15 F. Cas. 26 | U.S. Circuit Court for the District of Massachusetts | 1869
said that the court had given the matter very careful consideration, and that he concurred with Judge
The court remembers no cases in this circuit, and few in the supreme court, where controversies like this have arisen; yet the court does not see any serious difficulty in determining what ought to be done. If new authorities or new propositions touching the merits had been introduced, the obvious course would have been, reasonably, to cite legal authorities responsive to them, or to reply to particular propositions. That would have presented no difficulty, because at a glance we would have verified whether these were new cases; if so, the court would desire to hear suggestions about them, and to know whether there were other cases which would control them. This is to be taken in connection with the twenty-second rule of the supreme court, binding on this court, and which provides that the plaintiff or appellant shall be entitled to open and close. These, being settled rules of practice, are the rights of the parties, and the court must follow them. The complainant was entitled to open and close. The respondent had a right to expect a brief, and one was furnished. The ease was argued under the order already read. According to it, the respond; ent replied upon the point of title upon which 'he was ready, and the complainant closed upon that branch of the case. Under it, time was given to the respondent to reply in writing upon the point of piracy, upon which he was not then ready, and that time was enlarged by a proper agreement of counsel, owing to the engagements of the respondent. Time was also given to the complainant to close on the question of piracy, and that time was enlarged by an agreement of counsel, for their convenience. The arguments came in on the 1st of August, and the court has had the case under consideration for seven or eight months, not devoting all its time to it, but taking it up from time to time, as its other engagements permitted. At this stage of the case there can be no further argument, unless the court should reach some point where they desire a re-argument. In other words, a proposition for re-argument must come from the court, and not from the party.
Questions of intrinsic importance and of great difficulty are presented for decision in respect to the title of the complainant, and as they are in their nature preliminary, they will be first considered. Briefly stated, his claim of title, considered broadly, is to the additions to and emendations of the text of the two editions as published under his supervision, to the memoir of the author, as contained in those editions, to the annotations prepared by him and published in those editions, and to the arrangement of the same, and the mode in which they are therein combined and connected with the text, and to the indices as published in those editions. He rests his claim upon the following grounds, as substantially stated in the bill of complaint: First, upon a contract or agreement between Catharine Wheat-on and himself, that she should make no use of his notes aforesaid in any new edition of the work without his written consent; and that she would convey to him by a formal instrument, the right to make any use he might see fit to make of his own notes. Secondly, upon the ground that in the consideration of a court of equity he is taken and deemed to be the owner and proprietor of the copyrights, in and as to all the matters contributed by him and published in those two editions. Evidently, both claims, as presented, have respect to the agreement as expressed in the memorandum of June 14, 1863, and the subsequent correspondence upon that subject, as the first is founded in covenant or contract, and the second in an equitable title to the copyright, derived from the original arrangement and by virtue of the agreement expressed in that written paper. Confirmation of that proposition is not needed, because the language employed in the stating part of the bill of complaint is too plain for controversy; but if it were not so, every vestige of ambiguity is removed by the principal prayers of the bill of complaint, which are for an injunction, and foí-an account, and for a good and sufficient deed conveying the legal title to the copyrights.
The respondents contend that the complainant is not entitled to any relief for several reasons: 1. Because the memorandum, as they contend, is not a perfected contract, but merely a note or memorandum of the stipulations of a proposed agreement, as to the true
Search is made in vain for any support to the first proposition of the defence, as applied to the terms or execution of the memorandum. Interviews took place between the complainant and Professor Parsons, and they conferred together upon the subject-matter embraced in that memorandum, as suggested by the said Catharine; and the proofs show that they came to a perfectly amicable result; that the memorandum was drawn by the latter and delivered to the complainant, to be transmitted to the said Martha B. for her examination, and that she afterwards, on behalf of her mother and herself, and to signify their approval, signed the memorandum and wrote the date thereon, and caused the same to be delivered to the complainant Expressed in intelligible terms as the memorandum is, the construction and effect of the language are questions of law, which cannot be controlled or influenced by the opinion of any witness, not even by that of the person employed to prepare the draft for the consideration of the parties. He may not at the time have regarded it as a contract, but they were at liberty to adopt it as such; and if they did so, and it was duly and understandingly executed as such, their rights under it must be ascertained from the language employed, as applied, in view of the surrounding circumstances, to the subject-matter of the negotiation.
They subsequently differed, as the correspondence shows, as to the proper terms of the formal agreement for which the memorandum provides; but it was not denied, throughout that period, that the said Catharine had agreed “to make no use of Mr. Lawrence’s notes in a new edition, without his written consent,” nor that she had also agreed to give him “the right to make any use he wishes to of his own notes.” Attempt was made, it is true, to ingraft the qualification into the latter branch of the stipulation, that the complainant should not publish in the United States a new edition of the notes and other matter of his own composition, “which he had added to the said two editions of said book, until the last edition is sold;” but it is clear to a demonstration that the agreement, as expressed in the memorandum, contains no such qualification. Properly considered, it is equally clear, also, that there is nothing in the correspondence tó'sustain the theory of the respondents as presented in their first proposition. “On reflection,” said the complainant in his letter to Mr. Parsons, dated June 14, 1863, “the suggestion you made yesterday offers many advantages over my proposed plan ... as is settles at once and for ever all questions in regard to the book.” Influenced by those considerations, as he represents, he wrote a second letter of that date as a substitute, if preferred by the other party, for the one previously prepared to be forwarded to Mr. Brock-haüs, and submitted it to the approval of Mr. Parsons, as the friend'of the said Catharine; but he expressly stated therein, that, in sending it, he did not wish to recede from the former arrangement. On the .contrary, he stated in the enclosed letter that, having made an arrangement with the said Catharine, which gave him the entire control over his notes as published in English, and any claim she might have to the editions published by his correspondent, he had advised her to the effect that she might draw for the whole 6,000 francs. He proposed, in that letter to Mr. Parsons, that the said Catharine might retain the copyright to the text, and to relinquish all claim for the expenses of the stipulated translation; but he did not propose to vary the agreement, as expressed in the memorandum, as to his own notes, and he also made claim to the right, If any, that the said Catharine had to the text and notes of the foreign editions.
Pull consultation took place between Mr. Parsons and the said Martha, as the agent of the said Catharine; and Mr. Parsons, under date of June 16, 1863, wrote to the complainant that: “1. Mrs. Wheaton will send your last letter to Mr. Brockhaüs, and returns you your former letter. 2. Mrs. Wheaton will draw at once on Mr. Brockhaüs, at twenty days, for 6,000 francs. 8. When Mrs. Whea-ton learns that the bill is paid, she will execute instruments satisfactory to you, which shall, in the first place, bind her not to use your notes without your written consent, and, in the next place, give you all her claims and interests in respect to the whole book, text, and notes, for continental Europe in future.” Inadvertently, Mr. Parsons omitted to re-state the second clause of the agreement as expressed in the memorandum, that Mrs. Whea-ton would give to the complainant the right to make any use he wished of his own notes; but his attention having been called to the
Besides these several stipulations, there were interlined in pencil at the close of the second stipulation the words following: to wit, “But the said W. B. Lawrence shall not publish a new edition thereof until the last edition is sold.” Beyond doubt the draft was prepared without the words in pencil, and tne explanations of Mr. Parsons upon the subject are, that he probably exhibited the paper after it was drawn to the said Martha B., or to the respondent, Charles C. Little, and that he made the interpolation at their suggestion. Dissatisfied with the draft as prepared, the complainant returned it to Mr. Parsons. His objections were twofold, as expressed in the letter returning the paper. First, because it made no reference to the “Histoire du Droit des Gens”; but, chiefly, on account of the stipulation that he should not publish a new edition until the last edition was sold, which he declared to be wholly inadmissible, as it would lead to new embarrassments. Alterations were subsequently made in the form of the draft, obviating the first objection, and limiting the restriction constituting the second and principal one, so that the complainant might publish a new edition before the last was sold anywhere except in the United States; but he declined to adopt it, insisting that the agreement as expressed in the memorandum contained no such stipulation. Determined not to involve himself in new complications, the complainant returned the last draft, as amended, to Mr. Parsons, stating to him, at the same time, that he had concluded, on reflection, to decline accepting any paper from Mrs. Wheaton. He had previously given him to understand that no such arrangement could be accepted, and more than intimated that if Mrs. Wheaton did not accede to his views in that behalf, matters must rest as they were in the original agreement. Contention, however, arose by some means between the parties in respect to what was quite unimportant, and what was not probably thought of by them or by Mr. Parsons when the memorandum was framed and executed. Stipulations for the protection of the contract with the publishers of the prior editions were unnecessary, as their remaining interests, if any, were vested, and, being antecedent to the negotiations between these parties, could not be impaired by the agreement contained in the memorandum, for the reason, as clearly stated by the complainant, that Mrs. Wheaton could not convey what she did not own.
Viewed in any light, the correspondence shows nothing more than that the parties disagreed as to the extent of the obligation imposed by the memorandum, which is a question of construction; but it was never even suggested that it did not contain a complete valid agreement Conclusive proof that neither Mr. Parsons nor Mrs. Wheaton entertained any such views during that period, is found in the drafts for the formal instrument as prepared by the former, executed by the latter, and forwarded to the complainant for his acceptance. Both were prepared and signed, as therein recited, “in execution of an agreement heretofore made by and between” Mrs. Wheaton and the complainant, which is plenary evidence that up to that time the agreement expressed in the memorandum as to the notes was regarded as complete and obligatory.
Abandonment is the next defence to be considered; but the proposition must be examined in view of the conclusion announced, that the stipulations contained in the memorandum, as to the notes contributed by the complainant, are a perfected agreement, and not a mere proposal, as suggested by the respondents. Mere proposals may in general be withdrawn at any time before they are accepted by the party to whom they are made; and ordinary contracts, executory on both sides, may in certain cases be regarded as forfeited, as where the reciprocal stipulations are dependent, and where a party seeking to enforce performance has himself omitted to do something which he was required to perform as a condition precedent to his right of action. Oases may arise also where
Argument to show that the case is not one of forfeiture is unnecessary, as the proposition finds no support whatever in the evidence. Contracts executed on one side and unperformed on the other stand upon a very different principle from those where nothing has been done by either, so far as respects the party who has fulfilled his obligation and paid the stipulated consideration. Rights and obligations secured or imposed under such circumstances have become vested and absolute; and if the delinquent party seeks to avoid the obligation imposed on him, he must allege and prove a new contract, for a valuable consideration, amounting to a valid release, or that the other party is estopped to enforce the obligation by virtue of some operative binding agreement to relinquish the benefits from the same, or not to enforce the stipulation; or he must allege and prove that he has been deceived and designedly misled by the admissions and representations of the other party, as before explained. Foster v. Dawber, 6 Exch. 839; Edwards v. Chapman, 1 Mees. & W. 231; Wildes v. Fessenden, 4 Metc. [Mass.] 12; 1 Smith, Lead. Cas. (5th Am. Ed.) 462; Bank of Virginia v. Groves, 12 How. [53 U. S.] 51.
