II. Canada.—If the book has been printed and published, or reprinted and republished,[1032] and registered in Canada, there shall not be imported into, or sold in, without the consent in writing of the owner of the copyright—

Copies printed outside Canada[1033] unless legally printed in the United Kingdom under an Imperial copyright existing prior to the acquirement of a Canadian local copyright.[1034]

If a book has acquired Imperial copyright by first publication within the British dominions outside Canada, and the owner of the copyright has granted a licence to reproduce it in Canada, there shall not be imported (if the Minister of Agriculture so order) without the consent in writing of the Canadian licensee—

Copies printed outside Canada.[1035]

In other cases these shall not be imported or sold without the written consent of the owner of the copyright—

Copies printed outside the British dominions.

III. Colonies under the Act of 1847 other than Canada.—There is no prohibition except the nominal import duty on copies printed outside the British dominions.

IV. Other Colonies.—There shall not be imported into or sold in without the consent in writing of the owner of the copyright—

Copies printed outside the British dominions.[1036]

Artistic Works.—We have seen that since the International Copyright Act, 1886, there is complete protection throughout the whole of the British dominions for books first published anywhere therein. It was evidently intended that artistic works should be placed on the same footing, but unfortunately the distinction between the literary and artistic Acts was overlooked.[192] The Copyright Act, 1842, protected books published in the United Kingdom, but expressly extended the protection to the whole of the British dominions. None of the artistic copyright Acts extend their protection beyond the United Kingdom. The Engraving Acts expressly limit their protection to the United Kingdom;[1037] the Paintings, Drawings, and Photographs Act expressly limits its remedies to the United Kingdom;[1038] and the Sculpture Act is silent as to the extent of its protection.[1039] The result seems to be that although since 1886 all works of art first published anywhere throughout the British dominions will be protected by Imperial legislation, that protection extends no further than the United Kingdom. This has been decided by a divisional Court in Canada in respect of the Paintings, Drawings, and Photographs Act, 1862.[1040] The decision will apply a fortiori to engravings. Sculptures may be different, in that there is no express limit contained in the Sculptures Act; but probably a limitation of protection to the United Kingdom will be implied. The result is that artistic works are only protected in the Colonies and dependencies under local legislation.[193]

CHAPTER X
INTERNATIONAL COPYRIGHT

Works first produced in His Majesty's Dominions are protected in those foreign countries with which there is a treaty for the mutual protection of literary and artistic rights. These countries are the signatories of the Berne Convention,[1041] and Austria-Hungary, with which there is a separate treaty on similar lines. Generally it may be presumed that each of these countries has by domestic legislation given full effect to the international agreement, and that all works which are protected in this country, and would have been protected if first produced in the foreign country in question, will receive the same protection there as would be accorded to a work first produced in such foreign country. The protection, however, must be sought in the foreign country and not here. The Courts of this country will not grant any redress for the infringement of a British author's copyright in a foreign State, even although such infringement be perpetrated by a British subject resident in England.[1042]

Works first produced in foreign countries with which this country has no treaty are in no way protected from infringement in the United Kingdom, unless they are produced within His Majesty's dominions simultaneously with their production elsewhere.[1043]

Works first produced in foreign countries with which this country has a treaty are protected from infringement in His Majesty's dominions by the domestic legislation of the United Kingdom.

Before December 6, 1887, foreign works were protected by virtue of the International Copyright Acts of 1844, 1852, and [194] 1875, and numerous Orders in Council, now revoked, giving effect to treaties with various foreign States. As the subsequent provisions under the International Copyright Act, 1886, are retrospective, it is unnecessary to examine the old law in any detail. On one important point, however, it will be necessary to mention some of the provisions of the International Copyright Acts which were applicable before December 6, 1887, since the subsequent legislation, in giving protection to works which were produced before that date and were then unprotected, enacts that its retrospective effect shall not prejudice rights and interests lawfully acquired before it came into operation. The law before 1887 has to be examined to determine what these rights and interests are.

Since December 6, 1887, the rights of foreign authors in His Majesty's dominions have depended on the provisions of the International Copyright Acts of 1844, 1852, 1875, and 1886, the Berne Convention of 1887, and an Order in Council of November 28, 1887. To these are now added the Additional Act of Paris, 1896, and an Order in Council of March 7, 1898. These may now all be read together, and apply to all foreign works first produced in the countries to which they are applicable. It should be mentioned here that Austria-Hungary has a convention of its own, and in dealing with works produced there that convention and the Orders in Council giving it effect must be substituted for the Berne Convention and Additional Act of Paris and the Orders in Council above mentioned. Norway has not become a signatory of the Additional Act of Paris, and therefore in dealing with works produced there the Berne Convention must be read as unmodified by the Additional Act.

