In Gray v. Russell,[1549] Story, J., says:
"Non numerantur, ponderantur; the quintessence of a work may be piratically extracted so as to leave a mere caput mortuum, by a selection of all the important passages in a comparatively moderate space."
Extract for Review.—Extracts may be taken from a work for the purpose of reviewing or criticising it, or writing a treatise in answer.
"Reviewers may make extracts sufficient to show the merits or demerits of the work, but they cannot so exercise the privilege as to supersede the original work. Sufficient may be taken to give a correct view of the whole; but the privilege of making extracts is limited to those objects, and cannot be exercised to such an extent that the review shall become a substitute for the book reviewed."[1550]
A reviewer must not tear the heart out of a book.
Abridgments.—What is called a bonâ fide abridgment is held to be a fair use of another's work.[1551] The opinions of the judges in the older cases were derived from the English case law on the subject. I think it is doubtful whether the English abridgment cases would now be sustained, as the principle involved is clearly against all the more recent doctrines as to infringement. In America, however, the judges, although disagreeing more or less with the case law as to abridgment, have felt themselves bound by precedent to hold that a fair abridgment is not a piracy.
In Story v. Holcombe,[1552] M'Lean, J., said:
"If this was an open question, I should feel little difficulty in determining it. An abridgment should contain an epitome of the work abridged—the principles in the condensed form of an original book. Now it would be difficult to maintain that such a work did not affect the sale of the book abridged. The argument that the abridgment is suited to a different class of readers by its cheapness, and will be purchased on that account by persons unable and unwilling to purchase the work at large, is not satisfactory. This to some extent may be true, but are there not [285] many who are able to buy the original work who will be satisfied with the abridgment.... The reasoning on which the right to abridge is founded therefore seems to me to be false in fact. It does to some extent in all cases, and not unfrequently to a great extent, impair the rights of the author—a right secured by law.... But a contrary doctrine has been long established in England under the Statute of Anne, which in this respect is similar to our own Statute, and in this country the same doctrine has prevailed. I am therefore bound by precedent, and I yield to it in this instance more as a principle of law than a rule of reason or justice."[1553]
In Lawrence v. Dana,[1554] Clifford, J., took a similar view:
"Whatever might be thought, if the question was an open one, it is too late to agitate it at the present time, as the rule is settled that the publication of an unauthorised but bonâ fide abridgment or digest of a published literary copyright, in a certain class of cases at least, is no infringement of the original."
The learned judge then lays down some restriction on the free right to abridge:
"Unless it be denied that a legal copyright secures to the author 'the sole right and liberty of printing, reprinting, publishing, and binding 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 bonâ fide abridgment in the sense of 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."[1555]
I think that to-day the Courts in America as well as England would, if the question of abridgments were to come before them, cut down the right of the abridger very considerably. I could not advise any one that he was safe in making an abridgment of another's work; certainly he must avoid making any extracts from the work abridged; the use of any of the author's language literally or colourably taken would undoubtedly be piratical.[286]
Translations.—Authors and their assigns have the exclusive right of translating their works into any language.[1556] Before 1891 the translating right had to be expressly reserved by the author, presumably by notice printed on every published copy of his work.[1557] No reservation is now required. Before 1870 there was no exclusive right of translation at all.[1558] The same remarks apply to the right of dramatization. The right of dramatization probably does not prevent a stranger from making a dramatic version for his own private use; but it would prohibit any public use of such a version whether by publication in print or representation on the stage.