None of the elements of estoppel exist in this branch of the case, as the complainant did not agree that he would discharge the memorandum or that he would not enforce its provisions. Nothing approximating to such an agreement is exhibited- in the record, nor do the respondents in fact set up any such defence. What they do set up is, that the complainant relinquished and abandoned any agreement in the premises, and so notified the respondents, by which it is understood they refer to the letter of the complainant, addressed to Mr. Parsons, of the 2d of November, 1863, in which he says: “On reflection, I have determined to decline accepting any paper whatever from Mrs. Wheaton, and therefore return the enclosed,” meaning the amended draft for the formal agreement. Disconnected from the circumstances and the other correspondence, it might be possible to misunderstand the meaning of the writer of that letter; but it must be construed in view of what preceded it, and of the subject-matter to which it related. After the 31st of August preceding the date of that letter, the complainant had been more or less engaged in efforts to procure the formal agreement in respect to the notes as stipulated in the memorandum; but all his efforts proved fruitless. Only eight days before, he prepared the draft of the letter exhibited in the record as one intendétfj- for the same correspondent, in which he stated to the effect that his sole object in asking for the formal agreement was to prevent any further litigation, saying that he was satisfied that without it he could restrain any attempt to use these notes by Mrs; Wheaton, or any one else, in a future edition, adding, at the same time, that if she “does not sign the paper as now suggested,” meaning one of the drafts for theformal agreement, without any restriction as to the use of the notes, then “matters can rest as they are.” Although never sent to his correspondent, ..the exhibit may well be referred to as tending to show the real intent of the complainant at the time it was written.
Weighed in view of the antecedent correspondence and the surrounding circumstances, it certainly would be a perversion of the language of the complainant to regard what he wrote on that occasion, either as an agreement to relinquish or not to enforce that stipulation; and, even when separately considered, the language falls far short of what is necessary to justify any such conclusion. He' made no admission by that statement inconsistent with the claim he .now sets up; nor did he say any thing to induce the said Catharine, or any one of the respondents, so to act that either she or they will be injured if the agreement expressed in the memorandum is held valid and enforced. Howard v. Hudson, 2 El. & Bl. 1; Audenried v. Betteley, 5 Allen, 385; Pierrepont v. Barnard, 2 Seld. [6 N. Y.] 291; Rich v. Atwater, 16 Conn. 416; Plumer v. Lord, 9 Allen, 458. Expressions of a doubtful character are not sufficient to support such a defence as against a contract fully executed on the part of the complainant; but the meaning of the language employed must be clearly such thát a man of ordinary prudence would take the representation to be true, and believe that it was meant that he should act upon it; and it must also appear that he did act upon it as true, so that he will be pecuniarily injured if it be allowed to be disproved. Rich v. Atwater, 16 Conn. 415; Mowry v. Sheldon, 2 R. I. 379; Flagg v. Mann [Case No. 4,847]; Langdon v. Doud, 10 Allen, 435; Moore v. Crofton, 3 Jones & L. 446.
Estoppels are allowed to shut out the truth only when i,t is necessary to protect a party setting up such a claim or defence,
Abundant evidence exists in the record to show that Mrs. Wheaton, as well as Mr. Parsons and Miss Wheaton, was willing to concede the claim of the complainant as to the History; but inasmuch as it was not included in the memorandum, the conclusion of the court is, that the complainant, when he elected to stand upon the original agreement, relinquished that claim. He had previously described it as a matter of little or no value; and when he gave notice that he had determined not to accept any paper whatever from Mrs. Wheaton, it must be understood that he was content with what was secured to him in the memorandum. His right to the notes is therein plainly expressed, and there is no evidence in the record which shows that Mrs. Wheaton, or any one of the respondents, was ever misled by the language of the letter giving that notice. Conclusive evidence to the contrary is found in the several answers of the respondents, and their subsequent conduct confirms that conclusion.
Grant that the memorandum was regarded by the parties thereto as a contract, still the respondents contend that it cannot be enforced, because, as they alleged, it was procured by tlie fraudulent misrepresentations and concealments of the complainant. They submit that general proposition, and under it they make the following specific accusations: 1. That, when the negotiation as to the notes was commenced, there was not in fact any understanding between the complainant and Mr. Brockhaiis that the former should perform for the latter any editorial labor, either of revision or of translation. 2. That the foreign publisher was ready, at that time, to pay the 6,000 francs to Mrs. Wheaton, without requiring any such labor from the complainant. 3. That the said publisher had not then made a final proposal to the complainant to pay any thing to any one in that behalf, as appears by his letters addressed to the complainant. 4. That the complainant concealed the contents of those letters from Mrs. Wheaton, and those acting in her behalf. 5. That he falsely represented to her and those acting for her, that the said publisher would not pay the sum specified except upon his undertaking to revise his annotations and make such additions to the same as would adapt them to a new edition to be sold in Europe, and the general •charge is, that she was induced to assent to the memorandum by reason of those false representations.
Accusations of fraud amount to nothing as a defence to a contract otherwise legal and binding, unless they are satisfactorily proved; and the burden of proof to establish such a defence is upon the party who makes such a charge. Attwood v. Small, 6 Clark & F. 447; 1 Story, Eq. Jur. § 200; Park v. Johnson, 4 Allen, 266; Jennings v. Broughton, 5 De Gex, M. & G. 132; Campbell v. Fleming, 1 Adol. & E. 41. Apart from the inferences attempted to be drawn from the correspondence between the complainant and the foreign publisher, it is scarcely pretended that those accusations find any substantial support in the record; and the court is of the opinion that the several letters, when properly construed, and considered in their proper connection, show that every one of the specific suggestions of fraud is unfounded. Correspondence between the complainant and the foreign publisher, in relation to a new edition of the work for the foreign market, commenced more than three years before the date of the memorandum; and in the first letter written by the complainant he stated, that he did not expect any compensation for his services, but that he should desire to obtain what he could for the widow of the author; and it is a mistake to suppose that the negotiation as to the notes commenced before there was any understanding upon that subject between those parties. Enough certainly had been learned to satisfy any reasonable person that the arrangement could be made if desired, and that was sufficient to justify the complainant in ascertaining what would be conceded as to the notes.. Equally unfounded also is the charge that Mr. Brockhaiis was ready, at that time, or at any time before or after-wards, to pay the 6,000 francs without any stipulation from the complainant to revise the notes and superintend their publication. His letter of the 20th of April, 1863, is a complete refutation of both those charges,.
Any extended argument to show that the fourth proposition of the respondents cannot be sustained is unnecessary, as it finds no support in the evidence. Founded [as the proposition is]
The next proposition of the respondents is, that the copyrights of the editions of 1855 and 1863 are void, and consequently that the agreement expressed in the memorandum is inoperative, inasmuch as the parties entered into the same through mutual mistake. They insist that the copyrights are void for several reasons, which will be separately considered. 1. “Because no written assignment of copyright, or of the inchoate right of the complainant thereto, as the author, was ever made to Mrs. Whea-ton.” 2. Because the “notice of copyright inserted in the several copies published of said editions” is defective, “in the omission to give notice in said editions of the copyright secured in the” original edition of the work. 3. Because, upon the facts alleged and proved by the complainant, the copyrights of the editions in question were not taken out by the proper person, nor in the proper district.
Copyright may be granted under the copyright act to the author of any book falling within the classes described in section 1 of the act, if the author Is a citizen of the United States or permanently resident therein; and section 1 also provides that such author shall have “the sole right and liberty of printing, reprinting, publishing, and vending such book,” for the term of twenty-eight years from the time of recording thfi, title of the same as therein required. Exeeutors, administrators, and legal assigns of the author are also included in ■the purview of the section; but section 4 provides that no person shall be entitled to the benefit of the act unless he shall, before publication, deposit a printed copy of the title of such book in the clerk’s office of the district court of the district where the author or proprietor shall reside; and the provision is, that the clerk of such court shall record such printed copy forthwith, in a book to be kept for that purpose, and in the form therein prescribed. 4 Stat. 437. Where the author continues to be the owner, he is entitled to a copy of the title; but if he has parted with the ownership, the requirement is, that the clerk of such district shall give a copy of the title under the seal of the court to the proprietor. Id. 437. Proprietors ot any such book, though not authors, are also recognized as entitled to the benefits of the act in another provision of section 4, In which they are required within three months from the publication of said book to deliver, or cause to be delivered, a copy of the same to the clerk of said district. Legal proprietors, though not authors, may also recover, of persons who print or publish any manuscript, the property of which is in them, without their consent, all damages occasioned by such injury. Stevens v. Gladding, 17 How. [58 U. S.] 447. See, also, 4 Stat 437, 439, §§ 6, 15.
Left in moderate circumstances, Mrs. Wheaton very properly desired to obtain something from the literary publications of her late husband; and, with that view, she sought the advice of the complainant, as the intimate friend of the author and of his family. Consultations accordingly took place between them upon the subject. Suggestion was first made that his reports of the decisions of the supreme court might be re-published; but their attention was soon directed to a new edition of the Elements of International Law, as affording more promise of profit beyond mere remuneration. Editorial labors were necessary to such an undertaking, and the complainant tendered his services, and the same were gladly accepted by Mrs. Wheaton and her children.
Pursuant to that arrangement, the com-, plainant edited in succession the two editions in question; that is, he made some
The second defect in the copyrights, as alleged in argument by the respondent, “consists in the omission to give notice in said editions of the copyright secured in the original edition.” Persons desirous of securing a copyright must comply with the conditions of the copyright act, and if they fail to do so, they are not entitled to the benefit of its provisions. Authorities to support that proposition are not necessary, as those conditions are prescribed by an act of congress. Deposit must be made before publication, if the subject-matter is a book, of a copy of such book in the clerk’s office of the district court, as before explained; and the applicant must give information of copyright being secured, by causing to be inserted, in the several copies of each and every edition published during the term secured, on the title-page or the page succeeding, the following words, viz., “Entered according to act of congress in the year -, by A. B., in the clerk’s office of the district court of-,” (as the case may be). Beyond doubt, the omission to comply with those requirements renders the copyright invalid, as the act provides that no person shall be entitled to the benefit of the act unless he fulfills those conditions; but the important inquiry arises, what are those conditions? Wheaton v. Peters, 8 Pet. [33 U. S.] 591; Ewer v. Coxe [Case No. 4,584].
Pull compliance with the conditions prescribed in section 4 of the act is conceded; but the theory of the respondents is, that section 5 of the act requires that the same notice in totidem verbis must be inserted in the several copies of each and every edition published during the term secured, so that the second, and every subsequent edition, shall correctly specify the date of the original entry. They cite no authorities which support the proposition, and they assign no reasons in support of it, except that the act makes no provision for a change of the date in the successive notices to be given, and that the omission to give notice of the original copyright in subsequent editions tends
Authors or proprietors of a book for which a copyright is secured are required, by section 2 of the act of the 3d of March, 1865, “within one month of the date of publication,” to transmit, free of postage or other expense, a printed copy of the book to the library of congress at Washington, for the use of said library, and section 4 provides, that in the construction of that act the word “book” shall be construed to mean every volume and part of a volume, together with all maps, prints, or other engravings belonging thereto, and shall include a copy of any second or subsequent edition which shall be published with any additions; but the proviso enacts that the author or proprietor shall not be required to deliver to the said library any copy of the second or any subsequent edition of any book, unless the same shall contain additions as aforesaid, nor of any book not the subject of copyright. 13 Stat. 540.
