27 F. 914 | U.S. Cir. Ct. | 1886
It is proper that I should frankly say, by way of apology for a too long delay in the decision of this case, that when it was argued I felt, because of my unfamiliarity with the law of copyright, quite unwilling to assume the responsibility of its decision without an investigation, which has been until now, in the multitude of my other engagements, impossible. To me it was a startling proposition that, in the immense trade that goes on in copyrighted books, the. dealer must deraign his title to each copy from tho copyright holder with, all the particularity of real estate, if not more inexorably, and that no right to use or sell a copy could be acquired without his consent; and I did not see how the argument of the plaintiff could stop short of that claim; and yet I am unable now to see how that monopoly of sale granted by the statute can be secured without a principle almost as broadly stated as that, qualified, of course, by such limitations as may properly and justly should be imposed to estop him, by his own conduct in any given case, from relying on the principle just stated.
How can his right of sale be exclusive without that principle in its widest scope ? If I own a horse, or 10,000 horses, I have, to be sure, growing out of the very right of property itself, an exclusive right to sell them within the United States, and, indeed, elsewhere. But, surely, this is not the measure of that exclusive right to sell his works
I cannot find that the English act in terms confers a monopoly of sale, as ours does; and yet, I think, it exists by implication from the statutes as fully as it does under our act. I may be mistaken as to the phraseology of the English acts, but 5 & 6 Viet. c. 45, wherever I find it, seems to omit the words used in our act in reference to the sole liberty of “vending” the book copyrighted, as it does many other words there used to define the franchise granted by congress. But while the act of Victoria defines “copyright” to mean “the sole and exclusive liberty of printing, or otherwise multiplying, copies of any subject to which the said word is herein applied,” our act of congress uses the language, much amplified, however, of Millar v. Taylor, 4 Burr. 2303, and defines the word to mean the sole right of “printing, publishing, and selling his literary composition or book.” Quoted by Grier, J., in Stowe v. Thomas, 2 Amer.Law Reg. (O. S.) 213, 230; S. C. 2 Wall. Jr. 547; Graves v. Ashford, L. R. 2 C. P. 410, 417; Drone, Copyr. 100, 338, 662, 700; Rev. St. § 4952.
Copyright and literary property would be of little value, for want of adequate protection, without this principle, and it must therefore attach'to, and be one of, the peculiarities of this creation of the statute. Ordinary remedies protect one’s exclusive right to sell his horses, or, what is the same thing, are a sufficient protection to that character of property; but in printed books there is, aside from the material property in them, a peculiarly intangible and incorporeal right pertaining to the authorship,—a property created by this statute, —which requires a further protection that can be adequate only when it is understood that no one can read this book, buy it, or sell it, or otherwise use it¿ or any copy of it, either that which is piratieally or that which has been lawfully printed, without the consent of the author or copyright holder; and the basis of it is that a moneyed or other valuable consideration must be paid to the author, and he has a right to receive value for any use of the product of his labor. Protection in the monopoly of sale for the lawfully-printed copies is just as essential to the value of the right of property created by the statute as protection against piratical printing, publication, and sale of the hook. Or, if this be not so, congress has chosen, at least, to grant that right of monopoly, and it may grant what it pleases. It does the same thing for mechanical inventions, and why not for literary products ? I think it has. Under our tariff laws'an American manufacturer has often a monopoly of the American market, and he
To return to the illustration of the property in horses. If, under the tariff laws, all importations should he forbidden, the American owner of horses would, indeed, have a monopoly of the market. But suppose the government could or should go further, and prohibit all persons, except one citizen, from raising or reproducing horses, and should suppress all reproduction than his own, there would then he growing out of the legislation a monopoly of sale analogous to that conferred in direct terms by this statute on the copyright holder of a hook. If the statute should stop at prohibitory legislation, the beneficiary of the monopoly would ho compelled to depend wholly on the ordinary remedies to protect it. But this statute does not stop there, and gives the copyright holder especial, if not extraordinary, remedies, at law and in equity, to protect his property, not only against infringement by piracy, hut, as I think, against unauthorized sales of genuinely printed copies.
