Copyright: Its History and Its Law Part 24

{Sidenote: Webster Dictionary cases}

In the Webster Dictionary cases in 1890-1909, a long litigation between the Merriams, as authorized publishers of Webster, and Ogilvie and other defendants, the courts held that the use of the name Webster or the t.i.tle Webster's Dictionary could not be restrained when used in connection with a reprint of the original Webster Dictionary, then out of copyright, or otherwise in a manner not likely to mislead the public; but injunctions were granted and sustained against the use of these names on dictionaries issued in form so like the Merriam editions as to deceive the public, or in connection with misleading advertis.e.m.e.nts or circulars.

{Sidenote: "Old sleuth" cases}

In 1888-1890 George Munro, publisher of the "Old sleuth" detective series, sought in actions against several defendants to protect the use of the name "Sleuth" and was upheld in the N. Y. Supreme Court in separate decisions by Judges Andrews, O'Brien, and Patterson, while in one of the cases Judge Ingraham held that "sleuth" was a dictionary word and could not be protected; in 1889 the N. Y. Court of Appeals through Chief Judge Parker decided that the name "Sleuth" was protectable, and in 1890 Judge Macomber of the N. Y. Supreme Court held that "Sleuth" was properly a subject of trade-mark. But in 1890 also, Judge s.h.i.+pman in the U. S. District Court dismissed the complaint in another Munro case, as to an ill.u.s.tration picturing "Old Sleuth," on the ground that though of the same subject it was not of the same character. These cases ill.u.s.trate the difficulty of decisions in this borderland of equity.

{Sidenote: Other t.i.tle decisions}

In 1894 Judge Green, in the U. S. Circuit Court in New Jersey, in Social Register a.s.sociation _v._ Howard, protected on grounds of equity the t.i.tle "Social register" as descriptive of a social directory covering Orange, N. J., and enjoined the use of "Howard's Social register" as unfair compet.i.tion. In 1887 the Harper house, as publishers of the _Franklin Square Library_, obtained from the U. S. Circuit Court, through Judge Waite, an injunction against the Franklin Square Library Company for violation of their trade-mark rights in the name.

{Sidenote: Rebound copies}

Where the American Book Co. brought suit against Doan & Hanson, who had restored and rebound used copies of school books, the U. S. Circuit Court of Appeals held in 1901 that there was no violation of law, but required notice that the books were second-hand copies by conspicuous stamp on the cover. In 1891 the Pennsylvania Supreme Court, in Dodd _v._ Smith, declined to grant Dodd, Mead & Co. an injunction against rebinders who had purchased from them sheets of a fifty-cent paper-covered edition of a novel by E. P. Roe and bound these in cloth to sell at sixty cents in compet.i.tion with the plaintiff's $1.50 cloth edition.

{Sidenote: The Kipling case}

In 1899 G. P. Putnam's Sons purchased from Kipling's authorized publishers sheets of twelve volumes, added three volumes of non-copyright or otherwise authorized material and published the fifteen volumes, "Brushwood edition," of Kipling's works, with the design of an elephant's head on the binding. Kipling sought an injunction for infringement of copyright, use of trade-mark and unfair compet.i.tion with the "Outward bound edition" of his works, which also bore an elephant's head. In 1903 the U. S. Circuit Court of Appeals, through Judge c.o.xe, affirmed a decision holding as "a well-recognized principle of law" that "the defendants, having purchased unbound copyrighted volumes, were at liberty, so far as the copyright statute is concerned, to bind and resell them"; that the elephant's head, not being a registered trade-mark, could not be protected as a trade-mark; and that there was no similarity of editions const.i.tuting unfair compet.i.tion. But in 1907, in Dutton _v._ Cupples & Leon, the plaintiffs obtained damages for a series of books closely imitating the get-up of their "Gem" or "Dainty"

series. Pa.s.sing off, however, cannot be made ground of action when material protectable by copyright has not been copyrighted, as was held in 1908, in Bamforth _v._ Douglas Post Card Co., by Judge McPherson in the U. S. Circuit Court.