Prior to the passage of that act, the courts had decided that the “information of copyright being secured,” if duly entered in the first volume of a work of several volumes, was sufficient; but all the residue of the provision is merely in affirmance of the true intent and meaning of the copyright act. Dwight v. Appleton [Case No. 4,215]. Subsequent editions without alterations or additions should have the same entry, because they find their only protection in the original copyright; -but second or subsequent editions, with notes or other improvements, are new books, within the meaning of the copyright acts, and the authors or proprietors of the same are required to “deposit a printed copy of such book,” and “give information of copyright being secured,” as if no prior edition of the work had ever been published-, and the term of the copyright as to the notes or improvements, is computed from the time of receding the title thereof, and not from the time of recording the title of the original work. Copyrights, like letters-patent, afford no protection to what was not in existence at the time when they were granted. Improvements in an invention not made when the original letters-patent were issued, are not protected by the letters-patent, nor are the improvements in a book not made or composed when the printed copy of the book was deposited and the title thereof recorded as required in section 4 of the copyright act. Protection is afforded by virtue of a copyright of a book, if duly granted, to all the matter which the book contained when the printed copy of the same was deposited in the office of the clerk of the district court, as required by section 4 of the copyright act; but new matter made or composed afterwards, requires a new copyright, and if none is taken out, the matter becomes public property, just as the original book would have become if a copyright for it had never been secured. Publishers may be in the habit of inserting more than one notice in new editions, but there is no act of congress prescribing any- such condition.
Whenever a renewal is obtained under section 2 of the copyright act, the requirement is, that the title of the work so secured shall be a second time recorded, and that the applicant must comply with all the other regulations in regard to original copyrights; but there is nothing in any act of congress to show that each successive edition must specify the date of the original copyright, as contended by the respondents. Any tendency to mislead the public cannot be successfully predicated of a copyright in due form of law, where it appears that the party who secured it complied with all the conditions prescribed in the copyright act. This is all that need be remarked in reply to the suggestion of the respondents upon that subject. •
Special examination of the third objection made by the respondents to the copyrights in question is unnecessary, as it is clear that if the property and title of the matter contributed by the complainant vested in Mrs. Wheaton as the work was done, she was the proper person to take out the copyright; and it is not controverted that, if she was the proper person, she took it out in the proper district.
The objections to the validity of the copy
Not being executed, however, the agreement does not transfer nor assign the copyrights in question to the complainant. Both parties agree to that proposition; but the respondents err in supposing that the agreement does not provide for, nor contemplate any such transfer or assignment as is plainly shown by the very terms of the memorandum. A copyright of a book, when taken out in due form, secures to the author or proprietor the sole right and liberty of printing, reprinting, publishing, and vending such book, during the term for which it is granted; but it secures nothing more; and the agreement was, that Mrs. Wheaton, who held the legal title of the copyrights, should make no use of the notes in a new edition without the written consent of the complainant, and that she would give him the right to make any use of the same he might see fit, which was in all respects equivalent to a contract to transfer and assign to him the legal title to the copyrights. Equity would have compelled the execution of the formal instrument therein stipulated, if the right to demand it had not been waived by the complainant. His claim as now presented is twofold, and in the judgment of the court it may be sustained upon both grounds. Curt. Copyr. 315; Mawman v. Tegg, 2 Russ. 385; Sweet v. Shaw, 3 Jur. 217; Colburn v. Duncombe, 9 Sim. 155. The legal title to the copyrights is in Mrs. Wheaton or her legal representative; that the complainant claims in the first place that the same is held in trust for him as the equitable owner of the notes, by virtue of the original arrangement under which the same were .prepared. Secondly, the complainant claims that the negative as well as the affirmative promise contained in the agreement, in regard to the use of the notes, was binding upon Mrs. Whea-ton, and that both are obligatory upon her legal representative, and all others having notice of the existence of those covenants. Barfield v. Kelly, 4 Russ. 355.
Two principal objections are taken by the respondents to the claim o.f the complainant that he is the equitable owner of the notes under the original arrangement. 1. They deny that the proofs in the case warrant any such finding, especially as the theory is denied in the answer. 2. They contend that Mrs. Wheaton, if such was the agreement, could not legally copyright the notes, as it would show that she was but a mere licensee, and that the copyrights in that state of the case would be void on that account.
1. Conclusive proof to show what was the original understanding between the parties, is found in the correspondence upon the subject. Unaided by any one, the complainant prepared the notes, but with the express understanding that he would do so without any charge, and that the property of the same, so far as respected the new edition, should vest in the proprietor of the book, and that she should take out the copyright and remain, as she was, the sole and exclusive owner of the entire book. Liberal, however, as the agreement was towards the proprietor of the book, yet it did not include any thing except that edition; and when the second annotated edition was prepared unuer a similar arrangement, as conceded by both parties, the agreement was not extended beyond that publication. Confirmation of those propositions is unnecessary, as they are not controverted by the respondents. They deny that it was agreed between the parties that the notes should ever afterwards become the property of the complainant, but they do not allege nor offer any proof tending to show that his agreement with Mrs. Wheaton extended beyond the annotated editions. Tested by these indubitable facts, the rights of the parties are plain and easy to be understood. As the proprietor of the book, Mrs. Wheaton, by virtue of that arrangement, became the absolute owner of the notes as they were prepared, so far as respects the editions in question; and she also acquired therewith the right to copyright the same for the protection of the property; but she did not acquire thereby any right or title, legal or equitable, to use the notes in a third edition of the annotated work, without the consent of the complainant. Proof to support any such right or title is entirely wanting in the record, and ho such right or title is set up in the answer. Sweet v. Cater, 11 Sim. 572. Such omission confirms the view that no such right or title was intended to be conveyed, and the subsequent conduct of the parties in executing the memorandum tends strongly to the same conclusion.
2. Suppose the facts to be so, then the respondents contend that the copyrights are void, because, as they insist, the applicant for the same was a mere licensee of the author of the notes; but the court is of a different opinion, for the reasons already given, as well as for others yet to be mentioned. Literary property, even when secured by copyright, differs in many respects from property in personal chattels, and the tenure of the property is governed by somewhat different rules; but the difference in
Covenant is the second ground of claim as set forth in the bill of complainant; and it is undoubtedly true, as contended by the respondents, that the theory of the claim as presented in allegation and in proof is, that the legal title to the copyrights vested in the proprietor of the book. The respondents in argument deny that proposition, and insist that the copyrights are void; but the objections they make to their validity have already been examined and overruled, and the reasons assigned for the conclusions need not be repeated. Expressed as the promises are, both the negative and affirmative, in plain and unambiguous language, they require neither construction nor explanation; and it is clear that they are binding upon the legal representative of the proprietor of the book, and all others having notice of the rights of the complainant. Colburn v. Duncombe, 9 Sim. 155. Mrs. Wheaton died March 5, 1866. leaving two children; but it is alleged ■And conceded that the respondent, Martha B. Wheaton, is the administratrix of her estate, and, so far as respects the book in question, her sole heir. Controlled by these reasons, the court is of the opinion that the complainant, in the view of a court of equity,-ds thé equitable owner of the notes, including the arrangement of the saíne, and the mode in which they are therein combined and connected with the text, and of the copyrights taken out by the proprietor of the book for the protection of the property, including the equitable ownership of the complainant Fletcher v. Morey [supra]; Parker v. Muggridge [Case No. 10,743]; Clarke v. Southwick [Id. 2,863]; Rerick v. Kern, 14 Serg. & R. 271; Simms v. Marryat, 7 Eng. Law & Eq. 337; Curt. Copyr. 315; Mayhew v. Maxwell, 1 Johns. & H. 315.
Brief examination will next be made of the special defence set up by the respondents who published the edition of the work which is the subject of complaint, and also by the respondent who edited the same, that they cannot be adjudged liable to any decree because they had no notice of the alleged trust or agreement. Plenary proof is exhibited in the record that the senior partner of the publishing firm had full knowledge of all the circumstances attending the preparation of the notes and the publication of the two annotated editions, and also full knowledge of the memorandum at the time it was executed, and of all the subsequent negotiations in respect to the formal agreement. Reference need only be made to the correspondence in the record, and to his own answer and deposition in the case in support of that proposition; and the circumstances as disclosed in the correspondence show, to the entire satisfaction of the court, that the other members of the firm knew, or might have known, what the claim of the complainant was to the notes, long before the contract for publishing the edition in question was executed, and all the facts and circumstances connected with the claim, as fully as they were known to their senior partner. Proof beyond what already appears is certainly unnecessary to show that the proprietor of the book, and the respondent, Martha B. Wheaton, were repeatedly ap-priseu of the claim of the complainant in terms which could not be misunderstood. Their friend and legal adviser knew all that had transpired, and, in view of the circum
Ordinary prudence is required of every person dealing with trust property; and if he fails to investigate when put upon inquiry, he is chargeable with all the knowledge it is reasonable to suppose he would have acquired if he had performed his duty. Hill v. Simpson, 7 Ves. 152; Kennedy v. Green, 3 Mylne & K. 722; 2 Com. Dig. tit. “Chancery,” 4, C, 2; Smith v. Low, 1 Atk. 490; 3 Sugd. Vend. (10th Ed.) 471; Jones v. Smith, 1 Hare, 43; Booth v. Barnum, 9 Conn. 286; Pitney v. Leonard, 1 Paige, 461; Carr v. Hilton [Case No. 2,436].
Constructive notice is held sufficient, upon the ground that when a party is about to perform an act by which he has reason to believe that the rights of a third person may be affected, an inquiry as to the facts is a moral duly, and diligence an act of justice. Hence, says Judge Duer, in the case of Pringle v. Phillips, 5 Sandf. 157, he proceeds at his peril when he omits to inquire, and is then chargeable with all the knowledge of the facts that by a proper inquiry he might have ascertained. Hawley v. Cramer, 4 Cow. 717; Williamson v. Brown, 20 Law Rep. 397; Fulton Bank v. New York & S. Canal Co., 4 Paige, 127; Bank of Alexandria v. Seton, 1 Pet. [26 U. S.] 309. Inquiry is a moral duty whenever the circumstances are such that a person of ordinary prudence would refuse to act; but if a party under those circumstances shuts his eyes to the means of knowledge which he knows is at hand, he then forfeits every pretence of defence, as such conduct is equivalent to actual notice of all the facts he might have ascertained by a performance of his duty. May v. Chapman, 16 Mees. & W. 355.
Grant that the several conclusions announced by the court are correct, still the respondents insist that the complainant is not entitled to a decree; because they contend that they have not infringed the equitable right of the complainant to the exclusive use of the note» in question, nor violated the terms of the agreement as expressed in the memorandum.
Before proceeding to examine the question of infringement, it will be necessary to reproduce, as concisely as possible, some of the principal issues upon the subject as presented in the pleadings.