This statute lias not abrogated the ordinary law of sales in its relation to copyrighted books, and, like all property, this is subject to that law; hut it has provided for it likewise a law of its own, by necessary iniplieation from the statute. 'We are all familiar with the rule that one buying property of a thief gets no title, no matter how innocent he may he of all knowledge of the theft. Now, let us imagino a state wherein this rule of law has been abrogated by enacting that one who so buys, for a valuable consideration, without notice, shall have a good title, the state undertaking to satisfy our sense of justice by some kind of compensation to the unfortunate owner. If, now, in that state, some thief should sell copies of Mr. Blaine’s book, stolen from him there, the purchaser would not get a good title to them notwithstanding the state law; and this because, under the act of congress, Mr. Blaine had granted to him by the statute the exclusive right of sale, which right the courts would protect by appropriate remedies. I do not stop to inquire whether he could bring replevin, trover, detinue, or the like, on the theory that the constitution and laws of the United States being paramount, and Blaine’s right of sale exclusive, the federal law would exclude the thief’s power of sale under the state statute, and there would therefore he necessarily a modification or limitation imposed by the federal statute on that of the state; hut, surely, he could appeal to the remedies given by this copyright statute itself to protect him in its enjoyment. Again, if tLs he a correct view of the nature of this grant of an exclusive right to sell, it does not matter whether the party offering to sell without Mr. Blaine’s authority be a thief, or one in possession only by a breach of trust, or
Now, as to what should estop Mr. Blaine, in a court of equity, as between himself and a given party in possession of his books claiming the right to sell them, from relying on any absence of authority from him to sell, or as to what circumstances would enable such a party to invoke the aid of that court to restrain Mr. Blaine from setting up such an absence of his authority, we need not inquire further than the facts of this case demand a decision. It may be that a court of equity would often presume the necessary authority to sell, whether it existed in fact or not; but this would depend rather on Mr. Blaine’s own conduct in the premises than anything else. If he has put his copies of the book on the market in such a way as to mislead persons who wish to deal in them as to his authority to sell any particular copies found in the market; if he has sold them by wholesale and retail to merchants; placed them with brokers, factors, auctioneers, jobbers, or other agents, for general sale to all who apply; and the defendant buys from any of these without notice of any defect of title or authority to sell them,—it might be that Mr. Blaine would be without remedy to assert his monopoly in the given case, because es-topped by such conduct. The defendant, in such cases, might have a right of sale by estoppel, but the principle we are considering would remain.
And it must not be forgotten, in measuring the equities between parties in all such cases, that while it might be impossible, under some circumstances, to trace the title of each book and its accompanying authority from its author to sell it, this statute has provided ample notice of the author’s right; for every book carries the imprint of that notice upon it, and this by the command of the statute. This fact is sufficient, and was intended to put every man who wishes to deal in the book—indeed, every man who wishes to own or read a copy —upon notice that Mr. Blaine owns the copyright, or has transferred it to his publishers, and imposes the duty of reasonable inquiry into the facts of the case to know whether he has been paid or satisfied as to the proposed sale or use, in the matter of his compensation therefor. I do not think, therefore, that the bare fact of the want of actual notice of the defect in the title on the part of the defendant is an answer, in any case, to the plaintiff’s claim of infringement ; but the scrutiny should go further, and determine whether the statutory notice of the plaintiff’s title imprinted in the book has been fairly treated, by especial inquiry, if that inqury be reasonably demanded by the circumstances of the particular case. I should not