Dramatic Performing Right.—In the case of dramatic works the author and his assigns have the sole right of performing the same in public.[1559] This right was first given by Act of Congress in 1856.[1560] In Daly v. Palmer,[1561] Blatchford, J., defines the scope of the Act:
"A composition, in the sense in which that word is used in the Act of 1856, is a written or literary work invented or set in order. A dramatic composition is such a work in which the narrative is not related, but is represented by dialogue and action. When a dramatic composition is represented in dialogue and action by persons who represent it as real by performing or going through with the various parts or characters assigned to them severally, the composition is acted, performed, or represented; and if the representation is in public, it is a public representation. To act in the sense of the Statute is to represent as real by countenance, voice, or gesture that which is not real. A character in a play who goes through with a series of events on the stage without speaking, if such be his part in the play, is none the less an actor in it than one who, in addition to motions and gestures, uses his voice. A pantomime is a species of theatrical entertainment, in which the whole action is represented by gesticulation without the use of words. A written work consisting wholly of directions, set in order for conveying the ideas of the author on a stage or public place by means of characters who represent the narrative wholly by action is as much a dramatic composition designed or suited for public representation as if language or dialogue were used in it to convey some of the ideas."[1562]
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It will be an infringement of performing right to take a single scene from another's drama.[1563] It is more important to consider what is a dramatic representation than what is a dramatic composition. If a composition not primarily intended for representation is publicly represented without permission, even if it was not a "dramatic composition," the person representing will be liable for having dramatized it if the representation is dramatic. There can be a dramatic representation by one actor only, and many music hall songs are undoubtedly dramatically represented.
Musical Rights.—Before 1897 there was no exclusive performing right in musical compositions as such. It might have been protected from performance if it could be shown to be part of a dramatic piece.[1564] By the Act of January 6, 1897, performing right in musical compositions was first created. The protection is now substantially the same as in the case of dramatic pieces.
Section II.—Prohibited Acts, and Remedies.
It is an infringement, subject to the remedies stated below, to do any of the following acts in respect of a copyright work.
In the case of:
I. Books:[1565] without the consent of the proprietor in writing signed in the presence of two witnesses.
1. To print or publish. 2. To dramatize or translate. 3. To import. 4. Knowingly to sell or expose for sale copies unlawfully made or imported.
The owner's remedies are:
1. Forfeiture of copies. 2. Damages. 3. Injunction. 4. Account of profits.
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II. Maps,[1566] charts, dramatic or musical compositions, prints, art engravings, photographs, chromos, paintings, drawings, statues, statuary models and designs for the fine arts: without the consent of the proprietor in writing signed in the presence of two witnesses.
1. To engrave, etch, work, or copy. 2. To print or publish. 3. To dramatize or translate. 4. To import. 5. Knowingly to sell or expose for sale copies unlawfully made or exported.
The owner's remedies are:
1. Forfeiture of plates and sheets. 2. Penalty of $1 for every sheet found in defendant's possession. 3. Penalty of $10 for every copy of a painting, statue, or statuary. 4. In the case of a photograph made from any object not a work of fine art, the sum to be recovered shall not be less than $100 nor more than $5000. 5. In the case of a work of the fine arts or photograph thereof, the sum to be recovered shall not be less that $250 nor more than $10,000. 6. Injunction.
One-half of the penalties under the Act of March 2, 1895, go to the proprietor of the copyright and the other half to the use of the United States.[1567]
A series of sheets containing tabulated information has been held not to be entitled to protection as charts but only as a book.[1568] An engraving or cut contained in a book or volume will not be protected as a cut unless it is separately copyrighted as such.[1569][289]
III. Dramatic or musical compositions:[1570] without the consent of the proprietor.
1. Publicly to perform or represent.
The owner's remedies are:
1. Damages not less than $100 for the first, and not less than $50 for every subsequent performance. 2. If done wilfully and for profit it is a misdemeanour, and the offender may on conviction be imprisoned for a period not exceeding a year. 3. Injunction.
Damages cannot be recovered in a suit in equity, the remedy being limited to an injunction and profits.[1571]
Account of Profits.—The right to an account of profits is an equitable remedy, and incidental to the statutory right, although not expressly conferred by the statute.[1572]
If a work is in part piratical and in part innocent, then if the piratical part can be distinctly separated it will be separately condemned and the profits apportioned.[1573] If the piratical matter is so mixed up with the rest that it cannot be distinctly separated, the profits awarded will be the whole profits on the sale of the book.[1574] When the defendant has sold a book twice, having bought it back second-hand, the profits include the profits on both sales.[1575] The cost of producing copies which the defendant did not sell cannot be estimated in reduction of profits.[1576] There will be no decree for profits unless there are means of determining in a reliable manner what sum the defendant received for books.[1577][290]
Damages.—Damages may be awarded in lieu of or as supplementary to an account of profits. The measure of damages is the diminution in the plaintiff's sales due to the publication of the defendant's book.
