U.S. Supreme Court
Callaghan v. Myers
128 U.S. 617
1888
MR. JUSTICE BLATCHFORD, after stating
the case, delivered the opinion of the court.
The volumes of law reports of which the
plaintiff claims a copyright are in the usual form of such works. Each volume
consists of a title-page, of a statement of the entry of copyright, of a list
of the judges composing the court, of a table of the cases reported in the
volume, in alphabetical order, of a head-note or syllabus to each opinion, with
the names of the respective counsel, and their arguments in some cases, and a
statement of facts, sometimes embodied in the opinion and sometimes preceding
it, and of an index, arranged alphabetically, and consisting substantially of a
reproduction of the head-notes. Of this matter, all but the opinions of the
court and what is contained in those opinions is the work of the reporter and
the result of intellectual labor on his part.
The broad proposition is contended for
by the defendants, that these law reports are public property, and are not
susceptible of private ownership, and cannot be the subject of copyright under
the legislation of Congress. It is urged that Mr. Freeman, the reporter, was a
public officer, whose office was created by chapter 29 of the Revised Statutes
of Illinois of 1845, which enacted as follows, in regard to the Supreme Court
and the reporter:
"SEC. 20. The court shall appoint
some person learned in the law to minute down and make report of all the
principal matters, drawn out at length, with the opinion of the court, in all
such cases as may be tried before the said court; and the said reporter shall
have a right to use the original written opinion after it shall have been
recorded by the clerk.
"SEC. 21. The reporter, before
entering upon his duties, shall be sworn by some one of the justices of the
Supreme Court faithfully to perform the duties of his said office. He may, for
misconduct in office, neglect of duty, incompetency, or other cause shown, to
be entered of record, be removed from office.
"SEC. 22. It shall be the duty of
the reporter to deliver to the Secretary of State, as soon as convenient after
publication, such number of copies of the respective volumes of the reports of
said court as may be necessary to enable the said secretary to distribute the
same in the manner provided in the following section, together with one hundred
copies in addition, to be deposited in the secretary's office for the use of
the State."
Section 23 provided for the distribution
of the volumes by the Secretary of State, and § 24 provided, that, upon the
delivery of the requisite number of any volume, the Secretary of State should
deliver to the reporter a certificate specifying the number of copies which had
been so delivered, and that such certificate should entitle the reporter to a
warrant drawn by the auditor of public accounts upon the treasury for an
amount, for those volumes, at the price for which the books should be sold to
individuals, provided the price should not exceed the ordinary price of law
books of the same description, to be determined by the auditor, treasurer and
Secretary of State. These statutory provisions were amended in 1863, by making
the term of office of the reporter six years, and in 1865 it was enacted that
the price of the volumes to be delivered to the Secretary of State should be $6
each. The reporter was given a salary, by law, in 1877, of $6000 a year.
It is further contended, that Mr.
Freeman, in preparing the official edition of the reports, was not an author,
within the meaning of the act of Congress, and that it was not intended by that
act that he should assert a monopoly in the result of his official labors.
But, although there can be no copyright
in the opinions of the judges, or in the work done by them in their official
capacity as judges, Banks v. Manchester, ante, 244, yet there is no ground of
public policy on which a reporter who prepares a volume of law reports, of the
character of those in this case, can, in the absence of a prohibitory statute,
be debarred from obtaining a copyright for the volume, which will cover the
matter which is the result of his intellectual labor.
In the present case there was no
legislation of the State of Illinois which forbade the obtaining of such a
copyright by Mr. Freeman, or which directed that the proprietary right which
would exist in him should pass to the State of Illinois, or that the copyright
should be taken out for or in the name of the State, as the assignee of such
proprietary right. Even though a reporter may be a sworn public officer,
appointed by the authority of the government which creates the court of which
he is made the reporter, and even though he may be paid a fixed salary for his
labors, yet, in the absence of any inhibition forbidding him to take a
copyright for that which is the lawful subject of copyright in him, or
reserving a copyright to the government as the assignee of his work, he is not
deprived of the privilege of taking out a copyright, which would otherwise
exist. There is, in such case, a tacit assent by the government to his exercising
such privilege. The universal practical construction has been that such right
exists, unless it is affirmatively forbidden or taken away; and the right has
been exercised by numerous reporters, officially appointed, made sworn public
officers, and paid a salary under the governments both of States and of the
United States.
This question was, it is true, not
directly adjudged in Wheaton v. Peters, 8 Pet. 591. In that case the owners of
the copyrights of Wheaton's Reports of the Supreme Court of the United States
brought a suit in equity against Mr. Peters for publishing and selling a volume
of his Condensed Reports of the Supreme Court. The bill was dismissed by the
Circuit Court. On an appeal by the plaintiffs to this court one of the points urged
by the defendants was, that reports of the decisions of this court, published
by a reporter appointed under the authority of an act of Congress, were not
within the provisions of the law for the protection of copyrights. This court
held (1) that the plaintiffs could assert no common law right to the exclusive
privilege of publishing, but must sustain such right, if at all, under the
legislation of Congress; (2) that under such legislation there must have been,
in order to secure the copyright, a compliance with the provisions of the
statute in regard to the publication in a newspaper of a copy of the record of
the title of the book, and in regard to the delivery of a copy of it, after
publication, to the Secretary of State. The court remanded the case to the
Circuit Court for a trial by a jury, as to whether there had been a compliance
with the above-named requisites of the act of Congress. In a note by Mr.