It is quite true that the general trade may not be able to identify those copies which are regularly on the market at second-hand from those which may otherwise surreptitiously come into market, but a little inquiry by mail or telegraph of the copyright holder, and of the dealers offering the book otherwise than by'subscription, would generally develop the true facts, and disclose whether particular copies were offered with the essential authority of the copyright holder. In all fairness this inquiry should be made, and, in the absence of it, any infringement of the copyright holder’s monopoly of sale cannot be justified by want of actual notice. Here the defendant would have found, by actual inquiry, that these copies he offers to sell were surreptitiously purchased of a fraudulent agent for delivery only to subscribers, and therefore were not authorized for sale in the general market. Technically, the dishonest agent may not have been a thief, and the books were not stolen; but substantially they were stolen from the plaintiff. There is no proof in the case that any conduct of the plaintiff about placing their books on the market was calculated to mislead the defendant, either generally, or as to the particular territory wherein these copies were purchased, and he could not, I think, shut his eyes and ears, keep his tongue silent, and rely on any belief thus acquired that the person from whom he bought had authority to sell. It was a convenient assumption; but his knowledge of the trade, and of the methods adopted by the copyright holder as to this book,
It is useless to inquire whether, under the ordinary law of sales of personal property, the circumstances were such that a purchaser without notice would obtain a good title. As ordinary property, unaffected by the copyright statute, we could have no concern with that feature of this controversy, for, the amount being less than $500, we would have no jurisdiction. But I have endeavored to show that, outside of and beyond the general law, whatever it may require, the author or his assignee has a special property in his literary work, about which this statute has gathered characteristics, incidents, rights, and remedies which are peculiar to itself, and not affected by the general law. The leading case of Stephens v. Cady, 14 How. 528, S. C. sub nom. Stevens v. Gladding, 17 How. 447, well illustrates this. There, the purchaser at an execution sale of the copper-plates from which a copyrighted map could be printed, did not acquire the right to print copies of the map and sell them. See, also, Ager v. Murray, 105 U. S. 126. No more, it seems to me, can the fraudulent agent for the delivery of copies already sold to particular persons transfer a right to sed them to other persons, which he had not himself possessed, when he deserts his trust, and embezzles the books by selling them to a merchant. If the merchant know of facts that put him on inquiry,—as the fact that this was an existing copyright, under which copies were or had theretofore been sold only by subscription, fairly did,—certainly he should be chargeable as if he were fully informed.
I agree that where one of two persons must suffer by the fraud of an agent, the principal v?ho created the agent should suffer rather than an innocent third party. But a dealer in books, who undertakes to circumvent the author in the execution of any plan that he may adopt—no matter what plan it be, so it be an honest one—for the enjoyment of his monopoly of sale, by showing his skill in the procurement of copies for sale outside of that plan, is hardly ah innocent party, when his skill to do that thing requires that he shall purchase through an unfaithful agent, and omit or neglect all inquiry as to the circumstances which enable him to exhibit it at all, as this defendant did. He announced his belief that the books could be procured without individual subscription. He promised to have them for sale, and, in a sense, his pride of opinion was involved in his boast that he could do what he had promised to do. He ordered these books from a comparatively out-of-the-way dealer, who had procured them by fraud upon the plaintiff’s well-known and scrupulously followed scheme of marketing them, and now he insists that he did not know of the fraud, when he had made no inquiry as to the peculiar
I derive support for this ruling from a mass of cases and authorities on the nature and incidents appertaining to property in copyright too numerous for citation. None of the learned counsel cited a case directly in point, and, after much laborious and patient search, I have been unable, with my somewhat limited facilities, to find one. The citations of counsel from our decisions on patents seem plausible and forcible, as anologies, but, in view of what the courts have said about false analogy in that direction, I have discarded those decisions for fear of being misled by them. Baker v. Selden, 101 U. S. 99; Stowe v. Thomas, supra; 8 Amer. Law Reg. (O. S.) 229; Id. 225; Brewster, arguendo, Lawrence v. Dana, 4 Cliff. 178; Shepherd v. Conquest, 17 C. B. 427, 444,—where the analogy is vigorously denied. But it is worthy of suggestion that perhaps the anology is less at fault in this incident of a monopoly of sale than in other features of similarity. Protection for both is secured by the same clause of our constitution, in language that indicates association of thought, to say the least of it. Const. art 1, § 8, cl. 8.
If it be said that this is “protection run mad,” as was argued in the case of Stowe v. Thomas, supra, and as has been, in other language, earnestly urged in argument hero, with greater force of application, it may be said, in reply, that albeit “the act of Anne owes its origin to Dutch influence and customs respecting monopolies, which came in with William III., and was passed in the .same year wdth an act to protect wig-makers by prohibiting men from wearing their own hair,”—Goepp, arguendo, 2 Amer. Law Beg. (O. S.) 222, —congress has direct authority in the above-cited section of the constitution for protection to literary property to any extent it may choose, it being alone the judge of that extent; and therefpre any odium of the disputed power to protect the wig-makers in a monopoly should not be
I have endeavored, without success, to trace the case of Murray v. Heath, 1 Barn. & Adol. 804, by citation in some more modern case. Mr. Drone cites it as raising the question “whether a seller is liable for the unauthorized sale of copies which have not been unlawfully printed or imported.” Drone, Copyr. 479. He criticises it as unsound, if it undertakes to establish “that the defendants were not guilty of piracy because the copies had been printed from the original plates;” and cites Stevens v. Gladding, 17 How. 447, as enunciating the correct rule on that subject. That case, certainly, does construe our statute less strictly than the English statute was construed, and I have already pointed out a difference in the language of the two. But, however this may be, and I do not think there is any substantial difference in tbp privilege of exclusive right of sale between the English acts and our own, except that ours give directly what the
Another illustration is found in Taylor v. Pillow, 7 Eq. Cas. 418, where one sold his copyright at auction, but retained copies already printed. As to those copies he had, like any other owner, an inseparable right of alienation by sale, and if he had agreed not to sell them, it would not have put that agreement under the protection of the copyright statute. Again, in Howitt v. Hall, 10 Wkly. Rep. 381, S. C. 6 Law T. (N. S.) 848, which I have not seen, and must take at second-hand, the author had parted with his copyright “and the exclusive right of sale” for four years, but the assignee was allowed to sell his stock left unsold at the expiration of the term of four years. 1 Jac. Fish.
But there can be no happier illustration of the distinction I am endeavoring to take than that afforded by the difference between the-case we have in hand and that of Clemens v. Estes, 22 Fed. Rep. 899. There, as here, the book was sold by subscription; but the agents had purchased the copies of the book, and had bound themselves not to sell, except by subscription. . The defendants had no notice of that agreement of the agents, and the court refused to enjoin them. I do not know that I need to express the opinion here, but it seems to me that the court might have gone further, and, on the authority of the cases above cited, held that a sale by the agents in violation of their agreement, even with notice to the defendants, would have been no infringement of the copyright, on the distinction I have endeavored to point out. The agents being owners of the copies of the book, had a right to sell them, so far as the copyright goes; and their contract not to sell them was not within the domain of the copyright statute,, whatever other remedy in equity or at law there may have been in any court of competent jurisdiction, state or federal, to enforce it. A breach of the contract, or even a conspiracy with the agents to procure a breach, would not be a case arising under the copyright laws of which the federal courts would have exclusive jurisdiction. Rev. St. § 711, subsec. 5. Every breach of contract about a patented article or a copyrighted book does not perforce of that fact belong to' the federal jurisdiction to redress as one arising under those laws, and we must not lose sight of that important consideration in such cases as these. Judge Blodsett intimates this distinction in Baldwin v. Baird, 25 Fed. Rep. 293, and it is a familiar one to both our patent and copyright law. Here, the plaintiff did not sell its books to agents with a contract that they would sell only by subscription, but, on the contrary, sold them directly to subscribers, through agents, who had no other function to perform than to solicit subscriptions and deliver the books. The copies in controversy were sent to the agent for delivery, and were never his property, but that of the plaintiff, who was the owner both of the books and of the copyright. It is a most important difference, and one that will reconcile this, judgment'with all the cases mentioned.
