U.S. Supreme Court
Stephens v. Cady
55 U.S. 528
1853
Mr. Justice NELSON delivered the opinion
of the court.
This is an appeal from the Circuit Court
of the United States for the District of Rhode Island.
The bill was filed by the appellant in
the court below, to restrain the defendant from printing and publishing a map
of the State of Rhode Island and Providence Plantations, in violation of the
complainant's copy-right.
The facts are briefly these: The
complainant, on the 23d of April, 1831, took out the copy-right of a map, the
title of which is as follows: "A Topographical Map of the State of Rhode
Island and Providence Plantations, surveyed trigonometrically and in detail, by
James Stephens, topographer and civil engineer, Newport, R.I., 1831, the right
whereof he claims as author, in conformity with the act of Congress, entitled
an act to amend the several acts respecting copy rights," and since then
has been engaged in printing, publishing, and vending the said maps, by virtue
of the copy-right thus obtained. In March, 1846, a judgment was recovered
against him, in the Common Pleas of Bristol county, Massachusetts, for $194.23,
upon which an execution was issued, and the copperplate engraving of the map in
question seized, and sold, and bid off by the defendant for the sum of $245, he
being the highest bidder. Having thus become entitled to the property in the
engraving, he claimed the right to print and publish the maps, and in pursuance
of this supposed right, he has been engaged in printing, publishing and vending
the same.
On the hearing upon the bill, answer,
and proofs, the court below differed in opinion, as to the effect of the sale
of the copperplate engraving of the map; but agreed that no injunction could
issue without a repayment of the purchase-money, which was refused by the
complainant; whereupon the court dismissed the bill with costs.
The single question in the case is,
whether or not the property acquired by the defendant in the copperplate, at
the sheriff's sale, carried with it, as an incident, the right to print and
publish the map engraved upon its face.
Upon this question the court below
divided in opinion, but finally agreed in dismissing the bill.
The appellee has not followed the case
into this court, and we have not, therefore, been favored with the grounds and
reasons relied on for sustaining the decree; nor have we been furnished with
the reasons of the court for the same. The ground upon which the decision was
ultimately placed, namely, the refusal of the complainant to refund the
purchase-money, is certainly not satisfactory; for if the copy-right of the
map, or any right to print or publish the same, passed with the purchase of the
plate, as incidental, as there is nothing in the facts of the case to
invalidate the sale, the title became complete in the purchaser, and could not
be rightfully interfered with. But if otherwise, then there was no ground for
imposing the repayment of the purchase-money, as a condition to the relief
prayed for; the injunction should have been awarded, and the defendant directed
to account.
But from the consideration we have given
to the case, we are satisfied that the property acquired by the sale in the
engraved plate, and the copy-right of the map secured to the author under the
act of Congress, are altogether different and independent of each other, and
have no necessary connection. The copy-right is an exclusive right to the
multiplication of the copies, for the benefit of the author of his assigns,
disconnected from the plate, or any other physical existence. It is an
incorporeal right to print and publish the map, or, as said by Lord Mansfield
in Millar v. Taylor (4 Burr. 2396,) "a property in notion, and has no
corporeal tangible substance."
The engraved plate and the press are the
mechanical instruments, or means by which the copies are multiplied, as the
types and press are the instruments by which the copies of a book are produced.
And to say that the right to print and publish the copies, adheres to and
passes with the means by which they are produced, would be saying, in effect,
that the exclusive right to make any given work of art necessarily belonged to
the person who happened to become the owner of the tools with which it was
made; and that if the defendant in this case had purchased the stereotyped plates
of a book, instead of the engraved plate, he would have been entitled to the
copy-right of the work, or at least, to the right to print, publish, and vend
it; and yet, we suppose that the statement of any such pretension is so
extravagant as to require no argument to refute it. Even the transfer of the
manuscript of a book will not, at common law, carry with it a right to print
and publish the work, without the express consent of the author, as the
property in the manuscript, and the right to multiply the copies, are two
separate and distinct interests. 4 Burr. 2330, 2396; 2 Eden, R. 329; 2 Atkyns,
R. 342; 2 Story, R. 100.
Lord Mansfield observed, in Millar v.
Taylor, that "no disposition, no transfer of paper upon which the
composition is written, marked, or impressed, (though it gives the power to
print and publish,) can be construed a conveyance of the copy, (by which he
means copy-right, as appears from a previous part of his opinion,) without the
author's express consent `to print and publish,' much less against his
will."
Now, it seems to us, that the transfer
of the manuscript of a book by the author would, of itself, furnish a much
stronger argument for the inference of a conveyance of the right to multiply
copies, than exists in the case of a transfer of the plate in question, or of
the stereotype plates, as the ideas and sentiments, or in other words, the
composition and substance of the work, is thereby transferred. But the property
in the copy-right is regarded as a different and distinct right, wholly
detached from the manuscript, or any other physical existence, and will not
pass with the manuscript unless included by express words in the transfer.
The copperplate engraving, like any
other tangible personal property, is the subject of seizure and sale, on
execution, and the title passes to the purchaser, the same as if made at a
private sale. But the incorporeal right, secured by the statute to the author,
to multiply copies of the map, by the use of the plate, being intangible, and
resting altogether in grant, is not the subject of seizure or sale by means of
this process — certainly not at common law. No doubt the property may be
reached by a creditor's bill, and be applied to the payment of the debts of the
author, the same as stock of the debtor is reached and applied, the court
compelling a transfer and sale of the stock for the benefit of the creditors.
20 J.R. 554; 5 J. Ch. 280; S.C. 4 Id. 687; 1 Paige, 637. But in case of such
remedy, we suppose, it would be necessary for the court to compel a transfer to
the purchaser, in conformity with the requirements of the copy-right act, in
order to invest him with a complete title to the property. The first section of
that act provides, that the author of any map, chart, &c., his executors,
administrators, or legal assigns, shall have the sole right of printing,
publishing, and vending the same, during the period for which the copy-right
has been secured. And the seventh section forbids any person from printing,
publishing, or selling the map or chart, under heavy penalties, without the
consent of the proprietor of the copy-right, first obtained in writing, signed
in the presence of two credible witnesses. Act of Congress, Feb. 3, 1831.
An assignment, therefore, that would
vest the assignee with the property of the copy-right, according to the act of
Congress, must be in writing, and signed in the presence of two witnesses, and
it may, I think, well be doubted whether a transfer even by a sale, under a
decree of a court of chancery, would pass the title so as to protect the
purchaser, unless by a conveyance, in conformity with this requirement. 6 B.
& Cr. 169; 1 Car. & P. 558; R. & M. 187; D. & K. 215.
It is unnecessary, however, to express
an opinion upon the point. It is sufficient, for the purposes of this case, to
say, that the right in question is wholly independent of, and disconnected
from, the engraved plate; and, that there is no foundation for the defence set
up, that it passed as appurtenant to the sale and transfer of the property, in
the engraved plate, from which the copies of the map were struck off.
For these reasons, we are of opinion
that the decree below, must be reversed with costs, and the proceedings
remitted, with directions that a decree be entered for the complainant, in
conformity with this opinion.
Order.
This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Rhode Island, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, reversed, with costs, and that this cause be, and the same is hereby, remanded to the said Circuit Court, with directions to enter a decree therein, in conformity to the opinion of this court.