Peters, at page 618 of the report of the case, he states that he has been
informed that the court did not consider the point whether reports of the
decisions of the court, published by a reporter appointed under the authority
of an act of Congress, were within the provisions of the law for the protection
of copyrights.
When the suit was brought, Mr. Wheaton
had published the twelve volumes of his copyrighted reports. The allegation of
the bill was, that the volume complained of, published by Mr. Peters, contained
all the reports of cases found in the first volume of Wheaton's Reports. It
appears from the report of the case, and the record in it, that Mr. Wheaton had
published his first volume in 1816, and his twelfth volume in 1827. From March
3d, 1817, for three years, the reporter had a salary of $1000 a year, and the
same salary from May 15th, 1820, to March 3d, 1826, and for three years from
February 22d, 1827. The decree of this court, providing for a trial by a jury,
(p. 698,) covered the entire twelve volumes of Wheaton's Reports.
If this court had been of opinion that
there could not have been a lawful copyright in the volumes of Wheaton's
Reports, it would have been useless to send the case back to the Circuit Court
for an inquiry whether the conditions precedent to the obtaining of a lawful
copyright, under the act of Congress, had been complied with, especially in
view of the fact that the opinion of the court concludes (p. 668) with this
statement: "It may be proper to remark that the court are unanimously of
opinion that no reporter has or can have any copyright in the written opinions
delivered by this court; and that the judges thereof cannot confer on any
reporter any such right." Therefore, the only matter in Wheaton's Reports
which could have been the subject of the copyrights in regard to which the jury
trial was directed, was the matter not embracing the written opinions of the
court, namely, the title-page, table of cases, head-notes, statements of facts,
arguments of counsel, and index. Such work of the reporter, which may be the
lawful subject of copyright, comprehends also the order of arrangement of the
cases, the division of the reports into volumes, the numbering and paging of
the volumes, the table of the cases cited in the opinions, (where such table is
made,) and the subdivision of the index into appropriate, condensed titles,
involving the distribution of the subjects of the various head-notes, and
cross-references, where such exist. A publication of the mere opinions of the
court, in a volume, without more, would be comparatively valueless to any one.
The case of Wheaton v. Peters was
decided at January term, 1834. In Gray v. Russell, 1 Story, 11, in 1839, Mr.
Justice Story, in speaking of the question as to how far a person was at
liberty to extract the substance of copyrighted law reports, says, p. 20:
"In the case of Wheaton v. Peters, 8 Peters' R. 591, the same subject was
considered very much at large. It was not doubted by the court that Mr. Peters'
Condensed Reports would have been an infringement of Mr. Wheaton's copyright,
supposing that copyright properly secured under the act, if the opinions of the
court had been or could be the proper subject of the private copyright by Mr.
Wheaton. But it was held, that the opinions of the court, being published under
the authority of Congress, were not the proper subject of private copyright.
But it was as little doubted by the court, that Mr. Wheaton had a copyright in
his own marginal notes, and in the arguments of counsel as prepared and
arranged in his work. The cause went back to the Circuit Court for the purpose
of further inquiries as to the fact, whether the requisites of the act of
Congress had been complied with, or not, by Mr. Wheaton. This would have been
wholly useless and nugatory, unless Mr. Wheaton's marginal notes and abstracts
of arguments could have been the subject of a copyright; (for that was the work
which could be the subject of a copyright;) so that if Mr. Peters had violated
that right, Mr. Wheaton was entitled to redress." This seems to us to be a
proper view of the decision in Wheaton v. Peters; and that decision is as
applicable where a reporter receives a compensation or salary from the
government, as where he does not, in the absence of any restriction against his
obtaining a copyright.
In the present case, although Mr.
Freeman, during the period of his preparation of volumes 32 to 46, received no
direct salary from the State, it is contended by the defendants that he
received from the State compensation for his services, through the purchase by
it, under a statute, of copies of his volume at a stated price of $6 per copy
for 553 copies of each volume, and that this was substantially the payment of a
salary to him by the State. But, as stated before, in the view we take of the
case, the question of a salary or no salary has no bearing upon the subject.
The general proposition that the
reporter of a volume of law reports can obtain a copyright for it as an author,
and that such copyright will cover the parts of the book of which he is the
author, although he has no exclusive right in the judicial opinions published,
is supported by authority. Curtis on Copyright, 131, 132; Butterworth v.