It is proposed to deal here in detail with the provisions of the Acts, Orders in Council, and treaties as they apply to the majority of the foreign countries, i. e. those which are signatories of the Berne Convention and the Additional Act of Paris. As regards Norway and Austria-Hungary the law differs very slightly. The law applicable to Norway can easily be ascertained by reading the Berne Convention without the Additional Act. The law applicable to Austria-Hungary is almost identical, except that it affords protection in the United Kingdom and all [195] colonies except Canada, the Cape, New South Wales, and Tasmania, and not in the whole of His Majesty's dominions, as in the case of the signatories to the Berne Convention.

The countries whose works are protected in His Majesty's dominions are as follows:

What Foreign Works are entitled to Protection.—Those works are protected which are first produced in any of the foreign countries of the Union, and which—

Produced.—"Produced" means, as the case requires, published or made, or performed, or represented,[1044] or, in other words, the act which is deemed to vest the author or publisher of the work with exclusive rights of reproduction or publication. Thus in the United Kingdom a book or an engraving or sculpture is [196] produced when it is first published. A painting is produced when it is made. A musical or dramatic work as regards the performing right is probably produced[1045] when it is first performed or represented. But it would seem that, in considering when a work is produced, the law of the foreign country or countries in question must first be inquired into, and it will be considered to be produced in the country where an act is done which first invests it with protection in the nature of copyright.

If a work is produced simultaneously in two or more countries of the Union, it is deemed to be first produced in that country where the term of copyright accorded to it is shortest. And if a work is produced simultaneously in His Majesty's dominions and in one or more of the foreign countries of the Union, and according to the above rule is deemed to be first produced in a foreign country, it will be protected under the International Acts and not under the Copyright Acts applicable to works first produced in the United Kingdom, and vice versâ. If a work is produced simultaneously in a foreign country not within the Union and in a foreign country within it, it would no doubt be deemed to be first produced in the foreign country within the Union, although there is no legislative enactment to this effect.

Character of Work.—In order to obtain protection in this country, a foreign work must be such as is protected in the country of origin.[1046] In each case, therefore, it is necessary to inquire into the laws of the country where the work is deemed to have been first produced.[1047]

The work must also be such as would have obtained protection if first produced in the United Kingdom,[1048] and it is therefore necessary in each case to inquire also into the law of this country.[1049]

Unpublished Works.—Unpublished works of foreign authors are expressly included in the convention as works entitled to protection.[1050] If, therefore, they are protected in the country of [197] origin, and would be protected if they had been the works of British authors, they are entitled to protection within His Majesty's dominions. In the case of unpublished works the country to which the author belongs is considered the country of origin.[1051]

Special Provisions.—There is also express stipulation in the conventions as to the inclusion of the following works:

Works produced in Foreign Countries before December 6, 1887.—As is explained above the international treaties and domestic legislation in this country are retrospective, and apply to all works whenever produced. The International Act, 1886, sec. 6 (1),[1056] provides that—

"When an Order in Council is made under the International Copyright Acts with respect to any foreign country, the author and publisher of any literary or artistic work first produced before the date at which such order comes into operation, shall be entitled to the same rights and remedies as if the said Acts and this Act and the said Order had applied to the said foreign country at the date of the said production."

The Berne Convention, article 14, provides that—

"The present convention applies to all works which at the moment of its coming into force have not yet fallen into the public domain in the country of origin."[1057]

It was suggested that these retrospective provisions only applied to works produced between the date of the Act of 1886 and December 6, 1887, i. e. the date at which the Order in [198] Council of November 28, 1887, came into operation.[1058] Charles, J., however, refused to accept such a construction, and said that he felt no doubt that section 6 of the International Copyright Act, 1886, applied to all literary and artistic works produced before the date at which the Order in Council came into operation, whether they were produced before or after the passing of the Act.[1059]

In Lauri v. Renad[1060] it was held by the Court of Appeal that when under the older law a right of translation in this country had existed, and had expired by lapse of time, the Act of 1886 would not operate to revive such a right, even although the rights of reproduction and translation still subsisted in the country of origin. This is generally thought to be an unsound decision, as the proper test in such cases is whether the right has fallen into the public domain, not in this country but in the country of origin.