The statement of the complainant is that, prior to the last edition annotated by him, there was no book of international law in which all the authorities bearing upon the different questions discussed or referred to In the original work of the author, or in his antecedent annotations, were collected and presented in a convenient form for reference. Such authorities, as he represents, consisted of judicial decisions, diplomatic discussions by distinguished diplomatists, and dissertations, treatises, and lectures of learned publicists and writers upon the law of nations; that he undertook to collect and present, and by a considerable amount of labor and intellectual exerticn, did collect and present, in his notes and in a convenient form, with reference to each question so discussed, the discussions and opinions as aforesaid, translating such as were in any foreign language, and giving them in full where they seemed sufficiently important to be so presented, ano in other cases referring to them, giving the name of the book and the page where the passage could be found; that many of the authorities so collected, and particularly those relating to diplomatic discussions and negotiations, and those showing the way in which cases involving principles of international law have arisen between different nations and been determined, are to be found in newspapers, gazettes, legislative debates, the series of books such as the Annual Register, and others named or referred to in the bill of complaint, not treatises on international law,that there is no book which can serve as an index or digest to assist an author in any material respect, in collecting such authorities; that the number of books and papers of that nature examined by him in searching for the authorities and matters cited by him is so great, that it is only possible to make such collection by devoting much attention to the subject for many years, and by making and preserving memoranda of such matters bearing upon the subject, as from time to time they come to the knowledge of a person giving a large share of his attention to such matters, and reading all such books as relate to the subject, and availing himself of much intercourse with persons conversant with such matters. The corresponding statement of the respondent is, that the plan of work he adopted was to take the text of the author of the book with his notes, and annotate the
The complainant also alleges, that in preparing the text of his edition he exercised a considerable amount of skill and judgment in the arrangement of his annotations, and in combining and connecting them with the text, and that he prepared a complete index to the same; and he charges that the respondents, in their book, have copied, conformed to, and pirated the said annotated book and the annotations of the same which he prepared; and that they have used and availed themselves of the said book and annotations and the said labors of the complainant. Responsive to the charge that his notes are in a great part taken and copied from those of the complainant, .and that he has pirated and unduly used the contributions of the complainant, the respondent totally denies the same and every part thereof. Evidence to show that the notes in the two annotated editions of Wheaton’s Elements of International Law, as prepared by the complainant, involved great research and labor, beyond what appears in those two works, is unnecessary, especially as the allegations in the bill of complaint to that effect are not directly denied in the answer; and it is equally obvious and clear that the results of the research and labor there exhibited could hot well have been accomplished by any person other than one of great learning, reading, and experience in such studies and investigations. Such a comprehensive collection of authorities, explanations. and well-considered suggestions, is nowhere, in the judgment of the court, to be found in our language, unless it be in the text and notes of the author of the original work. Uncontradicted as these propositions are, it is unnecessary to add any thing further in their support. Much, also, has been accomplished by the last editor of the work in the same direction, and in the collection and presentation of similar matters wholly distinct and separate from what was ante-cedently collected and presented by the complainant. But the review and comparison of the merits of the respective books are not matters within the province of the court, except so far as the same become necessary in order to decide the issues involved in the pleadings. Stripped of all mere form, the charge against the respondent is, that he has infringed the rights of the complainant; and that question is the only one of much importance which remains to be considered.
Apart from the testimony of the parties themselves, and the comparison of the books, the evidence in the case consists mainly of the testimony of the two experts, and the result of the respective comparisons made by them, of the notes and citations of authorities contained in one of the books, with those of a corresponding character contained in the other, together with the opinion of each expert witness, whether the several notes and citations so examined and compared are or are not of the same character. Though admissible in all such cases, the opinion of experts are nevertheless in their nature secondary evidence; but the comparisons made by them in this case have very much facilitated the investigations made by the court. Considerable aid has been derived from that source, and from the testimony of the parties; but the court has found it necessary to reexamine the comparisons made 'by the witnesses, and to make others for themselves, in order to come to a satisfactory conclusion. Regarded as a basis to enable the court to compare one book with the other, the results given by the experts, as exhibited in their depositions, have proved to be of great service to the court in estimating the weight to be given to their respective opinions. Complicated as the facts are, the examination of the case has imposed much labor upon the judges; but the investigation has been .made with care, and continued from time to time until both are satisfied that the court is prepared to render a just decision.
Like other controversies of a similar character, the issue upon the merits presents two questions, one of fact and the other of law. Stated in brief terms, the question of fact is, what use did the respondent who edited the edition in question make of the complainant’s . notes ? And the question of law presented, inasmuch as it is conceded that he used the same to some extent, is, was that use allowable, or was it of a character and to such an extent that it infringed the complainant’s rights. Direct evidence upon the subject is unattainable, because the respondent states that he cannot remember nor undertake to give the authors from whom he derived any particular class of citations. Difficult though it be to make proof, still the complainant is not entitled to any decree, unless he proves infringement, as alleged, to the satisfaction of the court, as the burden in that issue is always upon the party making the charge. Except that the burden is upon the complainant, the same difficulty is experienced by the re
Instances quite numerous are also given where clerical and typographical errors and peculiarities, including special translations, are reproduced in the edition prepared by the respondent; and the court is reminded in argument that cases have arisen where the strongest proof of copying consisted “in the coincidence of errors.” Jeremy, Eq. Jur. 322. Where the question is whether the defendant, in preparing his book, had before him and copied or imitated the book of the plaintiff, it is manifest, says Mr. Curtis, that this kind of evidence is the strongest proof, short of direct evidence, of which the fact is capable. Curt. Copyr. 255; Murray v. Bogue, 1 Drew. 367; Spiers v. Brown, 6 Wkly. Rep. 353. Other authorities may be cited where the presumption arising from the identity of inaccuracies is carried much further, and where it is held that when a considerable number of passages are proved to have been copied by the copying of the blunders in them, other passages which are the same with passages in the original book must be presumed, prima facie, to be likewise copied, though no blunders occur In them. Mawman v. Tegg, 2 Russ. 394; Longman v. Winchester, 16 Ves. 269.
Coincidence of citation is also invoked by the complainant as evidence of copying; and the instances given as examples are many where the authorities are cited in the same way; that is, by volume and page, or by chapter and section, as the case may be, and from the same edition of the work, and from the same place.
Identity in the plan and arrangement of the notes, and in the mode of combining and connecting the same with the text, is also invoked by the complainant, as strongly supporting the charge of infringement; and it is quite apparent, on a comparison of the two books, that the instances of identity in that respect are numerous and pervading. Copyright may justly be claimed by an author of a book who has taken existing materials from sources common to all writers, and arranged and combined them in a new form, and given them an application unknown before, for the reason that, in so doing, he has exercised skill and discretion in making the selections, arrangement, and combination, and, having presented something that is new and useful, he is entitled
Many other facts and circumstances are adduced by the complainant in support of the charge of infringement; but the classes mentioned will be sufficient for the present investigation, as it is not the purpose of the court to enter into the details of the evidence. Infringement in any and every form, as alleged in the bill of complaint, is denied in the answer; and the respondent, in addition to such denials, has presented in proof and in argument very elaborate and minute explanations of all the principal facts .and instances adduced by the complainant in support of the charge of infringement. Separate examination at this time of each one of the explanations so given would be impracticable, and any partial review of them in the opinion would necessarily be unsatisfactory, as it would afford ground for inference that the residue had been overlooked, or that they had not been duly considered. Suffice it to say, that they have all been read, studied, and made the subject of careful comparison with the facts and circumstances adduced by the complainant; but the conclusion of the court is, that they are not of a character, speaking generally, to rebut the particular proofs of the complainant, to which it was intended they should be applied. But the respondent contends that, even if it be true that matters of fact, citations, and authorities have been borrowed to a considerable extent, he had a right to take them, as the use he made of them was substantially new, and different from that made by the complainant in the two prior annotated editions of .the work, because they were used by him in illustration of nev» and original propositions. Secondly, he contends that the complainant is not entitled to any decree on account of any use he has made of the matters of fact, citations, and authorities exhibited in those editions, because, as he insists, the use he so made amounts to no more than a fair and original abridgment of the former editions. The doctrine of new and different use in the law of copyright applies more particularly to the old materials, and not the materials of a work like that of the last annotated edition of the complainant, where the materials collected are much abridged, and sometimes paraphrased and newly arranged, and combined with the text of the original work.
Beyond all doubt, he might take the old materials, as found in the sources from which the matters of fact, citations, and authorities of the- complainant were drawn, and use them as he pleased, in illustration of new and original propositions, or for any other purpose not substantially the same as that to which they are applied in the annotated editions edited by the complainant; but he could not borrow the materials as therein collected and furnished, nor could he rightfully use the ..plan and arrangement, or the mode by which they are combined with the text, beyond the extent falling within the definition of fair use, which rule is only applicable to the materials, and not to the plan, arrangement, and mode of operation. Proper attention to the nature of the charge in the bill of complaint, will show that the doctrine of new and different use is wholly inapplicable to the matter in issue between the parties, because the charge is, that the respondent has borrowed the matters of fact, citations, and authorities collected and presented in the notes of the complainant, and not that he has made the same use of the old materials. On the contrary, the charge is, that he has not consulted the old materials at all, but that he has borrowed the matters of fact, citations, and' authorities exhibited in his book, from the matters of fact, citations, and authorities as collected, arranged, and combined with the text in thost two annotated editions. Even supposing the rule to be otherwise, and that a second writer may take bodily the-matters of fact, citations, and authorities collected, arranged, and combined, as in the two annotated editions before the court, if the use he makes of the materials is substantially new and different, still the concession will not benefit the respondent, as-his edition of the work, except the new materials collected and presented, occupies the-same field and was designed for the same-class of readers, and was “made and. composed” for the same general purpose. Unsupported by the evidence, as the theory of fact involved in the proposition is, it is quite-clear that it cannot furnish any defence for the respondent, even if the principle is correct. Argument to show that an author may have a copyright in his notes to an older-work, though the materials collected are not
The respondent’s second proposition deserves more consideration, as it presents a defence applicable to the main issue involved in the pleadings. Concisely stated, the proposition is, that, even conceding that he borrowed materials from the prior annotated editions to a considerable extent, still the quantity so taken and used did not amount to more than a fair and original abridgment of the former annotated editions. Third persons cannot make any use of a patented invention, without the consent or license of the patentee, because he acquires, by virtue of his letters-patent issued under the patent act, the full and exclusive right and liberty of making and using his invention, as well as of vending it to others to be used, for the term allowed by law; but the right secured to the author or proprietor of a book is only “the sole right and liberty of printing, reprinting, publishing, and vending such book,” which, as construed by the courts, means the exclusive right to multiply copies for the benefit of the author or his assigns. Stephens v. Cady, 14 How. [55 U. S.] 529; Reade v. Lacy, 1 Johns. & H. 526; Millar v. Taylor, 4 Burrows, 2311; [Stowe v. Thomas, Case No. 13,514.]
Strong doubts are expressed by Mr. Curtis, whether the definition of an allowable abridgment, as given in the earlier cases, can be sustained, except as applied to such works as histories, or works composed of translations, and others of like kind; but it was decided in this court in the case of Folsom v. Marsh [Case No. 4,901], that an abridgment in which there is a substantial condensation of the materials of the original work, and which required intellectual labor and judgment to make the same, does not constitute an infringement of the copyright of the original author; and the court, as now constituted, is inclined to adopt that rule in cases where it also appears that the abridgment was made bona fide as such, and that it is not of a character to supersede the copyrighted publication. Unless it be denied that a legal copyright secures to the author “the. sole right and liberty of printing, reprinting, publishing, and vending the book” copyrighted, it cannot be held that an abridgment, or digest of any kind, of the contents of the copyrighted publication, which is of a character to supersede the original work, is not an infringement of the franchise secured by the copyright. What constitutes a fair and bona fide abridgment in the sense of the law is, or may be, under particular circumstances, one of the most difficult questions which can well arise for judicial consideration; but it is well settled that a mere selection or different arrangement of parts of the original work into a smaller compass will not be held to be such an abridgment Campbell v. Scott, 11 Sim. 38, and note; Gyles v. Wilcox, 2 Atk. 142; Folsom v. Marsh [supra]. Substantially the same views • are expressed in the case of Tinsley v. Lacy, 1 Hem. & M. 753; and the vice-chancellor in that case, in speaking of the authorities by which fair abridgments have been sustained, goes on to say, that the courts have gone far enough in that direction, and adds that it is difficult to acquiesce in the reason sometimes given, that the compiler of an abridgment is a benefactor to mankind, by assisting in the diffusion of knowledge.