Robinson, 5 Ves. 709; Cary v. Longman, 1 East, 358, and note, 362; Mawman v.
Tegg, 2 Russell, 385, 398, 399; Hodges v. Welsh, 2 Irish Eq. 266, 287; Lewis v.
Fullarton, 2 Beavan, 6; Saunders v. Smith, 3 Mylne & Cr. 711; Sweet v.
Benning, 16 C.B. 491; Jarrold v. Houlston, 3 Kay & Johns. 708, 719, 720.
It is further contended by the defendants,
that the plaintiff is not entitled to relief in respect to volumes 32 to 46,
because he did not comply with the conditions of the statute concerning
copyrights. Those volumes were all of them published while the act of Congress
of February 3, 1831, c. 16, 4 Stat. 436, was in force. The 4th section of that
act provided that no person should be entitled to the benefit of the act,
unless he should, before publication, deposit a printed copy of the title of
the book intended to be copyrighted in the clerk's office of the District Court
of the district wherein the author or proprietor should reside. The section
also required, that the clerk should record such title forthwith, in a book, in
words prescribed in the section, giving a copy of the title, under the seal of
the court, to the author or proprietor, whenever he should require the same. It
also provided, that the author or proprietor should, within three months from
the publication of the book, deliver or cause to be delivered a copy of the
same to the clerk of the District Court, and that it should be the duty of the
clerk, at least once in every year, to transmit a certified list of all such
records of copyright, including the titles so recorded, and the dates of
record, and also all the copies of books deposited in his office, to the
Secretary of State, to be deposited in his office.
Although, under § 6 of the same act, the
exclusive right to the copyright vests upon the recording of the title of the
book, and runs for the prescribed period from that date, and although the right
of action for infringement, under § 6, also accrues at that time, yet it is
quite clear, that, under § 4, in respect at least to suits brought after three
months from the publication of the book, it must be shown, as a condition
precedent to the right to maintain the suit, that a copy of the book was
delivered to the clerk of the District Court within three months from the
publication.
Section 5 of the same act provides, that
no person shall be entitled to the benefit of the act, unless he shall give
information of copyright being secured, by causing to be inserted in the
published copies, on the title-page of the book or the page immediately
following, the words: "Entered according to act of Congress, in the year
____, by A.B., in the clerk's office of the District Court of ____."
Undoubtedly, the three conditions
prescribed by the statute, namely, the deposit before publication of the
printed copy of the title of the book, the giving of information of the
copyright by the insertion of the notice on the title-page or the next page,
and the depositing of a copy of the book within three months after the
publication, are conditions precedent to the perfection of the copyright.
Wheaton v. Peters, 8 Pet. 591; Merrell v. Tice, 104 U.S. 557.
It is contended by the defendants that
the plaintiff has not proved the date of the publication of any of the volumes
in question; that the only proof he has offered is in the form of certificates
by the clerk of the District Court, showing the dates of the filing of the
printed titles of the volumes; and that he has failed to show whether such
filing preceded or followed the publication of the volumes.
The record shows that the plaintiff, in
respect of volumes 32 to 46, offered in evidence fifteen certificates made by
William H. Bradley, clerk of the District Court of the United States for the
Northern District of Illinois, each of which was in the following form, except
as to the number of the volume, and its contents, and except that, as to
volumes 39 to 43, the name "Eugene B. Myers," and as to volumes 44 to
46, the name "E.B. Myers," was substituted for the names "E.B.
Myers & Chandler:"
"UNITED STATES OF AMERICA, | >
ss: "Northern District of Illinois, | "CLERK'S OFFICE OF THE DISTRICT
COURT OF THE "UNITED STATES FOR SAID DISTRICT.
"Be it remembered, that on the 12th
day of August, A.D. 1865, E.B. Myers & Chandler, of said district,
deposited in this office the title of a book as follows, to wit: Reports of
cases at law and in chancery argued and determined in the Supreme Court of
Illinois, by Norman L. Freeman, counsellor-at-law, volume 32, containing the
remainder of the cases decided at the April term, and a part of the cases
decided at the November term, 1863 —
"The right whereof they claim as
proprietors, in conformity with an act of Congress entitled `An act to amend
the several acts respecting copyrights.'
"WM. H. BRADLEY, Clerk.
"NORTHERN DISTRICT OF ILLINOIS, ss:
"I, William H. Bradley, clerk of
the District Court of the United States for the Northern District of Illinois,
do hereby certify the foregoing to be a true copy from the records of said
court in the matter of the entry of a copyright by E.B. Myers & Chandler,
as the same appears of record in said court and now remaining in my custody.
"In testimony whereof I have
hereunto set my hand and affixed the seal of said court, at my office, in
Chicago, this 12th day of August, A.D. 1865, and of our Independence the 90th
year.
"[L.S.] "WM. H. BRADLEY,
Clerk. "Work deposited Jan'y 17th, 1866. "WM. H. BRADLEY, Cl'k."