Formalities required in case of Foreign Works.—

In the Country of Origin—

In the United Kingdom—

Before 1886 registration and delivery of copies of a foreign work was required by the Act of 1844[1066] and various Orders in [199] Council in pursuance thereof. The Act of 1886, however, enacts[1067] that the provisions of the Act of 1844 as to registration and delivery shall not apply to works produced in a foreign country except in so far as provided by the Order in Council referring thereto. The Order in Council of 1887[1068] makes no provision as to registration and delivery, and revokes all the previous Orders in Council which did. In Fishburn v. Hollingshead[1069] the question came before the Court whether since 1886 any registration or delivery was necessary. Stirling, J., held that although none of the formalities prescribed by the International Copyright Act of 1844[1070] need be observed, yet a foreign work must comply with the provisions of the Copyright Acts as to registration and delivery applicable to works first produced in this country. His ratio decidendi was that a foreign work was only entitled to the protection afforded to natives,[1071] and the Act of 1844[1072] provided that all and singular the enactments of the Copyright Acts in this country should apply to foreign works in such and the same manner as if such works were published in the United Kingdom. Charles, J., in Hanfstaengl v. Holloway[1073] differed from this view, and finally the Court of Appeal in Hanfstaengl v. American Tobacco Company[1074] held that no registration in this country was necessary. The ground of this decision is that the enactments of 1844 as to registration of foreign works superseded the enactments of 1842, and when the provisions of 1844 were repealed the provisions of 1842 did not revive. This reasoning, which appears to be undoubtedly sound, applies equally to the provisions as to delivery of copies. It does not, however, apply to the question whether such formalities as the name and date of publication on an engraving are necessary. At present the position seems to be this. The reasoning of Stirling, J., in Fishburn v. Hollingshead[1075] equally applies to the formalities as to name and date on engravings and sculpture as it does to registration and delivery. The judgment of Stirling, J., was overruled in Hanfstaengl v. American Tobacco Company[1076] in [200] the Court of Appeal, but on grounds which do not apply to these formalities. As to them, therefore, the judgment of Stirling, J., stands. It is very doubtful whether this is the correct view of the law, but it is submitted that until Fishburn v. Hollingshead[1077] is further overruled the law is that formalities under heading 3 supra are necessary. In Avanzo v. Mudie[1078] it was held that a foreign print could not claim copyright under 7 & 8 Vict. c. 12, unless the date and name were engraved thereon as required by 8 Geo. II. c. 13. Mr. Scrutton, whose opinion in these matters carries great weight, thinks that these formalities are not required.[1079] As a matter of expediency they should always be observed where practicable.

Who are entitled to sue in respect of a Foreign Work.—The author of a foreign work or his assignee is probably entitled to sue in the case of all foreign works which are protected in this country.[1080]

The publisher of a foreign work published anonymously or pseudonymously is entitled to sue if his name is indicated on the work.[1081]

Evidence of Title.—Where the name of the author is indicated on a foreign work or in the case of an anonymous or pseudonymous work the name of the publisher, such author or publisher is, in the absence of proof that he is disentitled, entitled to sue in respect of such foreign work.[1082]

An extract from a register, or a certificate or other document authenticated by the official seal or signature of a minister of state of the foreign country of origin, or of a British diplomatic or consular officer, lawfully acting in such foreign country, is admitted as primâ facie evidence of the owner of the copyright.[1083]

Protection afforded to Foreign Works.—Generally a foreign work is accorded— [201]

Section 10 of the International Copyright Act, 1844,[1086] provides that all copies of foreign books in which there is copyright under the International Acts, if printed or reprinted in any foreign country except the country of origin, shall not be imported into the British dominions without the consent of the proprietor. It has been held,[1087] however, that this section does not supply a complete code as to the importation of copies of a foreign book, and that copies printed in the country of origin will also be prohibited in the same way as if the book had been first published in the United Kingdom. Section 3 of the International Copyright Act, 1844, applies to foreign works, inter alia, the provisions 5 & 6 Vict., sections 15 and 17, which prohibit the importation of any copies printed outside the British dominions. Section 10 was held not to curtail the general application in section 3 of the provisions of the Copyright Act, 1842, to foreign books.

As to certain foreign works which are dealt with below, there is express provision in the International legislation which results in giving such foreign works a narrower right or shorter term than they would have if first published in this country. Where there is no express limitation, the above general rules apply. The law of both the country of origin and of the United Kingdom must be examined, and the right given will be limited according to the law which affords least protection. Where, however, according to this rule there is a right, the Courts here will give the same remedies as they would extend to the author of a work first published in the United Kingdom. Thus in Baschet v. London Illustrated Standard,[1088] Kekewich, J., refused to consider [202] whether a French Court would or would not award penalties for infringement.

Works published before December 6, 1887, are protected, except in so far as such protection may prejudice rights or interests arising from or in connection with works lawfully produced before, and subsisting and valuable at, that date.[1089]

This limitation is introduced by the retrospective section of the Act of 1886, which enacts that—

"Where any person has before the date of the publication of an Order in Council lawfully produced any work in the United Kingdom, nothing in this section shall diminish or prejudice any rights or interests arising from, or in connection with, such production which are subsisting and valuable at the said date."

The following are some of the classes of literary or artistic works which were not protected before 1886 but to which the retrospective section and its saving clause applies:

"Lawfully Produced" means that the work has been produced without contravening any right existing at the date of its production.[1091]

"Rights" and "Interests" are to be distinguished, the latter word bearing a wider interpretation than the former. Right does not mean the right to reproduce in common with all mankind, but right in the strict legal sense of the term under the English Copyright Acts, i. e. an exclusive right of property.