Viewed in the light of these principles, it is quite clear that the book of the respondent, even if it could be regarded as an abridgment off the prior editions, must still be held to be an infringement of the same; but the court is of the opinion that it is not an abridgment of those editions, in any sense known to the law of copyright. Instead of being an abridgment of the prior editions, it is precisely what it purports to be, a reprint of the text of the author, with notes by a new editor; and the proofs are full to the point that he was employed to edit a new edition of the work, to supersede the antecedent editions annotated by the complainant Instructed as he was to make no use of the complainant’s notes, his principal defence still is, that he complied with those instructions, and that he did not make any use of the notes in his edition, beyond what is allowable as fair quotations from the published work of a prior author, treating upon the same subject. Copying is not confined to literal repetition, but includes also the various modes in which the matter of any publication may be adopted, imitated, or
Great difficulty attends every attempt to define in precise terms the privilege allowed by law to a subsequent writer to use without consent or license the contents of a book or treatise antecedently made, composed, and copyrighted by another author; or to mark the boundaries of the privilege of such subsequent writer to borrow the materials in a book like the annotated editions of the complainant, where the materials have been selected from such a variety of sources, and where the materials so selected are arranged and combined with certain chosen passages of the text of the original work, and in a manner showing the exercise of discretion, skill, learning, experience, and judgment. Decided cases are referred to where the principal criterion of determination is held to be the intent with which the person acted who is charged with infringement. Remarks to that effect are to be found in the opinion of the court in the case of Cary v. Kearsley, 4 Esp. 170, and the decision in the case of Spiers v. Brown, 6 Wkly. Rep. 353, refusing the application for an- injunction, turned to some extent upon the same consideration; but the vice-chancellor (now chancellor) refused to apply that doctrine in the subsequent case of Scott v. Stanford, L. R. 3 Eq. 722, and explained the grounds of his ruling in the former case, which show that he would not sanction that rule in any case unless it appeared that the defendant had bestowed such mental labor upon what he had taken as to produce an original result.
Evidence of innocent intention may have a bearing upon the question of “fair use;” and vVhftre it appeared that the amount taken was small, it would doubtless have some probative force in a court of equity in determining whether an application for an injunction should be granted or refused: but it cannot be'admitted that it is a legal de-fence where it appears that the party setting it up has invaded a copyright. Cary v. Faden, 5 Ves. 23; Reade v. Lacy, 1 Johns. & H. 526; Bramwell v. Halcomb, 3 Mylne & C. 738. Few judges have devised safer rules upon the subject than Judge Story. He held that, to constitute an invasion of copyright, it was not necessary, that the whole of a work should be copied, nor even a large portion of it, in form or substance; that if so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially, to an injurious extent, appropriated by another, that is sufficient in point of law to constitute an infringement; that, in deciding questions of this sort, courts must “look to the nature and'objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale or diminish the profits, or supersede the objects of the original work.” Folsom v. Marsh [Case No. 4,901], Mere honest intention on the part of the appropriator will not suffice, said Vice-Chancellor Wood, as the court can only look at the result, and not at the intention in the man’s mind at the time of doing the act complained of, and he must be presumed to intend all that the publication of his work effects. Scott v. Stanford, L. R. 3 Eq. 723; Hodges v. Welsh, 2 Ir. Eq. 266. Twenty years before that decision was made, Mr. Curtis, in his valuable work on the law of copyright, expressed the same views, and this court entertains no doubt they are correct. Curtis on Copyright, 240. Recent decisions afford more ample protection to copyright than those of an earlier date, and they also restrict the privilege of the subsequent writer or compiler in respect to the use of the matter protected by the copyright, within narrower limits. The decision in Kelly v. Morris, L. R. 1 Eq. 697, is, that in the case of a map guide-book, or directory, or the like, where there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to do for himself that which was done by the first compiler; that he is not
Examined as a question of strict law, apart from exceptional cases, the privilege of fair use accorded to a subsequent writer must be such, and such only, as will not causé substantial injury to the proprietor of the first publication; but cases frequently arise in which, though there is some injury, yet equity will not interpose by injunction to prevent the further use, as where the amount copied is small and of little value, if there is no proof of bad motive, or where there is a well-founded doubt as to the legal title, or where there has been long acquiescence in the infringement, or culpable laches and negligence in seeking redress, especially if it appear that the delay has misled the respondent. Sweet v. Cater, 11 Sim. 580; Tinsley v. Lacy, 1 Hem. & M. 752; Spiers v. Brown, 6 Wkly. Rep. 353; Strahan v. Graham, 15 Wkly. Rep. 487; Bramwell v. Halcomb, 3 Mylne & C. 738; Reade v. Lacy, 1 Johns. & H. 527; Jarrold v. Houlston, 3 Kay & J. 717; Lewis v. Fullarton, 2 Beav. 6; Bell v. Whitehead. 8 Law J. Ch. 141; Curt. Copyr. 326; Saunders v. Smith, 3 Mylne & C. 711.
Guided by the rules of law, as already explained, the court, after having examined the whole case with'care, is of the opinion that many of the notes presented in the edition edited by the respondent whose case is under consideration do infringe the corresponding notes in the two editions edited and annotated by the complainant, and that the respondent borrowed very largely the arrangement of the antecedent edition, as well as the mode in which the notes in that edition are combined and connected with the text. Judge Story held, in the case of Emerson v. Davies [Case No. 4,436], that every author had a copyright in the plan, arrangement, and combination of his materials, and in his mode of illustrating his subject, if it be new and original; and it was also held, in Greene v. Bishop [Id. 5,763], that there may be a valid copyright in the plan of a book, as connected with the arrangement and combination of the materials; and no doubt is entertained that both those decisions were correct; but it is a mistake to suppose that a subsequent writer can be held to have infringed a book where he has not borrowed any of the materials of which the book is composed. . New materials are certainly the proper objects of copyright; and old materials, when subsequently collected, arranged, and combined in a new and original form, are equally so: and in either case, the plan, arrangement, and combination of the materials are as fully protected by the copyright as the materials embodied in the plan, arrangement, and combination. Damages may be recovered in either of the supposed cases for the infringement of the property protected by the copyright; but the property in the latter case consists chiefly, if not entirely, in the plan, arrangement, and combination of the materials collected and presented in the book, as any other person may collect from the original sources the same materials, and arrange and combine them in any other manner not substantially the same as that of the antecedent author. Barfield v. Nicholson, 2 Sim. & S. 6.
A detailed specification of the instances of infringement, as shown by a comparison of the two books, would be impracticable, and will not be attempted; as the settled practice in equity is, where the works are voluminous and of a complex character, containing, as in this case, much original matter mixed wtlv common property, the cause will, at some stage of the case, be referred to a master, to state the facts, together with his opinion, for the consideration of the court. It is a better course to make the reference before the final hearing; but the parties in this case waived any reference at that stage of the cause, and elected to proceed to final hearing without any such report. Oases arise where the court, under such circumstances, would not order a reference, but would proceed to compare the books and ascertain the details of the infringement; but the case before the court is far too complex to admit of that course of action. Curtis, Copyr. 325; Mawman v. Tegg, 2 Russ. 400; 2 Story, Eq. Jur. § 941. Details have been examined as far as practicable, consistent with the claims of other official duties, but the judges are of the opinion that they should be further examined, and the results classified, before the court proceeds to determine the extent of the infringement, as the danger of injustice cannot well be avoided in any other way. New
Attention is called by the respondent to the fact that some of the notes in the edition edited by him are entirely original, that in others the material copied is much condensed, or the notes reduced to a mere reproduction of the authorities cited in the prior edition, and that other notes have been enlarged and improved by the addition of new matter, and in view of those circumstances, he contends that the edition edited by him should be regarded as a new and original work; but the decisive answer to the first and last suggestion is, that no man is entitled to avail himself of the previous labors of another for the purpose of conveying to the public the same information, even though he may append additional information to that already published. Scott v. Stanford, L. R. 3 Eq. 724; 2 Story, Eq. Jur. § 940; 2 Kent, Comm. 382, 383; Cary v. Faden, 5 Ves. 25. and note; Wheaton v. Peters, 8 Pet. [33 U. S.] 591 Bramwell v. Halcomb, 3 Mylne & C. 737.
Additional remarks in respect to the alleged fact that the contents of the notes copied were condensed are unnecessary, as it is quite clear, as before explained, that the change made in that -behalf is not of a character to afford the respondent any defence.
Supported by these reasons, the conclusions of the court are as follows: — 1. That the complainant in a court of equity is the equitable owner of the notes in the two annotated editions described in the pleadings as arranged, and the mode in which they are combined and connected with the text. 2. That the title to the entire text, together with the title to the memoir and indices, is in the proprietor of the book, and not in the complainant as alleged in the bill of complaint 3. That there are notes in the edition edited by the respondent, of substantial importance in point of number, and the value of the materials, which do infringe the equitable rights of the complainant, as explained and defined by the court 4. That all the respondents had notice of the claim of the complainant, as explained and defined by the court 5. That there are notes in that edition of substantial importance in point T>{ number and the value of the materials which do not infringe any rights of the complainant. 6. That the notes in that edition consisting wholly of citations found in the corresponding notes of the complainant do infringe his rights, as explained and defined by the cofirt, though many of them are unaccompanied by the extracts collected and presented in the next preceding edition. 7. That notes consisting of authorities or collections of authorities copied in like manner as described in the preceding proposition, and without remarks or comments, do also infringe the complainant’s rights, though they are found inserted in, or prefixed or appended to, notes otherwise not objectionable. 8. That notes of which the whole or some substantial and material part is condensed from the corresponding notes in the preceding edition, or from the extracts therein printed and published without any marks of original labor, or of any such labor except the study of the note copied and adopted, do also infringe the complainant’s rights, as explained and defined.' 9. That notes wholly original do not infringe. 10. That notes partly original and partly copied from the preceding edition do not infringe,
Equity suits for the infringement of a copyright are usually referred to a master before the final hearing, to ascertain whether the charge is proved, and, if so, for a report as to the nature and extent of the infringement; and in such eases the general rule is, that the complainant, if he prevails in the suit, is entitled, if at all, to an injunction at the time the decretal order is entered, to restrain the respondent from any further violation of his rights, as the whole case is then before the court. Even when the case is heard before any such reference and report, if the charges of infringement are few and of a character that the extent of the infringement can be conveniently determined by the court without sending the case to a master, the court, if the case be one where an injunction is the proper remedy, will order it at the same time that the decision is announced upon the merits. But where the cause comes to a final hearing without any such report, the court, if the charges of infringement are numerous and of a character to require extended examination before the extent of the infringement can be ascertained, will ordinarily send the case to a master for further examination and report in respect to all matters not previously adjudged by the court; and the general rule in such cases is, that the injunction will not be granted until the nature and extent of the infringement are fully ascertained and determined, as its effect and operation might work great injustice. Obviously the present case falls within the latter rule, and therefore an injunction will not be ordered -mtil the court shall have acted finally upon the report of the master.
[See, for a very interesting account of the history of this case and its attendant circumstances, the Life of Richard Henry Dana by Charles Francis Adams (volume 2, c. 6), published by Houghton, Miflin & Co. In this connection, wo herewith Teprint the master’s report found in the appendix of that volume. We also reprint from the same source an extract from a letter of Thornton K. Lothrop in relation to this matter.]