The certificates show that the dates of
the several deposits of the titles and of the works were as hereinbefore
stated. The certificate to the copy of the title bears date in each case the
same day as the deposit of the title. In each case, the memorandum of the
deposit of the work was in the same form as that in regard to volume 32, with
the necessary change of date, except that in regard to volumes 35, 36, 42, 43,
and 44, the memorandum was, "Work deposited in my office," with the date.
When the certificates were offered in
evidence, the defendants objected to the introduction of that portion of each
of the papers, at the bottom thereof, which purported to show the date when the
volume was deposited, on the ground that the same constituted no part of the
certificate, but was a mere anonymous statement; that it did not appear when or
by whom the same was made; and that the evidence was incompetent to show the
date of the deposit. The objection was overruled by the court, and the
defendants excepted.
They also objected to the introduction
of the paper pertaining to volume 34, on the ground that, even if the
memorandum at the bottom of the paper was competent evidence of the date when
the volume was deposited, the deposit was made at the same time with the
deposit of the printed title-page, namely, October 23, 1866; that it did not
appear that the title-page was filed in advance of the publication and the work
deposited after publication; and that the paper was, therefore, incompetent as
evidence. The objection was overruled by the court, and the defendants excepted
to such ruling.
The defendants also objected to the
introduction of the paper as to volume 35, for the reason that it purported to
show that the title of the volume was deposited on the 28th of January, 1867,
while the printed notice on the back of the title-page of that volume stated
that the copyright was entered "in the year 1866;" and that, because
of such variance, the paper was incompetent as evidence. The objection was
overruled by the court, and the defendants excepted to the ruling.
These various objections are now urged
by the defendants, and it is contended that the memorandum of the date of the
deposit of the work, written on the certificate, and purporting to be signed by
the clerk, is not in the form of a certificate by the clerk of the fact and the
date of the deposit of the book, and is not competent proof of such fact or
date, and is not attested by the official seal of the clerk; and that no proof
was offered as to the genuineness of the signature purporting to be that of the
clerk.
The statute makes no provision for the
keeping by the clerk of a record of the deposit of the book with him after
publication. The memorandum of the deposit of the book, signed in each case by
the clerk, appears to have been written, in each case, on the certified copy,
furnished to the proprietor, by the clerk, of the record of the deposit of the
title of the book. The two things were thus connected together by the act of the
officer whose duty it was to receive both the deposit of the title and the
deposit of the book. The paper amounts to a sufficient certificate by him of
the fact and the date of the deposit of the book. In the absence of evidence to
the contrary, which it was open to the defendants to introduce, it must be
presumed that the deposit of the title was made in each case before
publication, and, also, that in every instance where the work purports to have
been deposited within three months after the date of the deposit of the title,
it was deposited within three months after publication.
So, also, in the case of volume 34, it
must be equally presumed, in the absence of evidence to the contrary, that the
deposit of the title was made before publication, and that the deposit of the
work, though made on the same day with the deposit of the title, was not made
prior to publication.
In the case of volume 32, however,
although it is to be presumed that the title was deposited before publication,
yet, as the work was deposited five months and five days after the deposit of
the title, it cannot be presumed that such deposit of the work was made within
three months after publication. The evidence therefore fails as to volume 32;
but it is sufficient, prima facie, as to all the other volumes.
Section 4 of the act of 1831 requires
the clerk to give a copy of the title as deposited and recorded, under the seal
of the court, to the author or proprietor who deposits it whenever he shall
require the same. Necessarily, such copy is sufficient prima facie evidence of
the deposit of the title. Such a copy was given in regard to each of the
volumes in question here. On each of these papers the memorandum of the fact
and of the date of the deposit of the work, signed by the clerk, was written.
The clerk was the officer required to receive the deposit of the work. He was
not required to keep a record of such deposit; and he was required to transmit
the works so deposited to the Secretary of State, at least once a year. The memorandum
in the present case of the fact and date of the deposit, purporting to be
signed by the clerk, must be regarded as a sufficient prima facie certificate
of such deposit, and as competent evidence of the fact and of the date, without
further proof of the signature of the clerk, that being on the same paper with
his signature as clerk to the certificate of the copy of the record of the
deposit of the title, and it being open to the defendants to show that his
signature to the memorandum was not genuine.
We do not think the present case is
governed by the decision in Merrell v. Tice, 104 U.S. 557. In that case the
librarian of Congress had given a certificate to a copy of the record of the
deposit of the title of the book. On that paper was written a memorandum in
these words: "Two copies of the above publication deposited" on a
date given. This memorandum was not signed by the librarian of Congress. This
court held the memorandum not to be competent as proof of the deposit of the two
copies of the book, on the ground that it was not a certificate of that fact.
We are of opinion that the memorandum in the present case, purporting to be
signed by the same clerk, is substantially a certificate of the fact and date
of the deposit of the work, written by him on the same paper with the other
certificate; and that it is not open to the objection which obtained in the
case of Merrell v. Tice.