When any capital has been embarked in the production of a work, and the publisher depends on the sale of copies in stock [203] or on the proceeds of a future edition to recoup himself for his outlay, there is clearly an interest although there may be no right. Where a bandmaster had purchased a copy of a French musical composition and instructed his band to perform it, he was held to have such an interest as would entitle him to continue performing it after the French composer had acquired protection under the Act of 1886.[1092] Even where no capital has been embarked, if the publisher has a special interest as distinct from the rest of the public in the reproduction of the work, he has an interest within the meaning of the section.[1093] Thus where a firm had adopted a German picture as a trade mark for their candles, they were held to have such an interest in the reproduction as would constitute a good defence to an action for infringement of copyright acquired under the retrospective operation of the Act of 1886.[1094] It has been suggested that not only the interests of the lawful producer will be safeguarded, but also interests arising in a third person from or in connection with such production, and this seems to be sound.[1095]

Translating Right expires if not exercised within ten years.

The exclusive right of translation is expressly given to the foreign author by the Act of 1886 and the Additional Act of Paris for the full term of his copyright in the original work, but if an authorised translation in the English language is not published after the expiration of ten years next after the end of the year in which the work was first produced the translating right of the author shall cease.[1096] If a book is published in numbers, the ten years run from the date of publication of the last part.[1097] When a book is composed of a number of volumes, each volume is considered as a separate work.[1098] A translation in order to preserve the translating right must be full and substantial.[1099] A translation might be such as, if made without the consent of the [204] author, would constitute a piracy, and yet not be such a translation as is required by the Act—

"What is required is that the English people should have the opportunity of knowing the foreign work as accurately as it is possible to know a foreign work by the medium of a version in English."[1100]

Articles in Newspapers and Periodicals.[1101]—Articles, not being serial stories or tales, appearing in a newspaper or periodical in a foreign country, may be republished or translated in a newspaper or periodical in this country without the consent of the owner of the copyright, provided—

Photographic Works.—The Additional Act of Paris runs as follows: "It is understood that an authorised photograph of a work of art shall enjoy legal protection in all the countries of the Union, as contemplated by the Berne Convention, and by the present Additional Act, for the same period as the principal right of reproduction of the work itself subsists, and within the limits of private arrangements between those who have legal rights."[1102]

It would seem, therefore, that photographs of protected works of art are not protected as original works, and that, whenever produced, their protection stands and falls with the right in the original work. Other photographs, including photographs of unprotected works of art, are protected as original works.

Performing Right in Dramatic or Dramatic Musical Works.—Exclusive performing right in dramatic or dramatico-musical works subsists during the existence of the exclusive right of [205] translation. If the translating right is allowed to fall into the public domain by non-exercise within ten years, the performing right falls with it.[1103]

There is not now as formerly any right in the public to make fair imitations or adaptations to the English stage.[1104]

Express Provision as to Particular Kinds of Infringement.—The Berne Convention, article 8, provides that the question of the right of extract is to be decided by the legislation of the different countries of the Union, or by special arrangement between them. There is no special arrangement as to this with the United Kingdom, therefore the law as to extract and quotation applicable to works produced in this country applies.

Article 10 of the Berne Convention enacts that indirect appropriations such as adaptations and arrangements are included among illicit reproductions when they do not bear the character of original work. Here also, therefore, the law is similar to that applicable to works produced in this country.[206]

CHAPTER XI
COMMON LAW

As to works which have been published within the meaning of the Copyright Acts, the common law affords no protection in the nature of copyright, that is to say, as regards the exclusive right of reproduction, the author must rely entirely on the statutes. There is no copyright at common law after the expiration of the period prescribed by statute,[1105] neither is there any greater right during that period than the statute gives.[1106] Common law remedies, however, may be applied when the statute gives a right without a sufficient remedy.[1107] But apart altogether from rights in the nature of copyright, the principles of common law and equity do apply to both published and unpublished works to prevent or to remedy the consequences of fraud or breach of contract.

As to works which have been composed[1108] but have not been published, the common law affords protection to the author against reproduction or interference of any kind.[1109]

The rights and remedies at common law are perpetual, and are neither limited in duration nor as regards the time within which action must be brought, except in so far as the general rules of equity as to acquiescence and delay or the statutes of limitation may be applicable.

Title: Passing off.—No Copyright in Title.—There is no copyright in a title consisting, as a title usually does, of only a few [207] words. Thus Belgravia,[1110] Sporting Life,[1111] "Splendid Misery,"[1112] The Licensed Victuallers' Mirror,[1113] and "The Post Office Directory,"[1114] have all been decided not to be the subject of copyright. In two decisions "The Birthday Scripture Text-Book"[1115] and "Trial and Triumph"[1116] (as the title of a novel) were protected on the ground of copyright in title, but since Dicks v. Yates[1117] in which these two decisions were cited, and in so far as they were based on a claim of copyright in title, disapproved, no such claim could be entertained, and the exclusive user of a title will only be protected on the general principles of common law and equity which prevent one man passing off his wares as those of another man. As was pointed out by Jessel, M. R., in Dicks v. Yates,[1118] it is conceivable that there might be a title in which there was copyright; for instance, if it was extremely long and elaborate, but since Dicks v. Yates there is no case in the books where a title has been protected on the ground of copyright.