The minimum statutory damages given for infringement of performing rights are remedial but not penal, and the strict rules of evidence in criminal cases do not apply.[1578] The penalties given for infringement of maps, &c., are of a penal nature.[1579]
In respect of maps, musical and dramatic compositions, works of art, &c., there is no right of action to recover damages merely as such; the remedy is limited to the prescribed forfeiture and penalties.[1580]
Penalties.—Penalty for "each sheet" does not mean for each copy. Where a large number of lithograph copies of a photograph were printed on one sheet it was held that only one penalty was recoverable for the whole sheet.[1581] Cutting up or binding the sheets does not increase nor diminish the number of the sheets.[1582] Only those sheets which are "found in the defendant's possession" are penalised.[1583] They must be alleged and proved to have been actually discovered in the defendant's possession before the bringing of the action,[1584] and not merely be found by the jury to have been in his possession. They need not necessarily have been found by the plaintiff or any one acting on his behalf.[1585] An employee who holds possession for his master is not liable in penalties.[1586] Penalties cannot be recovered in a suit in equity.[1587]
Forfeiture.[1588]—It seems doubtful whether the forfeiture of [291] copies of a book under section 4964 of the Revised Statutes can be enforced unless the whole book is copied. It was held under the Act of 1831 that they could not,[1589] but I doubt if this is sound.
The statutes give no right of action to the proprietor of a map, photograph, dramatic or musical work, artistic work, &c., to recover from an infringer the value of copies which have passed from his possession.[1590]
Injunction.[1591]—A preliminary injunction is granted, but only in a plain case,[1592] to stay further damage. The Court will always consider which party is likely to suffer most from the erroneous granting or refusing of an injunction. In doubtful cases an injunction will not be granted simpliciter, but the defendants may be required to keep an account and give a bond to answer damages.[1593] An injunction will go at the hearing without reference to the question of special damage.[1594]
Who is Liable.—The sale of a play with a view to unauthorised representation makes the seller a joint infringer of the performing right.[1595] The manager of a company is not personally liable for an infringement made by the company without his knowledge and against his express instructions.[1596] A company is liable in penalties as well as an individual.[1597] The printer and publisher of a piratical book are liable equally with the writer.[1598] One who procures an infringement to be made is liable.[1599]
An employer whose servants or agents infringe the copyright of others is undoubtedly liable in damages for the wrongful acts of his servants done in the course of their employment. Thus one who compiles a directory is responsible for the piratical acts of his canvassers, even although they acted contrary [292] to his express instructions.[1600] But it has been held that a man is not liable for forfeitures or penalties on account of acts done without his knowledge or consent by his servants or agents in his employment. When an agent had full authority to advertise his principal's teas as he thought fit and pirated some election statistics in doing so, it was held that his principal could not be liable in forfeitures or penalties for acts done in his absence and without his authority or knowledge.[1601] In another case it was held that the proprietor of a newspaper was not responsible in forfeiture or penalties for a piratical copy of a map which appeared in his newspaper during his absence from the management and control.[1602] It will be observed that if these cases are sound the proprietor of the copyright in a map, &c., or artistic work has no remedy in either penalties or damages against the proprietor of an infringing publication unless he can show that the piratical matter was inserted with his knowledge or consent. This follows from the above decisions that the specific penalties constitute the only remedy by way of damages which the proprietor of these works can recover.[1603]
Limitation of Action.—No action can be maintained in any case of forfeiture or penalty under the copyright laws unless the same is commenced within two years after the cause of action has arisen.[1604] This includes all claims, not only those for forfeiture and penalty so-called, but for damages under Revised Statutes, sec. 4964, in respect of books.[1605]
Acquiescence.—Mere delay on the part of the plaintiff in pursuing his remedy is no defence to an action for infringement.[1606] A preliminary injunction may be refused on the ground of delay. The remedy on the final hearing will not be barred by laches or acquiescence, unless it is tantamount to fraud for [293] the plaintiff to insist on his legal rights.[1607] A right may perhaps be abandoned by allowing numerous members of the public to exercise it without licence or objection.[1608]
Pleading.—In pleading, the plaintiff does not have to allege the facts which make him proprietor.[1609] If it is disputed, it is for the defendant to allege and prove facts to the contrary.[1610] The plaintiff, however, must allege specifically a compliance with the statutory formalities, although he need not allege that publication took place within a reasonable time after the deposit of the title.[1611]
In all actions arising under the laws respecting copyrights, the defendant may plead the general issue, and give the special matter in evidence.[1612]
Penalties for affixing False Notice.—Every person who shall insert or impress a copyright notice, "or words of the same import, in or upon any book, map, chart, dramatic or musical composition, print, cut, engraving or photograph or other article, whether such article be subject to copyright or otherwise, for which he has not obtained a copyright, or shall knowingly issue or sell any article bearing a notice of United States copyright which has not been copyrighted in this country; or shall import any book, photograph, chromo or lithograph, or other article bearing such notice of copyright, or words of the same purport which is not copyrighted in this country, shall be liable to a penalty of $100, recoverable one-half for the person who shall sue for such penalty, and one-half to the use of the United States."[1613]