The defendants offered in evidence
certificates made by the auditor of public accounts and by the Secretary of State
of the State of Illinois, showing that, on the 2d of October, 1865, Mr. Freeman
delivered to the Secretary of State, for the use of the State, 553 copies of
volume 32, required by law to be furnished by the reporter, and, on the 23d of
October, 1866, 553 copies of volume 34. The introduction of this evidence was
objected to by the plaintiff, on the ground that the papers constituted no
evidence of the publication of either of the volumes, and were incompetent. The
objection was sustained by the court, and the defendants excepted to the
ruling. The exclusion of these papers is assigned as error. The papers also
show the payment by the State, for each set of the copies, at the rate of $6
per volume. As the delivery of the copies of volume 32 to the Secretary of
State, for the use of the State, took place on the 2d of October, 1865, and the
work was not deposited in the clerk's office until the 17th of January, 1866,
it is contended that such delivery of the copies to the State was a publication
of the volume, and that the deposit of it did not take place until three months
and fifteen days after publication. We think this assignment of error must
prevail; that the evidence offered was competent; that the delivery of the
copies for the use of the State was a publication of the volume; that the
deposit of the work was not made in time; and that the copyright of volume 32
therefore fails. But we do not think the same objection is tenable as to volume
34, although the 553 copies of that volume were delivered on October 23, 1866,
and the title and the work were both of them deposited on that day. It must be
presumed, in the absence of evidence to the contrary, that the deposit of the
title preceded the publication, and that the delivery of the copies to the
Secretary of State preceded the deposit of the work in the clerk's office.
Where the three things are prescribed by the statute to be done in consecutive
order, and all three appear to have been done on the same day, it will be
presumed that the statute was complied with, leaving the prima facie evidence
open to be rebutted.
In regard to volume 35, the title was
deposited January 28, 1867, and the notice printed in the volume purports to
show that the copyright was entered in 1866. The statute required that each
copy of the book should have inserted in it a statement of the year the
copyright was entered. It is sufficient to say, in answer to this objection,
that the variance must be regarded as immaterial, inasmuch as the statement
that the title was recorded in an earlier year than the actual year, being
conclusive on the person taking the copyright, could cause no injury to any
other person or to the public, because the copyright would expire in
twenty-eight years from the expiration of the year stated in the notice in the
book, and not in twenty-eight years from the time of the recording of the
title.
In regard to volume 36, it is objected
that the certificate of the clerk shows that the printed title was deposited by
"E.B. Myers & Chandler," and that the printed notice of the entry
of copyright in the volume as published purports to show that the copyright was
entered by E.B. Myers alone. We think that, under the circumstances of the
case, as the printed notice contained the name of E.B. Myers, the variance was
immaterial, and that the statute was substantially complied with, particularly
as it is not shown that the defendants were misled by the variance or induced
to do or omit anything because of it.
It is also urged by the defendants that
the court erred in finding the title to the volumes to be in the plaintiff,
because he failed to prove any written assignment or transfer to him from Mr.
Freeman as to any of the volumes, or from Chandler as to his alleged interest
in volumes 32 to 38, or to prove any means through which he derived title to
any of the volumes. By section 4 of the act of 1831 the proprietor of a book,
as well as its author, could obtain a copyright, and provision was made, in the
form of record given in that section, for a claim by the depositor of the title
of the book as its proprietor, and for the deposit of the copy of the book by
the proprietor. While, after the obtaining of a copyright, a written assignment
may be necessary to convey title to it, or a written license to give a right to
reproduce copies of the copyrighted book, we perceive no reason why Myers or
Myers & Chandler could not become the owners by parol transfer of whatever
right Mr. Freeman, prior to the taking of the copyright, had to convey. While
the work was in manuscript no written transfer of such manuscript from Mr.
Freeman was necessary, because the copyright had not yet been taken. Moreover,
the defendants, in all their transactions with the plaintiff, recognized his
title to the copyrights of volumes 32 to 38, as to which the titles had been
deposited by E.B. Myers & Chandler, and parol evidence that the plaintiff
owned the copyrights of volumes 32 to 46, at the time the infringements were
committed, was introduced without objection, and was sufficient prima facie
evidence until rebutted. If the defendants had objected to this parol evidence
the production of the written assignment from Chandler, set up in the bill,
could have been required.
It is also objected that the plaintiff
acquiesced in, consented to, and ratified the publication of the volumes by the
defendants, and was guilty of laches in bringing his suit. The evidence on this
subject is voluminous, and it would not be profitable, either for the purposes
of this case or as a guide for any other case, to discuss it at length. We are
of opinion that neither of these defences is established; that the plaintiff
did not consent to the republication of the volumes by the defendants; that he
never abandoned his copyrights, or consented to surrender them without
consideration, or gave the defendants cause to understand that he did so or
would do so; that he never acquiesced in any infringement of his copyrights by
the defendants; and that he was not guilty of laches in seeking relief. The
defendants recognized his copyrights in volumes 32 to 38, by offering to
purchase them, and there was considerable negotiation on that subject. This
fact is inconsistent with consent and abandonment, and the other evidence in
the case is inconsistent with any abandonment.