THE MASTER’S REPORT.'
The manuscript report of the master in the case of Lawrence v. Dana, as filed January 14, 1881, in the United States circuit court, district of Massachusetts, covers 211 quarto pages. It has never been printed. The following extracts therefrom relate solely to those notes in which infringements of the complainant’s “equitable rights” were found, according to the rules prescribed by the court to govern the master in his examination. The order in which the master stated the points involved has, for the sake of clearness, been changed so far as to permit his citations from the notes in dispute, of the respective editors, and his remarks concerning them, to be presented in parallel columns. Every case of infringement is here given, also the master’s preface to his report and concluding remarks.
Certain variations from the exact text of the notes in the master’s citations have been indicated by inserting within brackets, in their proper places, words omitted by him, and by italicising words supplied by him not in the originals.
To the Honorable the Justices of the Circuit Court for the District of Massachusetts.
The undersigned, special master, in the matter of William Beach Lawrence v. Richard H. Dana et al., having duly notified the parties, and having met them and heard their proofs and arguments, respectfully submits the following report:
The complainant claimed that certain notes in the last edition of Wheaton’s International Law infringed his equitable rights, within the meaning either of the first, the second, the third, or the fourth rule in the decree of the court, and divided these notes accordingly into four classes. The master has assumed that the honorable court did not mean to be understood as deciding that a citation by the respondent identical with one in a corresponding note of the complainant was necessarily an infringement of the rights of the latter, but that it might be an infringement upon sufficient evidence, although there was no other matter in the respondent’s notes besides the citation. It must be remembered that D. was to cover by his notes a period of eighteen years, since Whea-ton published his last edition in 1848, fifteen years of which had been covered by the learned and exhaustive notes of the complainant. It is apparent, therefore, that if the second annotator discharged his duty with diligence and fidelity, there must inevitably be a strong resemblance between the two sets of notes, and a large proportion of the citations must be common to both.
Direct and positive proof as to where the second annotator found his citations, or as to how far he traced them back, is not attainable. For he testifies, that if be now had the sheets, on which, as he was reading, he noted references to volumes and pages and sometimes to words, it would be impossible for him to tell to what author he was indebted for them. He further testifies that he does not mean to state, as matter of recollection, that he examined the originals of all the citations which he put in his notes. “Indeed,” he swears, “I know I have cited in the sense we have used that word, without quoting language, in a group of citations, at the end of a note or paragraph, works which I had never seen, and which perhans no living person has ever seen.” It was therefore necessary to resort to indirect and circumstantial evidence. The respondent proved that he had referred to sixty-nine works and made two hundred and one citations nowhere found in L., not including adjudged cases, treaties, statutes, speeches, diplomatic letters or transient matter; that he had four hundred and seventy citations to authors not impeached by L., not including adjudged cases, treaties, statutes, diplomatic correspondence, or speeches; that he gives two hundred and four adjudged cases nowhere in L. or in Wheaton, twenty-three of which are re-citations, leaving one hundred and eighty-one new cases; that L. contributes one hundred and sixty-nine citations to adjudged cases not in Wheaton, of which thirty-
The master has assumed that the burden of proof is on the complainant to show copying by the respondent, and in doubtful or nicely balanced cases he has allowed much weight to the evidences of study and labor on the part of the second annotator where he has found them. The master has endeavored to present as briefly as possible, the questions raised as to each of the notes assailed dividing them into four classes,— and to state the proofs and counter-proofs relied on. In many cases he has ventured an opinion, after much hesitation.
Notes of the First Class.
[Eleven of Pana’s notes were impeached.]
Sixth. Note 120, p. 291. The author says: “Where an empire is severed by the revolt of a province or a colony declaring and maintaining its independence, foreign states are governed by expediency in determining whether they will commence diplomatic intercourse with the new state, or wait for its recognition by the metropolitan country.”
D.’s note is attached to this text. He refers to his note 16, “ On Recognition of Independence,” and note 41, on, “Interventionin Mexico and Recognition of the Empire. ” He adds: “See, also, Mr. Buchanan to Mr. Rush, of 81st March, 1848; Mr. Webster to Mr. Rives, of Jan. 12, 1852; Mr. Everett to Mr. Rives of J17th February, 18631 Jany. 12th, 1863.”
L. has a note of two pages at same place, note 117, p. 876. He says: “No difficulty [in recognizing a government de facto] can well arise with foreign states [when] where a prince, [though] claiming to be sovereign de jure, voluntarily renounces all attempt to exercise his rights;” quotes from a notification addressed to tbe foreign courts on the death of the Duke ofAngouleme; gives an extract from letter of Mr. Buchanan to Mr. Rush, the 31st March, 1848, citing department of state MSS.; an extract from a letter of the date of Jany. 12, 1852, from the secretary of state to the minister, Mr. Webster to Mr. Rives, Cong. Doc. 1851-2 [Senate], Vol. iv., Doc. 19; and a short extract from instructions of Mr. Everett to Mr. Rives, 17 Feby., 1853, citing department of state MSS. It is observable that the dates are the same in both, save that the date of Mr. Everett’s letter as given by D. is 1863. Two of these letters are by L. quoted from manuscripts. D. does not say where these letters may be found.
Of these eleven notes the master finds that one alone infringes, viz., note the sixth. As it does not appear that the letters of Mr. Everett to Mr. Rives and of Mr. Buchanan to Mr. Rush have been published; L. citing department of Btate MSS., P. not saying where they may be found.
Notes of the Second Class.
[Three of Dana’s notes of this class were impeached; but the master reported none as infringements of the complainant’s equitable rights.]
Notes of the Third Class.
[Fifty-nine of Dana’s notes of this class were impeached. The master reported four as infringing the complainant’s equitable rights.]
Thirty-fifth. Note 117, p. 277, is of six lines.
D. says: “ The treaty of Paris of 1856 applies the declaration of the freedom of rivers running between or through several states, by the congress of Vienna, to the Danube, and opens it to the trade of all nations, with no duties founded solely on the right to navigate. It makes special provisions respecting police, quarantine,and customs duties, and the removal of physical obstructions to navigation. See, also. art. 17 of treaty of 1857. Martens, Nouveau Recueil, xv. 647, 776; xvii.. 75, 622, 632. ”
L. has a note at the same place of more than a page, — note 118, p. 849. He says: “The free navigation of the Danube had been one of the four points made the basis of the negotiation at the congress of Paris. The principles of the Vienna treaties were applied to it [by the treaty of March 30, 1856], as follows.” Then follows what purports to be articles xv., xvi., xvii. and xviii. of the treaty of Paris, citing “Martens, par Samwer, Nouveau Recueil, tom. xv. pp. 617. 776. ” “The act of navigation of the Danube was concluded between Austria, Bavaria, the .Ottoman Porte, . and Wurtem-burg, in pursuance of the 17th article of the treaty, on the 7th of November, 1857. It recognizes the freedom of navigation for vessels of all nations, which are to be treated, in every respect on a footing of perfect equality. Ib. tom. xvi. part ii. p. 75. The European commission established,
It is apparent that D. might have written his note without reading more than L.’s.
The 17th article of the treaty of Paris provides for a commission to be composed of delegates of Austria, Bavaria, the Sublime PQrte and Wurtemburg — (one of each of the powers), to whom shall be added commissioners from the three Danubian Principalities whose nomination shall be approved by the Porte:
1. To prepare regulations of navigation and river police:
2. To remove the impediments, of whatever nature, which shrill still prevent the application to the Danube of the arrangements of the treaty of Vienna:
3. To order and cause to be executed the necessary works throughout the whole course of the river:
4. And [shall] after the dissolution of the European commission, to see to maintaining the mouths of the Danube and the neighboring part of the sea in a navigable state.
D. cites article 17 of the treaty of 1857. There was no treaty of 1857. The act of the navigation of the Danube was concluded in pursuance to the 17th article [of the treaty between Austria, Bavaria, Turkey and Wurtemburg] 7th of November, 1857.
The citation of Martens Nouveau Recueil, xvii. 75, 622. 632, is a mistake, for these citations have no relation to the matter for which they were cited by D.
This has the appearance of a hasty transfer of citations from L.’s note.
Thirty-seventh. fourteen lines. 295, is a note of Note 122, p.
The note of D. was written on an interleaf. It might have been written, including the citations, from the three notes of L. D. does not indicate where the letters h$ mentions are to be found, nor does L. in all instances.
L. has a note of eleven lines, note 120, p. 884; a note of half a page, note 121. p. 885, at the same place as D. ’s; and a note of ten lines, note 122, p. 386.
Forty-first. Note 181, p. 819, is of sixteen lines.
D. says: “Dr. Twiss (Law of Nations, i., § 208) states the present rule and practice somewhat differently,” and then makes a quotation.
L., at same nlace, has a note of twenty-one lines, note 183, p. 416, in which he says: “The statement in the text does not accord with what we deem the correct rule on principle, nor with what was the usage in England during the editor’s official residence in that country. ”... The same extract from Twiss follows — except that the words “the rates” are substituted for the word “them.” Thefirstthree paragraphs are from the text of Dr. Twiss, the last three from his note on the same page. Though there is no indication of this in either.
D. directed the printer to reprint this extract from- L., which was done, except that the word “them" in the quotation as made by Mr. Lawrence was changed for the words uthe rates. ”
“Them” is the word in the original.
D. would hardly have undertaken to correct the author he was citing, he must have supposed that a mistake had been made in copying, as he would not have substituted uthe rates ” for “ them. ” He probably did not take the trouble to compare the quotation of L. with the original.
Forty-fourth. Note 188, p. 338, is of twelve lines. The text says: “It is, consequently, an implied condition in negotiating with foreign powers, that the treaties concluded by the executive government shall he subject to ratification in the manner prescribed by the fundamental laws of the state.” .
D. says: “Por this reason, the representatives of the United States are not willing to sign or receive declarations or other notes in connection with a treaty. If such [notes] can possibly affect the treaty, they Bhould be communicated to the senate, as a part of the compact. (Mr. Adams to Earl Bussell, Aug. 28, 1861, on the declaration proposed to be attached to the convention on the subject of th e declarations of Paris. U. S. Dipl. Corr. 1861,' p. 186. See, also, Mr. Cass to Mr. Sand-ford, Oct. 22, 1859, Sen. Ex. Doc. 86th Cong. 2d Sess. No. 10. President Polk’s message of Peby. 8, 1849, Cong. Globe, 1849, p. 486.) This subject was also discussed in connection with the Clayton-Bulwer treaty, where the British Minister, in exchanging ratifications, sent a note of explanation to Mr. Clayton, to which the latter replied. Sen. Ex. Doc. No. 12, 82d Cong. 2d Sess. Also Mr. Wheaton’s letter to the state department, of 8th July, 1840, respecting the treaty with Hanover. ”
L. has a note of a page and a half, note 158, p. 454, and another note at the same place as D.’s of thirteen lineB, note 154, p. 456. In the latter L. says: “It is not necessary to submit to the senate, for its formal approval, conventions providing for the adjustment of private claims, unless such a course is indicated in the convention itself,” citing “86th Cong. 2d Sess. Senate Ex. Doc. No. 10, p. 472. Mr. Cass to Mr. Sandford, October 22, 1859.”
In note 153, L. says, “On occasion of ¡the treaty concluded by Mr. Wheaton with Hanover, it was proposed to declare by a protocol, [ . . . ] that, though the treaty [had been] concluded m English and French, in case of any disagreement [. ..] the French [copy] Bhould be deemed the original. It was, however, the opinion of Mr. Wheaton, in which the secretary of state concurred, that no such declaration could be entered into without submitting the treaty anew to the senate.” Citing “Mr. Wheaton to secretary of state, 8th July, 1840, department of state MS."