Whether Protection is based on a Right of Property in the Title.—The great bulk of authority is to the effect that the right to prevent others passing off their literary works under the same or a similar title does depend on a right of property in the title as applied to a particular class of work, which right can only be acquired by user.[1119] This right is regarded as a chattel interest capable of assignment,[1120] and may be a partnership asset.[1121] In Walter v. Emmott,[1122] however, Cotton and Bowen, L.JJ., expressed a strong opinion that the right to prevent a deceitful use of title was not founded on a right of property in the title, but on the ground of deceit alone. It is submitted that the plaintiff in an action of this kind need not prove deceit on the part of the defendant, and that the right is strictly a proprietary right [208] which must have been acquired by user before the Court will intervene.

Knowledge of Existence and Value on part of the Public.—This is necessary before an author or proprietor of a literary or artistic work can acquire a right to the exclusive use of a title in connexion with works of a certain class. It is not sufficient that the title of a proposed book or magazine has been extensively advertised or that it has been registered, even although great expenditure has been incurred in the preparation and advertisement.[1123] Any one, it would seem, can seize the opportunity of another's advertisements and bring out a similar book under the same or a similar title, either before the publication of that other's book or immediately after its publication, and before it became known to the public as an actually existing publication which they have had an opportunity of reading and forming an opinion of on its merits. The sale of a few copies only will not establish a common law right in title.[1124] Not only must the work be well known to the public, but it must also be distinctively known under the title in which a proprietary right is claimed.[1125]

No right can be acquired by attaching an original title to an old work in which the publisher has no proprietary right. In Talbot v. Judges[1126] the plaintiffs published a work in which they had no copyright of any kind under a title of their own invention, "The Liberal and Radical Year-Book." The defendant published a similar work, intituled "The Liberal Year-Book." It was held that they were entitled to do so, as the plaintiffs could have no right in the title when the material was in no sense their own.

Non-user of title for a considerable period will leave it open to others to adopt the same title and to acquire a right therein to the exclusion of the original user,[1127] but no representation must be made, express or implied, that the subsequent publication is a continuation of the first. If the proprietor of a magazine [209] incorporates it with another publication, such as the John Bull with the Britannia, and intitules the future publication with a joint name such as the John Bull and Britannia, he can prevent any taking of the original titles either simpliciter or colourably altered, as, for instance, The True Britannia.[1128]

No Fraud need be Proved.—When the exclusive right to a title has been established, an innocent invasion is equally as actionable as one tainted with fraud or intent to deceive.[1129] It is a question what the public are likely to believe, not what it was intended they should believe.

Must be Calculated to Deceive.—The question is whether the man of ordinary intelligence is likely to be deceived, and purchase the later publication while intending to purchase the original. It is not sufficient to show that some thoughtless or stupid people have made mistakes and taken the one for the other.[1130] The exclusive right to the use of a title only extends so far as to prevent the whole or any part of the title being used in such a way as to deceive the public, to the injury of the proprietor of the title. Thus a part of the title may be taken and so used in conjunction with other words, that there can be no possibility of confusion, or the whole title may be taken and used for an entirely different class of work, or otherwise put before the public in such a way that mistake is practically impossible. Thus in questions of passing off, besides the similarity of title, the result depends on the peculiar circumstances under which the works are produced: the time and place of publication, appearance, such as similarity in print and binding and price, may all be of vital importance.