This section was amended in 1891 and again in 1897. It now reads as above. Before 1897 the penalty was not recoverable from one who sold copies, knowing them to contain a false notice, unless he had made the book or caused the notice [294] to be inserted.[1614] Before 1897 also there could be no conviction unless the article on which the false notice was impressed was a copyrightable article.[1615]
The penalty is not recoverable for each copy, but for each issue. Where chromos were struck off in large numbers for advertising purposes, each separate batch being printed with a different trade name for different customers, it was held that the penalty was recoverable on each batch.[1616] For a notice to incur the penalty as a false notice, it is not necessary that it should have been printed as directed by the Acts. It will be subject to the penalty even although printed in another part of the book.[1617] Rough prints of a picture made for the purpose of advertisement bore a false notice, and were held to have incurred the penalty.[1618] It is not unlawful to impress a notice of copyright on a rough copy of a copyright picture, even although such copy is not separately copyrighted.[1619] Liability will not attach unless the notice contains the essentials of a sufficient copyright notice, viz. "name," "claim of exclusive right," and "date when obtained." Thus where the date was omitted no penalties were recovered.[1620] Any one who causes a false notice to be impressed is equally liable with the person who himself impresses it.[1621]
Importing Books Printed Outside the United States.—If copyright has been secured in the United States, importation of any book, chromo, lithograph, or photograph, or any plates of the same, not made from type set, negatives, or drawings on stone made within the limits of the United States,[1622] is prohibited, either with or without the consent of the owner of the copyright.
Except—
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CHAPTER V
COMMON LAW RIGHTS
Section I.—Published Work.
After a work has been published it has no protection in the nature of copyright except under an Act of Congress.[1630] If either from the nature of the work, or from the want of conforming with the formalities of the Act, there is no statutory protection, then there can be no exclusive right of copying the work. After a drama or musical piece has been published as a book, not only the copyright in it but also the performing right depends entirely on statutory protection.[1631] Performance on the stage not being a publication, affects neither the right of copy nor the performing right.
Although there is no right of copy in a published work except under statute, there are certain common-law rights based on fraud or implied contract which are incident thereto, and which neither depend on nor are affected by statutory protection.
Passing off.—One man is not entitled so to produce his book as to lead the public to believe it is the work of another.[1632] The same or a similar title is the most usual method of passing off. One cannot monopolise a purely descriptive title such as "Latin Grammar" or "Guide to the Alps;" but it was held a passing off to take the title, "The Fram Expedition—Nansen in [297] the Frozen World;"[1633] so the title "Social Register" to a select list of residents in a certain district was infringed by a similar list bearing the title "Howard's Social Register."[1634] It is immaterial in a question of passing off that the book itself is unprotected from copying. Thus an English magazine called "Chatterbox" was largely sold in the United States, but was not copyright. Although it would have been quite legal to have copied the English magazine and sold such copies under its own title, it was not permissible to publish another magazine under the title of "Chatterbox."[1635] In another case it was held that one might not adopt the title of another's operetta for his own, even although the songs and vocal scores of the operetta had been published under the title without securing copyright.[1636]
It is not a passing off to reprint another man's book and sell it in his own name, and if the copyright has expired he has no redress.[1637] He has no property in his own name as such. After the copyright had expired in "Webster's Dictionary," Webster's assignee was held to have no ground for restraining any one from reprinting and selling "Webster's Dictionary" under that title.[1638] Even where the name was a pseudonym, "Mark Twain," the author was not entitled to prevent others from printing and selling some non-copyright work of his as "Sketches by Mark Twain."[1639]
A man may prevent the publication under his name of a book of which he is not the author or which has been mutilated without his authority.[1640] Henry Drummond, the evangelist, delivered a series of lectures at Boston, Massachusetts, on "The Evolution of Man." Eight out of twelve lectures were partially printed with the author's consent in the British Weekly, and no copyright was secured in America. It was held that Professor Drummond was entitled to restrain a reprint of these published lectures reproduced with material alterations, and [298] represented as being the complete series of lectures.[1641] An author who has parted with or lost his copyright has no right to regulate the manner in which his work may be published, provided that there is no misrepresentation causing injury to the author's name.[1642]
In one case,[1643] however, the defendants were restrained from a similar proceeding on the ground of unfair trading. They bought second-hand school books published by the plaintiff, and rebound them so as to have the exact appearance of the plaintiff's books when new. It was held that they were entitled to do this without infringing any right of the plaintiff in their copyright book; but it was also held that it was not fair trading to sell the rebound books without sufficient notice that they were rebound.