{Sidenote: Burlesqued t.i.tle}

The suit to enjoin the use of a reversed or burlesque t.i.tle, when the _Boston Herald_ printed, under the t.i.tle of "Letters of a son to his self-made father," a skit on Lorimer's "Letters of a self-made merchant to his son," was denied by Judge Morton in the Ma.s.sachusetts Supreme Court in 1903 as involving no deception.

{Sidenote: The Drummond case}

In 1894 Henry Drummond, a British subject, obtained from Judge Dallas, in the U. S. Circuit Court, an injunction restraining Henry Altemus from publis.h.i.+ng what purported to be exact reports of twelve lectures, of which eight only had been imperfectly reported in the _British Weekly_, on the ground that the author had a common law right to restrain the publication "of any literary matter as the plaintiff's, which was not actually his creation, and to prevent fraud."

{Sidenote: The new British code}

The new British measure comprehensively defines infringement as the doing without consent of the owner of the copyright of "anything the sole right to do which is by this act conferred on the owner of the copyright," but specifically excepts (1) fair dealing for private study, research, criticism, review or newspaper summary; (2) use by an artist of sketches, etc., made for a work of which he has sold the copyright, provided he does not repeat or imitate that work; (3) graphic reproduction of objects, or photographing of paintings, etc., in a public place; (4) limited extracts for use in school books; (5) report of lectures unless prohibited by placard; (6) reading or recitation of reasonable extracts.

XV

REMEDIES AND PROCEDURE

{Sidenote: Protection and procedure}

It was for the protection of copyrights that the statute of Anne was pa.s.sed and that statutory law thus began to replace English common law--a gain to authors sadly offset by its losses. But it was undoubtedly true that without statutory provision the proprietor of literary and similar property could not obtain the protection necessary for the enforcement of his rights. The new American code is comprehensive, detailed and specific in its legal provisions for protection and procedure, and in respect to punishment far beyond any copyright legislation on the statute books of any other nation.

{Sidenote: Injunction}

The first protection given by the statute is the injunction usual in equity proceedings, following the precedent of early legislation.

{Sidenote: Damages}

Under previous American law, damages were levied primarily on infringing copies found in possession of the infringer or his agents, with the unfortunate result that when an infringer was successful in selling his edition, few, if any, copies were found on which to levy damages. The new code thoroughly corrects this defect by providing for specified damages on infringing copies "made or sold by or found in the possession of the infringer or his agents or employees." The plaintiff is ent.i.tled to damages and all profits and is required only to prove sales, while the defendant is required to prove the elements of cost. The damages--a.s.sessed as such and not as penalties so as to free copyright litigation from the restrictions of penal proceedings--are stated as one dollar for each infringing copy, except copies of a painting, statue or sculpture on which they are ten dollars per copy; fifty dollars for each infringing delivery of an oral work; one hundred dollars for the first and fifty dollars for each subsequent infringing performance of a dramatic, dramatico-musical, choral or orchestral work; and ten dollars for each infringing performance of any other musical work. These damages shall not be less than $250 or more than $5000 in any one case, with the exception that for a newspaper reproduction of a photograph the minimum shall be fifty dollars and the maximum two hundred dollars, a concession insisted upon by newspaper proprietors.

{Sidenote: One suit sufficing}

Injunction, damages and profits, and delivery of infringing copies or means of production, are covered in the single suit to protect the copyright.

{Sidenote: Deposit of infringing articles}

During the pendency of an action the defendant may be required to deposit all articles alleged to infringe copyright, making oath that he has deposited all such, under regulations for his protection prescribed, as the law directs, by the Supreme Court, which regulations are given in full in the appendix of this volume; and when such articles are adjudged to be infringements, he must deliver up for destruction not only such infringing copies or devices, but also all plates, molds, matrices or other means for making such infringing copies as the court may order, making oath that he has delivered up all such.