It is also contended by the defendants,
that each of the volumes as published by them was a new and independent work,
not copied from that of the plaintiff, but prepared by the original labor of
the editors employed by the defendants. While it is admitted that volumes 32 to
38, as published by the defendants, were, with the exception of the foot-notes,
prepared entirely from the plaintiff's volumes, it is contended that volumes 39
and 41 to 46 were, with the exceptions of the opinions of the judges, prepared
from the records and files of the Supreme Court of Illinois. The evidence on
the subject of infringement is very full and minute. It is impossible for us to
discuss it at length, and we must content ourselves with stating, as a general
result, that we concur in the views stated by Judge Drummond, in his decision
in the Circuit Court, in regard to volumes 32 to 38. He says, (10 Bissell, 139,
147:) "In considering the question of infringement of the copyright by the
defendants, it must be borne in mind what is the character of the work. They
are reports of the decisions of the Supreme Court of this State, to which no
one can have a copyright; but he may have to the head-notes and statements of
each case, and of the arguments of counsel. These head-notes and statements
which have been made are in themselves an abridgment; the one of the opinions
of the court, consisting of the principles of law decided, and the other an
abstract of the facts and of the arguments. It should also be stated that the
volumes of the defendants, as edited by those employed by them, are very much
condensed, as compared with Mr. Freeman's reports, and yet the paging of the
volumes is substantially the same throughout, so that the cases in the
corresponding volumes appear on the same page. The list of cases which precedes
each report is the same. The defendants Ewell and Denslow, who were employed by
the other defendants to annotate these decisions or reports, both state, upon examination,
that their work was independent of that of Mr. Freeman; but it appears from the
evidence that all the volumes of Mr. Freeman were used in thus editing or
annotating; and although it may have been their intention to make an
independent work, it is apparent, from a comparison of the Freeman volumes and
those of the defendants, that the former were used throughout by the editors
employed by the defendants. It is true that in each volume, perhaps in the
majority of cases, there is the appearance of independent labor performed by
them, without regard to the volumes of Mr. Freeman; but yet in every volume it
is also apparent that Mr. Freeman's volumes were used; in some instances words
and sentences copied without change, in others, changed only in form; and the
conclusion is irresistible, that for a large portion of the work performed in
behalf of the defendants, the editors did not resort to original sources of
information, but obtained that information from the volumes of Mr. Freeman.
Undoubtedly, it was competent for an editor to take the opinions of the Supreme
Court, and possibly from the volumes of Mr. Freeman, and make an independent
work; but it is always attended with great risk for a person to sit down, and,
with the copyrighted volume of law reports before him, undertake to make an
independent report of a case. It is not difficult to do this, going to the
original sources of information, to the decisions of the court, the briefs of
counsel, the records on file in the clerk's office, without regard to the
regular volumes of reports. Any one who has tried it can easily understand the
difference between the head-notes of two persons, equally good lawyers, and
equally critical in the examination of an opinion, where they are made up
independent of each other; and, bearing in mind this fact, it seems to be
beyond controversy, that although in many, and perhaps most instances, there is
a very considerable difference between the head-notes of the defendants'
volumes and those of the plaintiff, the latter have been freely used in the
preparation of the former. I conclude, therefore, that the defendants have, in
the preparation of those volumes, from 32 to 38 inclusive, of the Illinois
Reports, used the volumes of the plaintiff so as to interfere with his
copyright."
So, also, we concur with the conclusions
of Judge Drummond in regard to volumes 39 to 46. He says, (20 Fed. Rep. 441:)
"The present inquiry is limited to what is alleged to be an infringement
by the defendants of volumes 39 to 46, inclusive, of Mr. Freeman's Illinois
Reports. Volume 40 seems never to have been regularly published like the other
volumes, although the evidence of the infringement of the plaintiff's copyright
in that volume is perhaps stronger than that applicable to any of the other
volumes named. Upon comparing parts of each of the volumes, those of the
complainant and of the defendants, one with the other, I think there can be no
doubt that in some respects, in each case, the Freeman volume has been used by
the defendants in the head-notes, the statements of facts, and the arguments of
counsel. That is, there are certain unmistakable indicia, that in every volume
prepared by the defendants they have not confined themselves solely to the
original sources of information, namely, the opinions of the judges, the
records, and the arguments of counsel." He also says, (p. 442:) "The
fact appears to be, and indeed it is not a subject of controversy, that in
arranging the order of cases, and in the paging of the different volumes, the
Freeman edition has been followed by the defendants; but, while this is so, I
should not feel inclined, merely on that account and independent of other
matters to give a decree to the plaintiff, although it is claimed that the
arrangement of the cases and the paging of the volumes are protected by a
copyright. Undoubtedly, in some cases, where are involved labor, talent,
judgment, the classification and disposition of subjects in a book entitle it
to a copyright. But the arrangement of law cases and the paging of the book may
depend simply on the will of the printer, of the reporter, or publisher, or the
order in which the cases have been decided, or upon other accidental
circumstances. Here the object on the part of the defendants seems to have been
that there should not be confusion in the references and examination of cases;
but the arrangement of cases and the paging of the volumes is a labor
inconsiderable in itself, and I regard it, not as an independent matter, but in
connection with other similarities existing between the two editions, when I
say, taking the whole together, the Freeman volumes have been used in editing
and publishing the defendants' volumes." It may be added, that one of the
most significant evidences of infringement exists frequently in the defendants'
volumes, namely, the copying of errors made by Mr. Freeman.
The next objection urged is, that the
defendants were compelled to produce their books and papers on the accounting
before the master, the plaintiff having sought a forfeiture of the copies of
volumes 32 to 38; and that the defendants were thereby compelled to produce
evidence against themselves, in aid of such forfeiture.
The original bill prays for a decree
that all of the copies published by the defendants of volumes 32 to 38 be
forfeited to the plaintiff, and that the defendants be required to deliver the
same to him. The supplemental bill contains no such prayer in regard to volumes
39 and 41 to 46, but contains a prayer for general relief. The cross-bill and the
answer to it show that Myers brought an action of replevin against Callaghan
& Co., to recover as forfeited the copies of the infringing volumes 32 to
38. The final decree shows that the cross-suit was not brought to a hearing
with the original suit: On the contrary, the final decree reserves for
consideration and determination, on the hearing of the cross-bill, the rights
of the parties thereunder, and their rights in respect to the action of
replevin to recover possession of the unsold copies of volumes 32 to 38.
Although, under the provisions of the interlocutory decree in respect to
volumes 32 to 38, the defendants were required to produce their account-books
and papers before the master, and were examined in regard to them, yet the
final decree did not award any forfeiture, and so no injury has resulted to the
defendants by reason of such provision of the interlocutory decree, or by
reason of any action thereunder. Irrespective of this, it is determined by the
case of Stevens v. Gladding, 17 How. 447, that the penalties given by § 7 of
the copyright act of 1831 cannot be enforced in a suit in equity. The provision
of the interlocutory decree for an examination of the defendants in regard to
the subject of inquiry, and for the production by them of their account-books
and papers, is the usual provision in an interlocutory decree in a suit in
equity for the infringement of a copyright. As the forfeiture of the volumes
could not be obtained by this suit, although prayed for in the bill, the evidence
was admissible.
We now come to the question of damages.
It is contended that the Circuit Court erred in disallowing to the defendants a
credit for stereotyping volumes 32 to 46. Both of the masters refused to allow
credit for the cost of stereotyping. Stereotyping was not a necessary incident
of printing and publishing, as type-setting was. It was resorted to by the
defendants to enable them the more successfully and profitably to infringe, by
dispensing with the necessity of resetting the type for every new edition, and
thus reducing the cost of multiplying copies in the future. The stereotype
plates were made without the consent of the plaintiff, and if credit is allowed
for them the plaintiff is compelled to buy and pay for them, when they are
useless to him, and when he has stereotyped for himself volumes 32 to 46.
It is also contended, that both of the
masters erred in disallowing a credit to the defendants for the amount paid to
the different members of their firm for their services, in the way of salaries,
as a part of the expense of conducting their business, being the amount of
about $12,000 a year during the period in controversy. These amounts were drawn
by the defendants under the partnership agreement, as family and personal
expenses. We do not think that the value of the time of an infringer, or the
expense of the living of himself or his family, while he is engaged in
violating the rights of the plaintiff, is to be allowed to him as a credit, and
thus the plaintiff be compelled to pay the defendant for his time and expenses
while engaged in infringing the copyright. If the defendants, instead of
employing others to do the work, had chosen to do it themselves, they might as
well have made a charge, and claimed to have been credited for it, of so much a
month or a year for their services in preparing the infringing volumes.
Elizabeth v. Pavement Co., 97 U.S. 126, 139. The case stands on a different
footing from that of the salaries of the managing officers of a corporation, as
in Rubber Company v. Goodyear, 9 Wall. 788.
The defendants also object that the
master, Mr. Bennett, should have found the number of volumes sold by the
defendants to have been 103 less, and that the total number of bound volumes on
hand found by him was erroneous, as also was the total number of volumes found
by him to have been on hand unsold. The exceptions to the master's report in
these respects substantially complain that the master found too many volumes to
have been sold, by 103. We do not perceive any error in the above particulars.
The master, Mr. Bennett, rightfully excluded a credit for the cost of producing
copies of the volumes which the defendants did not sell. There were no profits
from copies not sold, and, therefore, there could have been nothing to charge
against such profits.
In regard to the exceptions to the
report of Mr. Bennett, that he found the average selling price of the
defendants' volumes to be $4.464 each, instead of $4.34, and that he found
their gross receipts from sales of the infringing volumes to have been
$10,231.48, instead of $9459.37, we are of opinion that the selling price found
and the gross receipts found were not too high.
We do not concur in the view of the
defendants that there were no net receipts or profits on the sales of volumes
39 to 46, or in the view that the master, Mr. Bennett, erred in refusing credit
to the defendants for the amount paid by them for editorial work in preparing
their volumes, or in the view that the Circuit Court erred in allowing the $340.70
as profits on the resales of the 156 volumes mentioned in the first and second
exceptions of the plaintiff to the report of the master, Mr. Bennett.
In regard to the 156 copies, they were
volumes which had been already sold by the defendants, and which they purchased
as second-hand books and resold. The master had held that, as he had charged
the defendants with the profits on the first sale of these volumes, the profits
on their resale could not be charged against them. The Circuit Court overruled
this view and, as we think, properly. The sale of the volume originally
prevented the purchase from the plaintiff of a lawful volume, and the sale of
the same infringing volume a second time prevented the purchase from the
plaintiff of another lawful volume. The plaintiff was thus twice injured by the
acts of the defendants, and the sales of the second-hand volumes must be
accounted for as if they were first sales. Birdsell v. Shaliol, 112 U.S. 485,
487, 488.
The Circuit Court held that the master
approximated as nearly as could be done to the true amount, in fixing the
selling price at $4.464 per volume. We concur in this view.
In regard to the eighth exception of the
defendants to the report of the master, Mr. Bennett, that he had credited the
defendants, in their expense account, with only 12 per cent on their gross
sales, instead of 17 per cent, the Circuit Court held that, as Mr. Bennett had
allowed 12 per cent and Mr. Bishop had allowed 12 7/8 per cent for such average
expenses, and those conclusions were so nearly alike, the court would allow
their findings in this regard to stand. We concur in this view, and also in the
conclusion of the Circuit Court sustaining the findings of the two masters as
to the average price per volume at which the defendants sold the volumes.
In regard to the general question of the
profits to be accounted for by the defendants, as to the volumes in question,
the only proper rule to be adopted is to deduct from the selling price the
actual and legitimate manufacturing cost. If the volume contains matter to
which a copyright could not properly extend, incorporated with matter proper to
be covered by a copyright, the two necessarily going together when the volume
is sold, as a unit, and it being impossible to separate the profits on the one
from the profits on the other, and the lawful matter being useless without the
unlawful, it is the defendants who are responsible for having blended the
lawful with the unlawful, and they must abide the consequences, on the same
principle that he who has wrongfully produced a confusion of goods must alone
suffer. As was said by Lord Eldon, in Mawman v. Tegg, 2 Russell, 385, 391:
"If the parts which have been copied cannot be separated from those which
are original, without destroying the use and value of the original matter, he
who has made an improper use of that which did not belong to him must suffer
the consequences of so doing. If a man mixes what belongs to him with what
belongs to me, and the mixture be forbidden by the law, he must again separate
them, and he must bear all the mischief and loss which the separation may
occasion. If an individual chooses in any work to mix my literary matter with
his own, he must be restrained from publishing the literary matter which
belongs to me; and if the parts of the work cannot be separated, and if by that
means the injunction, which restrained the publication of my literary matter,
prevents also the publication of his own literary matter, he has only himself
to blame." The present is one of those cases in which the value of the
book depends on its completeness and integrity. It is sold as a book, not as
the fragments of a book. In such a case, as the profits result from the sale of
the book as a whole, the owner of the copyright will be entitled to recover the
entire profits on the sale of the book, if he elects that remedy. Elizabeth v.
Pavement Co., 97 U.S. 126, 139.
In considering the exceptions of the
defendants to the masters' reports in matters of fact, questioning the accuracy
of their conclusions in respect to the amount of the defendants' profits, we
have observed the rule recognized and affirmed in Tilghman v. Proctor, 125 U.S.
136, 149, that, in dealing with such exceptions, "the conclusions of the
master, depending upon the weighing of conflicting testimony, have every
reasonable presumption in their favor, and are not to be set aside or modified
unless there clearly appears to have been error or mistake on his part."
On the whole case we are of opinion that
the final decree was correct, except in respect of volume 32. The amount of
damages reported by the master, Mr. Bishop, as to that volume, and allowed by
the final decree as part of the $6986.05, was $926.66. That sum is disallowed
and must be deducted. The other items of recovery in the decree were proper.
The injunction as to volume 32 must be vacated, and the appellee will recover
his costs of this court.
The decree of the Circuit Court is
reversed as to volume 32 and is affirmed in all other respects; and the case is
remanded to that court, with a direction to correct the decree in the
particulars above indicated, and to take such further proceedings as may be
according to law and not inconsistent with this opinion.