If there have been several editions of a book, the copyright in the first of which only has expired, the author may restrain a publisher from reprinting and publishing the first edition so as to lead the public to believe that it is a later edition still copyright.[1644] The owner of a series of novels, published in two editions, cannot prevent a third person buying a large quantity of the sixth edition and binding them so as to somewhat resemble the dearer edition.[1645] When the "Encyclopædia Britannica" was published, only a few of the articles were copyright in America. It was held that it was permissible for an American publisher to reprint the whole work so far as not copyright, and to substitute new articles for the copyright articles, and so long as there was no attempt to defraud the public to publish it as the "Encyclopædia Britannica" so revised.[1646]
Section II.—Unpublished Work.
Unpublished work is protected from interference by the common law of England, which was brought to and adopted [299] by the United States.[1647] When the common law is asserted one must look to the law of the State in which the controversy originated,[1648] since although the common law of England was adopted, it was adopted only so far as its principles were suited to the conditions of the colonies at the time, and some States have incorporated with their laws more and some less. The rights at common law in unpublished work were not abrogated by Acts of Congress establishing copyright in published work.
The author of an unfinished work has the right at common law to prevent any one from making any unauthorised use of his work.[1649] The author may without publishing make a communication of the contents of his work to a limited number,[1650] and he may prescribe to them what conditions he pleases.[1651] A play or song is not published by performance nor a lecture by delivery.[1652] A work of art is probably published by public exhibition,[1653] but not by a private view. A spectator of an unpublished play is not entitled to reproduce substantial parts of it even from memory.[1654] Similarly with a musical work or lecture.
An alien author has an equal right with a citizen of the United States to sue at common law for interference with his manuscript.[1655] A statutory remedy is given for the unauthorised printing or publishing of any manuscript. The offender is liable "for all damages occasioned by such injury."[1656] This statutory remedy neither destroys nor limits the common law [300] right.[1657] No new right is secured.[1658] The practical result is that an alternative remedy in the Federal tribunals is provided where the parties are subjects of the same State. The plaintiff may proceed either in the State Court or the Federal Court.[1659] Manuscript under this section is limited to the meaning of a written document. It does not include a picture.[1660] [301]
[302]
APPENDIX
[303]
BRITISH STATUTES
THE ENGRAVING COPYRIGHT ACT, 1734.
8 Geo. II. c. 13.
An Act for the Encouragement of the Arts of Designing, Engraving, and Etching historical and other Prints, by vesting the Properties thereof in the Inventors and Engravers, during the Time therein mentioned.
I. Whereas divers Persons have by their own Genius, Industry, Pains, and Expense, invented and engraved, or worked in Mezzotinto or Chiaro Oscuro, Sets of historical and other Prints, in hopes to have reaped the sole Benefit of their Labours:
And whereas Printsellers, and other Persons, have of late, without the Consent of the Inventors, Designers, and Proprietors of such Prints, frequently taken the Liberty of copying, engraving, and publishing, or causing to be copied, engraved, and published, base Copies of such Works, Designs, and Prints, to the very great Prejudice and Detriment of the Inventors, Designers, and Proprietors thereof: