Cyphers”; the essential features of the “Cyphers” being embodied in the work.
The defendant bases his defense upon the fact that complainant had never taken out a copyright in this country of “Bentley’s Complete Phrase Code,” and' that complainant lost his United States copyright in the “Cyphers,” so far as he had published them in “Bentley’s Com
The act of Congress provides that, during the existence of the American copyright in any Book, the importation into the United States of any copies thereof, although authorized by the author or proprietor, is prohibited unless they have been printed from type set within the limivs o£ the United States, or if the text be produced by lithographic process or photo-engraving process that has been wholly performed within the limits of the United States. Act 1909, §§15 and 31. And such prohibition existed both prior to and subsequent to 1910, when “Bentley’s Complete Phrase Code” was imported. R. S. U. S. § 4956 (3 U. S. Comp. Stat. 1901, p. 3408; and U. S. Comp. Stat. 1911, p. 1482; Comp. St. 1913, §§ 9536, 9552). The evidence shows that the book was printed from type set in London. The importation of it into the Luited States by the complainant was in itself a wrongful act, and hooks so imported are liable to forfeiture under the law. In Harper & Bros. v. Donohue & Co. (C. C.) 144 Fed. 491, 499 (1905), it was held that a defendant who had imported a book published in England and not copyrighted there, and who reprinted it in this country, could not defend his infringement of the American copyright of the same matter by alleging that lie had copied the uncopyriglited English book. As he had imported the work the importation of which was prohibited by statute, the court declared that he could not found legal rights on acts made unlawful by being prohibited.
Has the plaintiff been guilty of iniquity, so as to debar him from relief in a court of equity? It is a venerable maxim of equity that one who comes into equity must come with clean hands. A court which seeks to enforce on the part of the defendant uprightness, fairness, and conscientiousness also insists that, if relief is to be granted, it must be to a plaintiff whose conduct is not inconsistent with the standards he asks to have applied to his adversary. In other words, the plaintiff’s own conduct must not have been characterized by a want of good faith or a violation of the principles of equity and righteous dealing.
In Edward Thompson Co. v. American Law Book Co., 122 Fed. 922, 59 C. C. A. 148, 62 L. R. A. 607 (1903), this court declared that an author who pirated a large part of his work from others would not be entitled to ask to have his copyright protected. This conclusion was based upon the general proposition that equity would refuse its aid to a suitor who had himself been guilty of the same inequitable conduct which he denounced in others. In that case complainant was the publisher of two encyclopaedias of law, and defendant was engaged in compiling its Cyclopaedia of Law and Procedure, two volumes of which had at that time appeared. The method adopted by complainant in preparing the articles for its publication was similar to that employed by defendants, but the latter had not copied a word of complainant’s
Counsel stated upon the- argument that complainant, having imported his Engjish work into this cou'ntry in violation of the act of Congress, is not in a position to invoke the aid of a court of equity in this, suit. To this counsel for defendant replied that the defense of unclean hands must be affirmatively pleaded, and that plaintiff not only had not pleaded it, but had failed to urge it before the trial judge, and therefore could not have the benefit of this defense in this court. We think that both counsel for complainant and counsel for defendant have fallen into error. The maxim to which reference has been made need not be pleaded. When the evidence discloses the unconscionable character of a transaction, the court, whether the maxim is pleaded or not,, will of its own motion apply the maxim. Dunham v. Presby, 120 Mass. 285 (1876); Teoli v. Nardolillo, 23 R. I. 87, 49 Atl. 489 (1901). We do not, however, think the maxim invoked is applicable to the case before the court. The maxim does not.apply to every unconscientious a'ct or inequitable conduct of the plaintiff. It it limited to misconduct connected with the matter in litigation, and does not apply to-misconduct which is unconnected with the matter in litigation. 1 Pomeroy’s Eq. Jur. § 399. It is true that complainant violated the law of the United States in importing the Phrase Code into this country and selling it here. But, as was pointed out in Kinner v. Lake Shore, etc.,. R. Co., 69 Ohio St. 339, 344, 69 N. E. 614, 615 (1903):
“A'court of equity is not an avenger of wrongs committed at large by those-who resort to it for relief.”
It is not sufficient to debar a suitor for relief that he has committed an unlawful act, unless that unlawful act affects the matter in litigation. The offense which Bentley committed in wrongfully importing the work was not a wrong done to this defendant, or one which in any wise prejudiced him. It was an offense committed against the United States, and one of which it alone could take cognizance. The unlawful importation and vending of the book here is not so connected with the subject-matter of the present suit as to justify the application of the maxim to the plaintiff’s suit.-
The act-of Congress of June 18, 1874 (18 Stat. 78, c. 301), provided' as follows:
“See. 4962. No person, shall maintain an action for the infringement of his-copyright unless he shall give notice thereof by inserting in the several copies, of every edition published, on the title-page or the page immediately following, if it be a book; or if a map, chart, musical composition, print, cut, engraving, photograph, painting, drawing, chromo, statue, statuary, or model or-design intended to be perfected and completed as a work of the fine arts, by inscribing upon some * * * portion” of the face or front thereof, or on the face of “the substance on which the same shall be mounted, the following words, ‘Entered according to act of Congress in the year-■— by A. B.,. in the office of the Librarian of Congress, at Washington.’ ”
The history of this provision seems to begin with the act of April 29, 1802 (2 Stat. 171, c. 36), which required every person seeking to> obtain a copyright of a book to cause a copy of the record to be in
The act of February 3, 1831 (4 Stat. 436, c. 16), declared that no person should be entitled to the benefit of that act unless he should insert the prescribed words in the published copies of the book. And the act of July 8, 1870 (16 Stat. 398, c. 230), changed the language of the act of 3831, so as to declare that no person should maintain an action for the infringement of his copyright unless he inserted in the several published copies of the book the notice prescribed. The act of March 3, 1905 (33 Stat. 1000, c. 1432) providing for copyright for foreign publications makes the notice necessary only in all copies of such hooks sold or distributed in the United States. And the act of March 4, 1909, provides:
“That any person entitled thereto by this act may secure copyright for his work by publication thereof with the notice of copyright required by this act; and such notice shall be affixed to each, copy thereof published or offered for sale in the United States by authority of the copyright proprietor, except in the case of books seeking ad interim protection under section twenty-one of this act.” Comp. St. 1913, § 9530.
In Thompson v. Hubbard, 131 U. S. 123, 9 Sup. Ct. 710, 33 L. Ed. 76 (1889), the Supreme Court held that the requirement of the statute in regard to printing the prescribed notice of copyright in the book was a condition precedent to the perfection of the copyright. Bentley printed the notice in his American hook, and no question is raised but that he did everything which the law required him to do in perfecting his original copyright. Whatever difficulty exists in this case grows out of what he did or failed to do afterwards.
The only object of the notice required by the statute is to give notice of the copyright to the public. Thompson v. Hubbard, supra. It is given to the public to prevent any person from making himself subject to the penalty imposed for violation of the copyright without knowledge of the copyright. Sarony v. Burrow-Giles (C. C.) 17 Fed. 591 (1893). And when the notice is printed on the title page, or on the page immediately following it, of the book copyrighted, there is no possibility of the public being misled as to what matter is copyrighted. But where copyrighted matter is afterwards reprinted in am uncopyrighted work, the question of what notice should be given to the public of the copyrighted matter, if the copyright as to such republished matter is to be preserved, is a question of some difficulty.
“But it hardly would be argued that because no copyright had been taken out in England and therefore the reprint there was lawful, an American copyright could be defeated by importing the English book and reprinting from that.”
In the case at bar it is sought to defeat the American copyright by importing an uncopyrighted English book containing a substantial part of the copyrighted American book. The book having been imported, defendant claims the right to reprint the entire English work. It is, however, to be noted that in the case at bar the importation and sale of the English work was not only not “without the consent of the owner,” but was the act of that owner. Bentley, the owner of the American copyright, published the English book, and then imported and' sold it in this country. By so doing he may have made those portions of his American book which he incorporated into the English book publici juris.
It is conceded that copyrighted matter may he included with uncopyrighted matter and not lose the protection of the statute. In Black v. Henry G. Allen Co. (C. C.) 42 Fed. 618, 9 L. R. A. 433 (1890), it was held that a book copyrighted in this country and published by the con
The defendant printed an American edition of the Britannica, including the twenty-third volume, and as a part of it the matter copyrighted by Walker. Suit for infringement was brought by the Blacks and Walker. The court declared the question to be:
“Does the l‘«ct that the proprietor of a hook copyrighted in this country has permitted an alien publisher of an encyclopaedia to publish his book as part of such encyelopfedia enable another person, without other authority, to publish in tins country the copyrighted article as a part of his reprint of such encyclopaedia, the remainder of vhicli is publici juris?”