It is a distinction, illustrated by the eases, between the incident of that monopoly of sale belonging alone to the owner of the copyright, and the incident of that exclusive and inseparable right of alienation belonging always to the owner of a copy of the work lawfully printed,.
In Keene v. Kimball, 16 Gray, 545-551, it seems to have been intimated that the injunction would have been granted if the copy of the play had been surreptitiously obtained. In Bartlette v. Crittenden, 4 McLean, 300, S. C. 5 McLean, 32, it is said, in a case where students had published cards copied for instruction from the teacher’s system of book-keeping, resting in manuscript: “At common law, independent of statute, I have no doubt the author of a manuscript might obtain redress against one who had surreptitiously got possession of it;” and in Nicols v. Pitman, 26 Ch. Div. 374, a stenographer was enjoined from printing a report of a lecture spoken from manuscript to a limited audience. It was put on the ground of a breach of contract, as in the leading case of Abernethy v. Hutchinson, 1 Hall & T. 28, where it was said that, no matter how possession was obtained, hearers cannot, either of themselves or by transfer to another, publish for profit that which they had not obtained from the author the right to sell. These cases, and those like them, support this judgment in principle; for if this be true of the common-law right of property in manuscript before publication, it is equally so as to the statutory property in copyright, unless the statute restricts it in some way. It is an incident inherent in literary property, and necessary to its security, whether it be the gift of the common law or the statute.
Although it is not at all a copyright case, in this same view of it, the great case of Prince Albert v. Strange, 1 Macn. & G. 25, S. C. 2 De Gex & S. 652, is a potential support for this judgment. I had prepared a careful analysis of that case to show this, but shall not protract my already too long opinion to include it. The defendant was enjoined from exhibiting or selling, for his profit, genuine copies of the etchings surreptitiously procured from the owner’s printers; and although, in other respects, the case has been much criticised, as to that part of the injunction there was never any doubt or criticism. The same principle applies here. The defendant had no notice in that case, but it was immaterial, as the lord chancellor said, as it is in other kinds of piratical depredations on literary property. He placed his judgment on the broad and satisfactory ground that “one is entitled to be protected in the exclusive use of that which is exclusively his.” And I say this is so, whether it be the exclusive
I do not wish to close this opinion without saying that I do not exalt literary property above other kinds, nor hedge it about with a divinity of right and remedy not belonging to all other property; but simply place it in the category of all the rest, only finding that, because of its delicate and peculiar characteristics, congress has been invested with peculiar powers of protection for it, which it surely needs to place it on a fair footing with other property. It is especially liable to piratical depredation, like that attempted in this case, whereby the owner loses his fair profits; and I only hold that congress has provided, as a convoy for it, a fleet of rights and remedies particularly adapted for defense against pirates, whether they sail under the black flag of the marauding printer, or tho ordinary flags of commerce, falsely displayed for purposes of spoliation. But, after all, other property receives just as full protection, and, when it need be, by other special methods, where tho power to devise them exists.
DECEBE.
It only remains to say that the plaintiff is entitled to a decree, but there need be no expense for an account. The defendant received six copies, and has sold five, at a profit, he testifies, of $5.86. This, and the interest on it, he must pay to plaintiff within 60 days, or execution may issue for it. Possibly, he should be made to pay the full publisher’s price, but I assume that there should be no controversy over so small a difference, for the money’s sake; and, so far as tho precedent is concerned, I prefer not to go beyond the profits now, and reserve the point. As to the remaining volume, defendant should be perpetually enjoined from selling it, certainly. I am inclined to think he should also be enjoined from lending it, or even from reading it, and possibly, from every conceivable use of it as a literary production. It is a small matter, perhaps, but, as