He says: “ On the exchange of the ratifications of the treaty of peace between the United States and Mexico, a protocol of the conference between the commissioners, embodying their opinion as to the operation of certain amendments of the sen
In the next two paragraphs, he says: “In proceeding to [the] exchange of the ratifications of the convention, signed at ‘Washington, on .the 19th of April, 1850, [between her Britannic majesty and the United States of America, relative to the establishment of a communication, by ship-canal, between the Atlantic and Pacific Oceans. ” Mr. H. L. Bulwer, the British minister, says, he “has received her majesty’s instructions to declare that her majesty does not understand the engagements of that convention to apply to her majesty’s settlement at Honduras, or to its dependencies. Her majesty's- ratification of the said convention is exchanged under the explicit declaration above mentioned. . . It appears from the printed documents that Mr. Clayton filed, on 5th of July, 1850, a memorandum [in the department of state, stating] saying he had received the above declaration on day of its date; that he wrote, in reply, on the 4th July, a note acknowledging [that! he had understood that British Honduras was not embraced in the treaty of the 19th of April, but, at the same time, declining to affirm or deny the British title; and that, after signing the note [of] 4th of July, which he delivered to Sir Henry Bulwer, they immediately proceeded to exchange the ratifications of the treaty. ” Citing “Cong. Doc. 83d Cong. 2d Sess. Senate Ex. Doc. No. 12, January 4, 1853.”
In the next and last paragraph he quotes from a letter.from Mr., C. F. Adams to Earl Russell, Aug, 23d, 1861, in which he gives his reasons for declining to attach a declaration to proposed convention of maritime law, citing, “Papers Relating to Foreign Affairs, Accompanying the President’s Message,' 1861, p. 123. ”
It is manifest on examination of D.’s note 36, on the Monroe doctrine, p. 97, and his note 215, on the Neutrality and Foreign Enlistment Acts, p. 536, that he had made himself familiar with the Clayton and Bulwer treaty and with the history of its negotiation.
For the correspondence between Mr. C. F. Adams and Earl Russell, D. refers to U. S. Dipl. Correspondence in 1861, p. 126, [136], while L. refers to the papers accompanying the president’s message.
For the letter of Mr. Wheaton to secretary of state, 8th July, 1840, L. cites department of state MS.
D. does not say where this letter may be found.
L., see Record, p. 125, says he has never seen the letter of Mr. Wheaton to secretary of state in print. And it is not proved on the other side that it had been printed.
Of the notes of this class, the master finds that the.thirty-fifth, note 117, p. 277; the thirty-seventh, note 122, p. 295; the forty-first, note 181, p. 819; and the forty-fourth note ISO, p. 417, [note 188, p. 888] — do infringe the equitable rights of the complainant. That the forty-seventh note 160, p. 417, in which is cited by the respondent the letter of Mr. Cass to Mr. Clay, minister to Peru, Nov. 26, 1858, which the complainant had quoted and cited in manuscript; and that the fifty-fifth note 232, p. 671, in which is cited by the respondent the letter of Mr. Wheaton to Mr. Buchanan, secretary of, state, July 1st, 1846,
Notes of the Fourth Class.
[Forty-one of Dana's notes of this class were impeached. The master reported eight as infringing the complainant’s equitable rights.]
Sixth. Note 80, p. 77, is of a page. It íb claimed that the first five sentences of D.’s first paragraph and his entire second paragraph are taken from L.’s note of six pages at the same place, note 38, p. 91, and his Addenda, 983, 984. Both notes are historical, though unlike, they contain coincidences of phraseology, such as “In 1848 an attempt was made,” “Parliament met in May, 1848,” “with the approbation of the diet,” “Austria, Wurtemburg, Bavaria and Hanover,” in the same order.
D. has a cluster of citations at the end of his fifth sentence, “Annual Register, 1848, p. 362; 1848. pp. 347, 364; 1850, pp. 313, 320; 1851, p. 276.” These are all at the end of the second paragraph of L.’s note, p. 92, in the same order, with two others not in D. L. encloses the pages of the Register to which he refers in brackets, or rather places a bracket after the pages. The Annual Register is a book, each volume of which is of two parts. One part has the numerals only, the other, the numerals with a bracket after them. D. testifies that he was familiar with the work. Did he obtain these citations from the book or from L.?
D. might have written these five sentences
The second and last paragraph of D. is taken from p. 95 of L. and his Addenda, 983,- 984, as is contended. But D., p. 78, says: “The states of the second order began the movement in 1859, countenanced by Austria, Saxony taking the lead. Their proposition, known as the Dresden project, was declined by Prussia.” I do not find any authority in L. for the statement that this proposition was known as the Dresden project.
At the end of his note D. cites “Le Nord. Aug. 15, Aug. 31, Oct. 18, Nov. 1 and 21, 1862.” But L. cites Le Nord as authority for each of his several statements of fact, and he makes many which D. does not, and it is proved that D. has ■cited Le Nord only where it had been cited in L.
All D.’s citations of Le Nord are found in L. pp. 983, 984, and 985.
In the opinion of the master, the final paragraph of this note of D.’s does infringe the rights of the complainant.
Seventeenth. Note IOS, p. 258, is of less than three pages on “Municipal Seizures Beyond the Marine League or Cannon-Shot.”
L. has a short note at the same place, note 105, p. 323, in which' the reader is referred to his note p. 266, note 105, of ten pages. It is claimed that some parts of D.’s note were taken from the two notes of L.
The notes appear to have been written for a different purpose and they have not much in common.
D. cites U. S. Laws 1797, § 27: Rose v. Himely, 4 Cranch [8 U. S.] 241; Hudson v. Guestier, Id. 293; Church v. Hubbard, 2 Cranch [6 U. S.] 187; Hudson v. Guestier, 6 Cranch [10 U. S.] 281. Neither of these is in L.’s notes: D. cites for. Lord Stowell’s opinion in the Case of The Louis, 2 Dob. 245. L. cites 246 Stowell, begins on p. 245.
Both refer to the opinion of Dr. Twiss, in the Cagliari Case. L. has a long extract from the opinion. D. quotes a part of L.’s extract.
It is in proof that both have omitted one and the same line of the original. D. nowhere indicates where the opinion may be found, nor does L. D. says, p. 200: “This subject was discussed incidentally in the case of the Cagliari which was a seizure on the high seas, not for violation of revenue laws, but on a claim somewhat mixed of piracy and war.”
I do not find any authority for this in L.'s note.
Air. Dana cannot tell where he got his quotation from the opinion of Dr. Twiss. and Air. Alorse had not seen it elsewhere. Air. Potter (Record 158-159) swears that both omit one whole line of the original and neither notices the omission, that he never saw it printed entire in any book though he had seen a printed copy of it in Mr. Lawrence’s library.
The master is of opinion that D. took the third paragraph of his note from L.’s note, and finds that this paragraph infringes the rights of the complainant.
Twentieth. Note 128, "half a page. p. 808, is of more than
The first sentence is: ■“Heffter says that a minister in a Christian •country has no authority to inflict, penalties upon his suite and no jurisdiction to decide controversies of legal rights among them and between his fellow citizens residing in the country. ” (Europ. Vol-ker. § 216.) De Martens, § 215. To this there is no objection. The next sentence is: “Mr. Cass, secretary of state, in a letter to Mr. Fay, the United States minister at Berne, of Nov. 12, I860, takes the ground that a minister of the United States has no civil or criminal jurisdiction among his fellow countrymen or over his suite, and that what is called the extra-territoriality of the embassy relates only to what is necessary to the proper discharge of diplomatic functions, and does not make the place of the minister’s residence-a portion of the United States in such a sense that private persons, by presenting themselves there for purposes of private contracts, whether of marriage or of business, can give to their acts exemption from the law of that country, or the sanction of the law of their own country. If the latter effect is produced it must be by force of statute law. 12 Stat. 72, c. 179.
L. has a note not at same word of the text, but to a preceding word in the same section, of near a page and a half, note 133, p. 398. In this note he quotes more than a page, citing Mr. Cass to Mr. Fay, minister at Berne. Nov. 12, 1860, department of state MS.
There can be no doubt that the substance of the foregoing sentence is found in the quotation from Mr. Cass’s letter in L. Mr. Lawrence testifies that to the best of his knowledge there has been no printed copy of this manuscript extract. save what was in his note. And there was no attempt to contest this evidence.
D. then devotes four sentences to the views of Dr. Woolsey, citing Woolsey’s In trod, § 92. His last sentence is a statement of what the British government claimed and admitted in the case of the coachman of Mr. Gallatin, the United States minister in London. D. does not say where the case may be found.
Mr. Lawrence testifies: “The case of Mr. Gallatin’s coachman is also mentioned by D., p. 808. I give it in the addenda, p. 1006. I have never known of its being stated elsewhere. It occurred while I was secretary of the legation, and the discussion with the foreign office was carried on by me. Gallatin’s despatch and my private memoranda.” Record, p. 124.
L., p. 1006, gives a brief history of the coachman’s case, p. 1006, and from this D. might have written the last sentence of his note.
The master finds that the second and last sentences do infringe the rights of the complainant.
Tioenty-second. Note 185, p. 824, is of more than half a page, in two paragraphs. The text speaks of consuls in civil cases being subject to the local law in the same manner with other foreign residents owing a temporary allegiance to the state.
The author has a note at the same point, citing several authorities.
He then gives a short history of the case of Mr. Dillon, the French consul at San Francisco. “After a long correspondence, ” he says, “the point was settled by instructions from the French government to its consuls to obey the subpoena in future cases.” Citing Mr. Marcy to Mr. Mason, Sept. 11, 1854, and 18 January, 1855; notes of Mr. Mason and M. Walewskl, Aug. 3 and 7, 1855; Annuaire des Deux Mondes, 1853-4, p. 762; 1854-5, p. 732.
D. does not say where the correspondence may be found. D.’s Becond paragraph is not assailed.
L. has a note to the same word in the text. Note 143, extending from page 423 to page 487, a storehouse of learning. The citations in D. which are underscored are found in L. The others are not. L. has many citations which are not in D. L. gives a very full account of Dillon’s case. For the correspondence between Mr. Marcy and Mr. Mason and between Mr. Mason and M. Walewski, L. cites MS. and Annuaire des deux Mondes, 1858-4, p. 762; 1854-5, p. 782. Mr. Lawrence testifies that this is a correspondence which he has never seen elsewhere in print: and that his attention was directed to ■ it by Mr. Marcy.
The master finds that all of the note of D. after the first sentence does infringe the rights of the complainant.
Twenty-fourth. Note 143, p. 852, is of more than a page on the “Effect of War on Treaties. ”
D. undertakes to indicate what treaties are and what treaties are not annulled or suspended by war. He quotes from Halleck (Intern. Law, 371, 862); from Kent (Commentaries, i. 420); from the opinion of the supreme court (in the case of the Society for the Propagation of the Gospel v. New Haven, 8 Wheat. [21 U. S.] 464); from Woolsey (Introd. §152). Says, “The older text-writers made the survival of treaty rights dependent on the origin of the _ war” — citing Grotiús,’liv. 3, ch. 20, §§ 27, 28, and Vattel, liv. iv. ch. 4,. § 42. Then follows a short commentary. He adds: “See, also, the debate in the house of commons on the declaration of Paris of 1856; speeches of Sir .George Lewis and Mr. Bright of March 11 and 17, 1862, and of the Earl of Derby of Feb. 7,1862; despatch of Mr. Marcy to Mr. Mason of Dec. 8, 1856; Phillimore’s Intern. Law, iii. App. 21.”