Cases in which an Injunction was Granted.—In Hogg v. Kirby[1131] the defendant was interested in the sale and profits of a magazine called The Wonderful Magazine. A dispute arose between him and the proprietor of the magazine, and the defendant thereupon published a magazine under the same title, described as New Series Improved. This publication was restrained. In Constable v. Brewster,[1132] a Scotch case, an interdict was granted on very [210] similar facts. In Chappell v. Sheard[1133] the plaintiffs published a song, the words of which were original, but set to an old American air, "Lillie Dale," in which there was no copyright. This song had become popular, and was sung at concerts by a Madame Thillon. The plaintiffs published their song under the title of "'Minnie,' sung by Madame Anna Thillon, written by George Linley," and the cover bore a lithographed drawing of Madame Thillon. The defendants set other words to the same air and published it as "Minnie Dale," sung by Madame Thillon, and their cover also bore a portrait of Madame Thillon. The defendants' song had, in fact, never been sung by Madame Thillon. An injunction was granted. In Chappell v. Davidson[1134] the same song was similarly pirated by one intituled "Minnie, dear Minnie," and an injunction was also granted. In Prowett v. Mortimer[1135] The True Britannia was restrained as tending to interfere with the sale of the plaintiff's paper, The John Bull and Britannia, which had incorporated the plaintiff's previous publication, The Britannia. In Clement v. Maddick[1136] the plaintiff owned a sporting periodical paper, intituled Bell's Life. The defendants were restrained from publishing a similar paper under the title, Penny Bell's Life. In both publications the name Bell was entirely pseudonymous. In Ingram v. Stiff[1137] the defendant was the proprietor of a weekly paper, The London Journal, and assigned all his interest therein to the plaintiff, covenanting not to publish any rival weekly paper. Two years afterwards the defendant published a daily newspaper, The Daily London Journal. The Court restrained him from continuing the publication, but their judgment seems to have gone on the ground of breach of covenant. In Clowes v. Hogg[1138] the proprietors of London Society were held entitled to an injunction against English Society, but this was also on the ground of a covenant between the parties. In Corns v. Griffiths[1139] the plaintiff published a weekly newspaper under the title, "Iron Trade Circular (Ryland's)." The defendant had for some considerable time published a weekly report headed "The Iron Trade (Griffith's Weekly Report)," but changed his title to "The Iron[211] Trade Circular (edited by Samuel Griffiths)," and published it in type and form very similar to the plaintiff's newspaper. The defendant's publication was restrained. In Metzler v. Wood[1140] the plaintiffs were the publishers of "Henry's Royal Modern Tutor for the Pianoforte." This work had a very large sale. The defendants took an old work, intituled "Jousie's Royal Standard Pianoforte Tutor," which had entirely fallen into disuse, and employed Henry to revise it, and then published it as "Henry's New and Revised Edition of Jousie's Royal Standard Pianoforte Tutor." In both publications the word "Henry's" was published in large letters, and was more conspicuous than any other part of the title. The Court granted an injunction. James, L. J., in his judgment, said:

"The defendants' title-page was calculated to deceive, and I cannot conceive any reasonable theory to explain the defendants taking an obsolete work, getting it revised by Mr. Henry, and putting Henry's name as the prominent and striking distinguishing mark of his work except that he intended to do that which the name was calculated to do, viz., to mislead the public into believing that when they were buying the defendants' work they were buying the plaintiffs'. If it was so calculated to mislead, the case of the plaintiffs is made out."

Cases where an Injunction was Refused.—In Spottiswoode v. Clarke[1141] Lord Cottenham, L. C., refused an interlocutory injunction in a case of two Pictorial Almanacks, where the covers were very similar and could hardly have been so accidentally. In a similar case to-day an injunction would probably have gone. In Jarrold v. Houlston[1142] an injunction was refused to the author of "Why and Because," in respect of a similar work intituled "The Reason Why." There was no such similarity or colourable imitation in the title as to support the claim. In Bradbury v. Beeton[1143] the proprietors of Punch craved an injunction against Punch and Judy. There was, however, no evidence that any one had been misled, and although the papers were similar in size and general appearance, the colour of the paper was slightly different, and the design on the cover was entirely different. Malins, V. C., refused an injunction. In Kelly v. Byles[1144] the plaintiff had [212] published numerous directories called "post office" directories. Among them was "The Post Office Directory of the West Riding of Yorkshire." An injunction was refused against the defendant who proposed to issue a directory under the title "Post Office Bradford Directory." The publications in no way resembled one another. The plaintiff claimed that he had acquired an exclusive use to the words "post office" in connection with a directory. It was held that he could have no such exclusive right. In Dicks v. Yates[1145] a serial story, entitled "Splendid Misery, or East End and West End, by C. H. Hazlewood," was being published in a magazine called Every Week. Another weekly, The World, commenced a serial story intituled "Splendid Misery, by the Author of Lady Audley's Secret, Vivian, &c." The two weekly papers were of an entirely different character, and it was held that there was nothing in the publication of the serial story in The World which was calculated to deceive. In Cowen v. Hulton[1146] the plaintiff was proprietor of The Newcastle Weekly Chronicle and The Newcastle Daily Chronicle. He claimed an exclusive right to the use of the word "Chronicle" in connection with newspapers in Newcastle, and craved an injunction against the sale in Newcastle of The Sporting Chronicle. The Court of Appeal, reversing the decision of North, J., refused an injunction. In Walter v. Emmott[1147] The Mail was published three days a week at 11 A. M., price twopence. The Court refused an injunction against The Morning Mail, price one halfpenny. Both papers were published in London. In Borthwick v. The Evening Post[1148] the proprietors of The Morning Post claimed an injunction against The Evening Post. The Court was of opinion that there was no probability of injury to The Morning Post since the papers were not competing papers. Bowen, L. J., in his judgment, said:

"He must be an extremely unintelligent person if he thinks that the Evening Post, which disclaims all connection with the Morning Post, and writes upon different topics and in a different style, is connected with the Morning Post. The idea would explode itself before he got half-way through the first page." [213]

The injunction was refused. The commonest form of passing off is by means of a similar title and binding, but any act which induces the public to believe that A's book is the book of B is equally actionable, and will be sustained. Thus for A to announce his book as a continuation of B's book,[1149] or in any other way to so advertise it as to induce the public to believe that it is B's work[1150] is actionable.