The text covering these provisions, with the exception of subsection (e), referring to mechanical musical reproductions, given in the chapter on that subject, is as follows:

"(Sec. 25.) That if any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable:

{Sidenote: Remedies specified}

"(a) To an injunction restraining such infringement;

"(b) To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or in lieu of actual damages and profits such damages as to the court shall appear to be just, and in a.s.sessing such damages the court may, in its discretion, allow the amounts as hereinafter stated, but in the case of a newspaper reproduction of a copyrighted photograph such damages shall not exceed the sum of two hundred dollars nor be less than the sum of fifty dollars, and such damages shall in no other case exceed the sum of five thousand dollars nor be less than the sum of two hundred and fifty dollars, and shall not be regarded as a penalty:

"First. In the case of a painting, statue, or sculpture, ten dollars for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees;

"Second. In the case of any work enumerated in section five of this Act, except a painting, statue, or sculpture, one dollar for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees;

"Third. In the case of a lecture, sermon, or address, fifty dollars for every infringing delivery;

"Fourth. In the case of dramatic or dramatico-musical or a choral or orchestral composition, one hundred dollars for the first and fifty dollars for every subsequent infringing performance; in the case of other musical compositions, ten dollars for every infringing performance;

{Sidenote: Impounding}

"(c) To deliver up on oath, to be impounded during the pendency of the action, upon such terms and conditions as the court may prescribe, all articles alleged to infringe a copyright;

"(d) To deliver up on oath for destruction all the infringing copies or devices, as well as all plates, molds, matrices, or other means for making such infringing copies as the court may order;

{Sidenote: Supreme Court rules}

"Rules and regulations for practice and procedure under this section shall be prescribed by the Supreme Court of the United States," for which see appendix.

{Sidenote: Court jurisdiction}

The Circuit Court, or District or other courts having circuit jurisdiction, of the United States, have original jurisdiction "of all suits at law or in equity arising under the patent or copyright laws of the United States" with appeal or writ of error to the Supreme Court of the United States. Copyright cases are brought in the first instance before a single judge sitting in Circuit Court or District Court, and thence are appealed to the Circuit Court of Appeals consisting of three or more circuit judges, and thence again to the United States Supreme Court, the final authority. These federal courts have sole jurisdiction under the copyright law as such; but copyright cases are often adjudicated in State courts on questions arising under the law of contracts or other statute or common law, regard being always given to the decisions of the federal courts as to copyright questions proper which may be involved. In other words, the State courts do not pa.s.s upon copyright law, but may apply, within the respective states, the copyright decisions of federal courts. Thus in Hoyt _v._ Bates, in 1897, Judge Putnam in the U. S. Circuit Court in Ma.s.sachusetts remanded the case back to the State courts because the question was not under the copyright law as such, but regarding the owners.h.i.+p of copyright property. In this case the author of a play "A black sheep," containing a song "Sweet Daisy Stokes," licensed the defendant to print the song.

The defendant copyrighted the song and the plaintiff sued to compel him to a.s.sign his copyright. The case ill.u.s.trates the respective jurisdictions of federal and State courts in copyright matters.

{Sidenote: Limitation}

The United States courts have authority to enter the decrees necessary to enforce the remedies provided by the law. Important provisions of the new code provide that civil action in copyright cases may be brought "in the district of which the defendant or his agent is an inhabitant or in which he may be found"--thus preventing avoidance by the defendant possible under earlier law; and also that any injunction granted in any one district may be operative throughout the United States--a provision adopted into the law from recent legislation intended to prevent the evasion of injunctions, particularly by "fly by night" dramatic companies pa.s.sing from one state or court jurisdiction into another, but usefully applicable also throughout the whole range of copyright infringements. Criminal proceedings under the copyright act may not be brought after three years from the commission of the offense.

Under the former laws the District courts also had certain--or uncertain--jurisdiction. The distinction between the District courts and the Circuit courts of the United States, both of which are courts of first instance, has been so complicated and uncertain as to be practically impossible of statement--a situation which has led to a measure for the abolition of the distinction and the provision of a single court in each federal district having original jurisdiction in the first instance, from which appeal will go to the Circuit Court of Appeals and thence to the U. S. Supreme Court, or in certain cases direct to the Supreme Court.