L. has a note of some three pages at same place. Note 160, p. 472. He has none of the citations in D., except those which are underscored. He has a quotation from Mr. Marcy’s despatch to Mr. Mason, for which he refers the reader to department of state MS. And this is a manuscript which Mr. Lawrence swears he never saw elsewhere in print.
The speech of Lord Derby so far as quoted by L. does not bear on any matter set forth in D. Both cite this speech as made Feby. 7th. Hansard gives it as made Feby. 6th.
L. quotes from Sir George Cornwall Lewis, p. 474, and from Mr. Bright. He also quotes from Phillimore, citing International Law, vol. iii. p. 602.
The high probability is that D. took his references to the speeches of Earl Derby, Sir George Lewis, and Mr. Bright from L.’s note, as also citation of Mr. Marcy’s despatch, and in the opinion of the master these citations by D. do in-fringS’the complainant’s rights.
Twenty-sixth. Note 156, p. 887. is of nearly two pages on “Enemy’s Property Found in the Country on the Breaking Out of War.” At the same point Mr. Wheaton has this note. “Mr. Chief Justice Marshall, in Brown v. U. S., 8 Cranch [12 U. S.] 123-129.”
D. in his first and second paragraphs gives the decision of the court, and states the question upon which they were divided and quotes from Kent. These two paragraphs are'not assailed. In the third paragraph he says, “Hauteteuille contends that the law of nations exempts from confiscation property found within the country on the breaking out of war, including vessels and cargoes afloat, ” citing tom. iv. p. 267; tom. iii. p. 278, and adds: “It does not follow that the learned author considers his view to be sustained by the decisions of courts or practice of nations. He refers rather to treaties securing [the] exemption, and. to the opinions of text-writers whom he considers sound and trustworthy. ”
In the fourth paragraph he says: “The English text - writers, like the American, are of opinion that the law of nations is not settled against the right, but, indeed, admits it. Manning, Law of Nations, 167; Phillimore, Intern. Law, i. 115-135. ”
The fifth paragraph is devoted to the orders and declarations issued and made by the parties to the Crimean War —France and Great Britain — citing “French Declaration of March 27, and British Declaration of March 29, 1854. ”
He says: “On her part, Russia allowed French and English vessels six weeks to load and sail from ports in the Black Sea, Baltic [and] sea of Azof, and six weeks from the opening of navigation, to vessels in the White
In L. the last citation is stated to be from second edition. The first citation is reprinted by L. from his edition of 1855, p. 87L
D. in his third paragraph has two citations of Hautefeuille, tom. iv. p. 267; tom. iii. p. 278. He does not say which edition he refers to. It is in evidence (Record, 219) that tom. iv. p. 267 of the four volume edition is the same as tom. iii. p. 278 of the second edition.
. The last two sentences of D.’s fourth paragraph are not found in L.
The master finds that the third paragraph infringes the complainant’s rights, and that the others do not.
Thirty-seventh- Note 228, p. 687, is of twenty-four pages. Five paragraphs (p. 689) only are assailed.
First.
D. says, p. 689: “At the beginning of the Crimean War, the declaration of Great Britain, of 28 March, 1854 (and that of France was to the same effect), was in these words: ‘ It is impossible [for her majesty) to forego the exercise of her right of seizing articles contraband of war, and of preventing neutrals from bearing the enemy’s de-spatches.’ "
L. has a note at the same word of the text, note 230, p. 805. He says, p. 771: “The preventing of neutrals bearing enemy’s despatches was included with the seizing of articles of contraband, as an exception to the otherwise unrestricted freedom of commerce, conceded to them by the ‘declarations’ of England and France, and .by the order in council, of the 15th of April, 1854." The language of the declaration is not there given, but in the note of L. 228, p. 771, he says: “The ministers of England and France communicated to the secretary of state of the United States on the 2lst of April, the declaration made on the 28th March.” He then quotes from the declaration, and a part of L.’s quotation is the quotation of D.
Second.
D. says (p. 639): “At the beginning of the Civil War in the United States, the royal proclamation of neutrality of 13th May, 1861, warns British subjects against carrying officers, soldiers, despatches, arms, military stores, . . . for the use of either of the contending parties, ” as “ acts in derogation of their duty as subjects of a neutral sovereign. ”
L. says (p. 805): “The queen of England’s declaration of neutrality, in the present war between the United States and the Confederate States, includes in the same category with ar-ticals of contraband, “carrying of officers, soldiers, despatches, &c., for the use or service of either of the [said! contending parties.” The words in D. underscored, viz: “arms and military stores” are not found in L. nor is the date of the declaration. But on page 698 of L. the date is given and words underscored are found.
Third.
D. (p. 689) says: “The decree of the emperor ,of the French was more general,” and gives a quotation from it.
L. (p. 699) says: “The French decree, as published in the Moniteur, June, 1861, was as follows. ” Then follows an extract of which the quotation oí D. is a part.
Fourth.
D. (p. 689) says: “The Spanish decree of June 17, 1861, says: ‘The transportation of munitions of war is forbidden, as well as the carrying of papers or communications for the belligerents.’ "
L. (p. 699) gives the same date and the same quotation and more,
Fifth.
D. (p. 699) says: “The declaration of Paris is silent on this subject. The proposed International Code of Spanish America, of 1862, in connection with its recognition of the declaration of Paris, had this provision : ‘ Besides the articles qualified as such, are to be deemed contraband of war commissioners of every description sent by belligerents, and the de-spatches of which they are the hearers.’ ”
D. does not indicate where any of these papers from which he quotes are to be found.
L.(p. 951): “The questions raised by the affair of The Trent did not enter in any manner into the declaration of the congress of Paris. . . . The proposed international. code of Spanish America, while recognizing the principles of the declaration of Paris, inserts a provision that ” Then follows in ipsissimis ver-bis the quotation oí D. L. cites “La Crónica, 6 de Octubre, 1862."
The master finds that the seventh, eighth, ninth and tenth paragraphs do infringe the rights of the complainant
Fortieth. Note 240, p. 688, is of two pages.
D. gives a history of the case of the Cagliari, the opinions in brief of Dr. Twiss and Dr. Phil-limore, and finally his own opinion and the reasons therefor atsome length. At the end of his note he cites “Martens, Causes Celebres, v. 600.” Martens gives a history of the case but does not allude to Dr. Twiss or Dr. Philli-more. D. had Abdy’s Kent in which the history of the case is given, and a short extract from Dr. Twiss’s opin
The master has indicated such parts of the respondent’s notes in the fourth class as he finds to infringe the rights of the complainant, and as to other parts of said notes he finds they do not infringe, either because he is satisfied they do not, or is not satisfied that they do.
He has endeavored to present the facts, the questions raised and the proofs and suggestions relied on by the respective parties, as briefly as is consistent with the proper discharge of his duty to the court.
Respectfully submitted, H. W. Paine.
Extract from Letter of Mr. Lothrop.
Hotel Jungfraublick, Interlaken,
August 25, 1890.
My Dear Adams: ****** into the merits of the unfortunate controversy and litigation which followed the publication of his edition of Wheaton I have no wish or purpose to enter. Mr. Dana would never have denied his use of Mr. Lawrence’s collections of citations, but these citations — mere lists of other persons’ writings, — were in his opinion common property, and the labor and research employed in finding and collecting them he hardly regarded as intellectual work. No original thought or expression of Mr. Lawrence’s is anywhere to be found in Mr. Dana’s notes; nor does any idea of Mr. Lawrence’s anywhere serve as a basis for, or seem to have suggested, any note or part of a note to Mr. Dana. But Mr. Lawrence’s collections of citations are constantly reprinted exactly in the order in which they stand in the editions of Whea-ton published under his supervision. This is, however, rather a technical illegality than a moral injustice, for had any one on Mr. Dana’s behalf verified these lists by referring to the books cited he might then without reproach have reprinted them in the same order, so far-as he found them correct. And it is gratifying to know that the report of the master to whom the case wat referred, made after a most laborious and exhaustive investigation, reduced to a minimum the invasion of Mr. Lawrence’s copyright; if indeed there were any invasion at all. The report was never acted upon, and upon the death of both the parties the litigation practically ceased. The whole controversy is the more unfortunate, as there is reason to believe that, had Mr. Dana thoroughly recognized the value and extent of Mr. Lawrence’s labors, and publicly expressed his obligations for Mr. Lawrence’s exhaustive researches, there would have been no difficulty and no lawsuit It is much to be regretted that this was not done, and it must be admitted, I think, by Mr. Dana’s best friends, that his failure to perceive and acknowledge the advantage to himself, as well as to all students of international law, of Mr. Lawrence’s diligence in research, was unjust as well as unfortunate. In spite of the time devoted to his work on Wheaton, Mr. Dana was able during these years to discharge all the duties his office required, and when he resigned he had the satisfaction of knowing that, though no addition had ever been made to the number of his assistants, the whole work of the office in the busiest times had been done without the employment in a single instance of any additional counsel, or any professional aid from outside. I have now given you, my dear Adams, my best recollections of Dana’s district attorney-ship, about which you ask me. What I have written is all that I can do here. I wish you had applied to me before I came away. The whole tiling is absolutely yours to treat and use in any way you like. I have only one request, that you will not let me in any way appear in print with any statement where your better knowledge shows my recollection to be inaccurate.
Very truly yours, Thornton K. Lothrop.
P. S. Did ever a man suffer more than Dana from his mental peculiarities, perversities or ob-liquities, or whatever you cboose to.call them? He thought anybody could collect authorities, and that to do this was a day laborer’s task; he used Lawrence’s collections, and then despised his notes because they were mere collections of authorities, and at last ‘hought himself under no obligation to him, because the notes were what anybody^qould have done, and so would not say the soft word that might have turned away wrath, but wrote instead what almost rendered a lawsuit inevitable; — and then Lawrence pursued him with a personal and political vindictiveness which ruined Dana’s career, lost him his only chance, and was t<i- Lawrence, whatever became of his lawsuit, a perfectly satisfactory vindication. Two hundred and fifty dollars paid-, or some other equally accurate man would have rendered any suit impossible; and a little harmless and truthful flattery would have removed all desire for a controversy from Lawrence’s mind. But the whole thing was very characteristic of one side of Dana’s mind.
I may; add that my recollection of the Prize Causes is very shaky. If I could have got hold of a brief or a volume of reports, it would all have come back to me; but-my endeavors in this direction were íd vain, and my recollections are rather of points talked over between Mr. Dana and myself in these and other like cases than of the actual argument of the cases. Dana, as you know, was always absolutely absorbed in the one thing he was doing; and this question of— was there a war? — could there be prize? took absolute possession of him. It had been agreed between us that he should take charge of all such questions, and should not be troubled with the other office work except in cases of emergency, and that I should have charge, of and be responsible for the other work, and from the outset the office was managed in this way during all the time I was there.
[From 7 O. G. 81, and 2 Am. Law T. Rep. (N. S.) 402.]
[From 7 O. G. 81, and 2 Am. Law T. Rep. (N. S.) 402.]
[Th's must be a mistake. The reference is to a letter in the next note 381, p. 1174, which is not assailed.]