Malicious Criticism.—It would be actionable to publish of an author's work that which was obviously untrue; for instance, that it was an immoral or a libellous work, when no suggestion of immorality or libel could be found in it. Apart from absolute falsehood of this kind there is no limit to the range of criticism;[1151] a man is entitled to form what opinion he pleases of another's work, and to publish these opinions. So long as he confines himself to the work criticised and the author thereof as author, he has very full liberty of saying what he thinks.

It may be actionable to say that a man is the author of a work which is not his. The offence if anything would be defamation of the author.[1152]

Slander of Title.—No doubt an action would lie against any one publishing statements in disparagement of the owner's right to a literary or artistic work.[1153] Special damage is of the essence of such an action.

Author who has parted with Copyright is entitled to protect his Reputation.—Although a purchaser of copyright may do what he pleases with what he has purchased, he may not mutilate an artistic or literary work and present it to the public in its mutilated form as the work of the original author. The copyright in a law book was purchased by a bookseller. The author refused to edit a third edition, and the bookseller had the necessary alterations made for himself. The third edition was then published without any notice that it was prepared by any one other than the author. It contained numerous errors. In an action by the author against the bookseller, Lord Tenterden, C. J., in summing up, put it to the jury that if they were of [214] opinion that the third edition would be understood by those who bought it to have been prepared by the plaintiff, the plaintiff was entitled to a verdict; but if they were of opinion that persons using reasonable care would think that this third edition was not prepared by the plaintiff, their verdict should be for the defendant. The jury returned a verdict of five pounds for the plaintiff.[1154] The nature of the remedy is really an action for the defamation of the plaintiff's reputation as an author. The Court is slow to grant an interlocutory injunction in such an action. No doubt it would be done in an extreme case, for instance, if the owner of performing rights in a play inserted indecent or scandalous matter without the consent of the author, but the Court prefers to have the legal question as to whether the altered version is injurious to the plaintiff's reputation tried first. In Cox v. Cox[1155] the plaintiff had written a legal article for the purpose of insertion in the defendant's book. The defendant revised and shortened the article to a considerable extent, and the plaintiff applied for an injunction in Chancery to restrain the defendant from publishing the article in its mutilated form. Page Wood, V. C., refused an injunction, and, in his judgment, said:

"In respect to what was said about the plaintiff's reputation suffering from having the legal matter supplied by him published in a mutilated and erroneous form, according to Sir J. Clark's case,[1156] the loss of reputation, unless connected with property, was not a ground for coming to this Court, though it might be an ingredient for the Court to consider when there was property."

One might almost infer from this judgment that if the plaintiff had parted with his property no right of action lay for injury to his reputation. It must be observed, however, that this was a claim for an injunction in equity, and the judgment of Lord Tenterden in Archbold v. Sweet[1157] was not referred to. That and the subsequent cases make it clear that there is a right of action on the ground of injury to reputation alone, and that in urgent cases the Court will interfere by interlocutory injunction. In Gilbert v. Boosey[1158] the owner of a performing right in an opera [215] inserted without the permission of the author two songs, and one of the author's songs was left out. The opera was advertised and performed simpliciter as the plaintiff's opera without any mention of alterations. On an application for an interlocutory injunction, Denman, J., refused to interfere at such an early stage, but he intimated that if the songs had been indecent or such as would obviously damage the plaintiff's reputation, he might have granted an injunction. In Lee v. Gibbings[1159] the defendant had acquired the copyright in the plaintiff's "Autobiography of Edward, Lord Herbert of Cherbury." He published a condensed edition, on the title-page of which the plaintiff was stated simpliciter to be the author. The plaintiff alleged that the work was unscholarly and injurious to his reputation, and craved an interim injunction. Kekewich, J., refused the motion. The plaintiff's remedy, he said, was founded on libel by reason of the injury to his reputation. Of late years there had been no such thing as an injunction to restrain a libel (except in the case of a trade libel) on an interlocutory application or before the point had been submitted to a jury. He saw no reason for making an exception in the case before him, and he would express no opinion as to whether there was a libel or not.