The court answered the question in the negative.
“If a poem or an essay for which a copyright had been secured in this country by the author, a citizen of the United States, should be permitted to" be inserted in a volume of poems or essays, a part of which was publici juris, it could not reasonably bo claimed that the author had thereby abandoned his copyright, and that his book could be reprinted, by itself, without his consent, in tills country. It cannot he contended that the defendant would have a right to reprint Walker’s or Johnston’s treaties in separate volumes without the consent of the respective proprietors. Can, then, the poem or essay be printed, without the consent of the author, as a part of an unauthorized reprint of the entire volume?”
The defendant based his defense in that case on two grounds. The first was that the work as a whole was a foreign work, and the bulk of the volume publici juris; aliens then not being able to secure copyright in the United States. The second was that the insertion of Walker’s and Johnston’s articles was for the manifest purpose of preventing citizens of the United States from reprinting that volume, which would have been, but for those árdeles, publici juris, and therefore was an attempt which should not receive the favor of the court. Neither of these contentions found favor with the court. “If the author has a valid copyright,” said Judge Shipman, “it is valid against any unpermitled reprint of his book; and the fact that his book is bound up in a volume with 50 other books, each of which is open to the public, is immaterial.” The complainants obtained an injunction and an accounting. See Black v. Henry G. Allen Co. (C. C.) 56 Fed. 764
“The following article in this volume is copyrighted in the United States of America, viz.:
“United States.
“Part I. History and Constitution. Copyright 1888 by Alexander Johnson.
“Part II. Physical Geography and Statistics. Copyright 1888 by Josiah D. Whitney.
“Part III. Political Geography and Statistics. Copyrighted 1888 by Praneis A. Walker.”
And in that part of the Encyclopaedia in which the matter written by Professor Johnson appears there is inserted at the head of the article, “Copyright 1888 by Alexander Johnson.” A similar notice is inserted at the head of the article written by Mr. Whitney and at the head of that written by President Walker. It was possible, therefore, for any one to tell on an inspection of the volume the exact copyrighted matter it contained, and .there was no necessity to seek out the original American copyrighted book, and then compare it with the English publication, in order to ascertain what was and what was not copyrighted.
The case at bar involves a different state of facts. In this case the author of the English work is informed that it “includes the Telegraph Cyphers entered according to act of Congress in the year 1906, by E. L. Bentley in the office of the Librarian of Congress, at Washington, D. C.” ' But no one, on inspecting the English work, can tell what portion of it has been taken from the Telegraph Cyphers and what part has not. That he can only ascertain by securing a copy of the Telegraph Cyphers and comparing it word by word with the Code. In other words, there is nothing which indicates to the reader what portion of the work is protected by American copyright and what is not, but he is left to ascertain that fact for himself by a verbal comparison, word for word, of the American and English publications.
The conclusion at which we have arrived is that the complainant is not entitled to an injunction to restrain the defendant from publishing and selling “Bentley’s Complete Phrase Code” as prayed for in the bill. We have arrived at this conclusion, not because he reprinted the matter in England without taking out copyright in that country.. That he could do without impairing any of his rights in the United States. But his difficulty arises put of the facts that in his English publication of the Code he embodied the Telegraph Cyphers, or a substantial part of that work, and imported the same into the United States, and sold it here, without any notice in it by which the public could know by inspection the copyrighted from the uncopyrighted matter.
In our opinion one whp so embodies copyrighted with uncopyrighted matter that one reading his work cannot distinguish between the two has no right to complain if the book is republished by third parties. It is true that Bentley did insert the statutory notice in the Code by which he directed attention to the fact that the • Telegraph Cyphers were included in the new publication, but the statutory notice was in
We do not decide in this case that Bentley has lost his copyright in the Telegraph Cyphers, so that any one is at liberty to reprint that book. Whether he has or has not lost that right is not before us and is not decided. What we do decide is that he has no standing in court to prevent by injunction the publication of the Complete Phrase Code, which is an uncopyrighted work, the whole of which the defendant was at liberty to reprint, including the matter taken from the Telegraph Cyphers, although copyrighted, as there is nothing in the work which indicates the copyrighted from the uncopyrighted matter.
The decree should be reversed, and the bill dismissed; and it is so ordered.