The Court would restrain one who published a book falsely representing that it was the work of another.[1160]

Protection from Breach of Faith or Contract.—The relationship of parties may give rise to rights and obligations in reference to literary or artistic matter which could not exist as between strangers. Such rights and obligations are supported on the various grounds of express contract, implied contract, and breach of faith. As to express contract there is little difficulty, the ordinary rules of contract will apply. As to implied contract or breach of faith, these are really the same, only common law based its remedy on the former and equity on the latter. It usually arises in the case of a clerk or other employee between whom and the employer a confidential relationship exists. As regards employees, the law stated briefly is this, that during his employment he must do nothing which is [216] contrary to the interests of his employer; he may not in any way assist in the production of literary or artistic work which may compete with the work of his employer. After the termination of his employment, apart from express contract, he is entitled to compete with his late employer, and for that purpose may make use of the general knowledge and information which he acquired in his employment: but he may not for such purpose use any materials such as documents, notes, printing blocks, &c., which he acquired in his capacity of employee and a fortiori if he acquired them surreptitiously.

In Jovatt v. Winyard[1161] a veterinary surgeon employed a journeyman for the purpose of selling his medicine. While in such service the journeyman surreptitiously got access to his books of recipes and copied them. It was held that there was a breach of trust, and the journeyman was restrained from selling the medicines or printing or selling printed directions for their use. In Prince Albert v. Strange[1162] a workman, who was entrusted by the Prince Consort with certain plates for the purpose of reproducing privately drawings which had from time to time been made by Queen Victoria and the Prince Consort, in breach of the trust reposed in him sold impressions to the defendant, who published a descriptive catalogue of the drawings. Knight Bruce, V. C., granted an injunction against the publication of the catalogue. In Reuter's Telegram Co. v. Byron[1163] the defendants had for some time acted as agents in Australia of the plaintiff company, sending on and receiving telegraphic messages on their behalf. In the course of this agency they became acquainted with the cypher used by many of the company's customers. On the termination of their employment the defendants started a rival telegram business and sent circulars to the plaintiffs' customers, mentioning that they had their cyphers. On a motion to restrain the defendants from making use of the list of cyphers acquired in the plaintiffs' employment, Jessel, M. R., refused an interim injunction. He said:

"The Court will always restrain a man from publishing or divulging that which has been communicated to him in confidence. But this is a [217] totally different case. The plaintiffs do not here seek to restrain the defendants from publishing anything but from making use of knowledge acquired while the relation of principal and agent subsisted after that relation terminated."

In Lamb v. Evans[1164] the defendants had been employed by the plaintiff as canvasser for his trade directory. On the termination of their employment they published a rival directory and made use of blocks and notes which they had acquired in the plaintiff's employment. The Court held that this was an improper use for the defendants to make of materials so acquired. Bowen, L. J., in his judgment, said:

"It is not a question of copyright—that must be kept out of sight altogether—nor is it, on the other hand, a simple question of the absolute property at law in the documents themselves or in the blocks themselves. It is a question of whether the plaintiff, whatever the property in the documents may be or whatever the property in the materials may be, has not sufficient special property in them to entitle him to restrain the use of them against him when they had been obtained for his use by his agents in the course of their employment. That depends entirely, I think, on the terms upon which the employment was constituted, through which the fiduciary relation of principal and agent came into existence."

In commenting on Reuter's Telegram Co. v. Byron, the same judge said:

"I think if Reuter's case is to be judged by the result, it no doubt is right—and Sir George Jessel was generally right—but I do not think that the propositions reported in the Law Journal as laid down by him can be considered to be sound. It seems to me that as a matter at law or as a matter of equity, the conduct of the defendants in that case cannot be justified to the extent to which the learned judge is made by the report to justify it. If Reuter's case is cited as an authority for the propositions which the Master of the Rolls is there stated to have laid down, I am not prepared to follow it."

In Merryweather v. Moore[1165] a clerk while in the employment of a firm of engine-makers had made a table of dimensions of various types of engines. After he had left their employment he was restrained from publishing or communicating the table or its contents to any one. In Louie v. Smellie[1166] the plaintiff carried on a [218] business as a process server, the defendant while in his employment secretly made extracts from the plaintiff's register and index of agents and copies of the plaintiff's forms. He was restrained from making use of such extracts in competition with the plaintiff after he had left his employment and set up as a process server on his own account. Lindley, L. J., in his judgment, said:

"As to the law it has been clearly laid down in Lamb v. Evans. It is not new law, it is as old as the hills. The good faith that existed between employer and employed rendered it improper for the employed to make use of any information acquired by him during the period of the confidential relationship."

The injunction was granted in these terms:

"An injunction to restrain the defendant, his servants, and agents from making use of any copies or extracts from the plaintiff's register of agents, or index of agents, or any memoranda made or obtained by the defendant when in the plaintiff's employ relating to any person named in these books or either of them."

In Robb v. Green,[1167] the defendant having been employed as manager of the plaintiff's business, secretly copied a list of the names and addresses of his customers. On leaving the plaintiff's employment he set up a similar business, but was restrained from making use of the list of his late master's customers. In Gilbert v. Star Newspaper[1168] the members of a theatrical company taking part in the rehearsal of a new opera were held to be under an obligation not to disclose any information concerning it until it should be publicly performed, and the Court restrained a critique published in a daily newspaper on the ground that the material for it must have been unlawfully procured.