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States law, makes no provision for pecuniary penalties to be recovered by the copyright proprietor for infringement, unless the recovery of the value of infringing copies as in an action for conversion may be deemed such. But by a section of the Fine Arts Copyright Act68 which was left in force by the act of 1911, a penalty is provided for certain fraudulent ascriptions of authorship in the case of paintings, drawings, photographs, and negatives, and for altering such works without consent of the artist, or knowingly selling such altered work as and for the unaltered work of the author.

67. See supra § 370. 68.

Fine Arts Copyright Act (25 & 26 Vict. c 68 § 7).

"So far as I know there has been no decision upon clause during the forty-eight years this particular in which the Act has been in operation." Carlton Illustrators v. Coleman & Co., Ltd., [1911] 1 K. B. 771, 777.

or

69. [a] Alterations and fraudulent inscriptions; statutory provisions. "No Person shall do or cause to be done any or either of the following Acts; that is to say, First, no Person shall fraudulently sign or otherwise affix, cause to be signed or otherwise affraudulently fixed, to or Drawing, any Painting, or Photograph, Negative thereof, the itials, or Monogram: Secondly, any Name, InPerson shall fraudulently sell, publish, exhibit, or dispose of, or offer for Sale, Exhibition, or Distribution, any Painting, Drawing,

upon

or

no

or

graph, or Negative of a Photograph, or Photohaving thereon the Name, Initials, or Monogram of a Person who did not execute or make such Work: Thirdly, no Person shall fraudulently utter, dispose of, or put off, or cause to be uttered or disposed of, any Copy or colourable Imitation of any Painting. Drawing, or Photograph, or Negative of a Photograph, whether there shall be subsisting Copyright therein or not, as having been made or executed by the Author or Maker of the original Work from which such Copy or Imitation shall have been taken: Fourthly, where the Author or Maker of any Painting, Drawing, or Photograph, or Negative of graph, made either before or after a Photothe passing of this Act, shall have sold or otherwise parted with the Possession of such Work, Alteration shall afterwards be made if any therein by any other Person, by Addition or otherwise, no Person shall be at liberty, during the Life of the Author or Maker of without his Consent, such Work, knowingly to sell or publish, or offer to make for Sale, such Work or any Copies of such Works so altered as aforesaid, or of any Part thereof, as or for the unaltered Work of such Author or Maker: Every Offender under this Section shall upon Conviction forfeit to the Person aggrieved a Sum not exceeding Ten Pounds, or not exceeding double the Price, if full any, at which all such Copies, Engravings, altered Works shall have been sold Imitations, or or offered for Sale; and all Copies, Engravings, Imitations, such altered Works shall be forfeited to the Person, or the Assigns or legal Representatives of the Person, whose Name, Initials, or Monogram shall be so fraudulently signed or affixed thereto, or to whom such spurious or altered Work shall be so fraudulently or falsely ascribed as aforesaid: Provided, Penalties imposed by this Section always, that the shall not be incurred unless the Person whose Name, Initials, or Monogram shall be so fraudulently signed or affixed, or to whom such spurious or altered Work shall be so fraudulently or falsely ascribed as afore

or

This

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[$ 372 Fraud is essential to

statute is quoted below." impose liability for the penalty for a false ascription of authorship under either of the first three clauses of the statute, but not to liability under the fourth clause for alterations; it is sufficient if the act prohibited is done with knowledge." This remedy is given to the artist and not to the proprietor of the copyright," because the object of the statute is to protect the reputation of the artist which might be affected by the prohibited acts.73 The alteration must be material.74 The statute

affords no such remedy to the author of any other

within Twenty Years said, shall have been living at or the Time when the Offence may have next before been committed." right Act, 1862 (25 & 26 Vict. c 68). Fine Arts Copy70. Carlton Illustrators v. Cole

no

man & Co., Ltd., [1911] 1 K. B. 771. 71. Carlton Illustrators v. man & Co., Ltd., [1911] 1 K. B. 771; ColeCo., Ltd., 27 T. L. R. 65. Carlton Illustrators v. Coleman & [a] Construction of statute.-"It is an instance of that which appears something in many modern statutes namely, is expressly forbidden, and breach of that prohibition, making a penalty is imposed for a it an offence. There moral turpitude attaching to the act, may be but the doing intentionally knowingly of that which is forbidden fence and the person who does it an and by the Act is properly called an of'fraudulently' in clause 4 after 'offender.' The omission of the word clauses shews that the act aimed at express mention in the first three its in clause 4 need not be a fraudulent act." Carlton Illustrators Coleman & Co., Ltd., [1911] 1 K. B. 771, 779 (per Channell, J.). 72. Carlton Illustrators v. Coleman & Co., Ltd., [1911] 1 K. B. 771; Co., Ltd., 27 T. L. R. 65. Carlton Illustrators v. Coleman &

ants.

v.

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have

as

V.

73. Carlton Illustrators man & Co., Ltd., [1911] 1 K. B. 771. Coledefendants, who [a] Statute applied."Garth Jones prepared a fine line drawing for the tors of Wincarnis, for advertisement were the propriepurposes, and he The effect was to transfer the copywas paid for it. right in the drawing to the defendThere in the correspondence as to the mode was nothing specified nothing equivalent to a contract that in which the reproduced; drawing should there be was certainly reproduce it in the form of a colthe defendants should be entitled to oured poster. ply acquired the copyright in the The defendants simby contract any right to publish a reproduction of the drawing in any drawing, and they did not acquire particular form which other they would that owners of the copyright. the fendants reproduced the drawing in The and upon that coloured poster they dethe form of a large coloured poster, put, as there had been on the original drawing, the name of Jones. Garth They thereby undoubtedly represented that the coloured poster was the work of Garth Jones. any representation outside the adIf vertisement itself were required to bring the case within s. 7 of the Act, a statement was contained in a circular, issued by the defendants to chemists and others, that within the hoarding in London and the provnext two weeks practically every inces will contain a beautiful allegorical poster by Garth Jones.' They were therefore to a certain extent using the reputation of Garth Jones to enhance the value of their advertisement, and chemists should lay in a large stock to suggest that of Wincarnis. There can be no doubt therefore that in those two they represented the coloured poster ways

to be the work There has obviously been an alteraof Garth Jones. tion in the drawing, though I express no personal opinion about the artistic effect of it. at the drawing and the poster withNo one can look out seeing that the expression on the woman's face is entirely different in one from the other. also one or two minor alterations in There are relied upon by the plaintiff as conaddition to one which is especially stituting an alteration within the meaning of the Act, namely, putting the drawing into a coloured form. The evidence of Garth Jones and of the two artists who were called on behalf of the plaintiffs was to the effect that the alterations in the drawing were done in an inartistic way, and were such as would affect Garth Jones's reputation as an artist." Carlton Illustrators v. Coleman & Co., Ltd., [1911] 1 K. B. 771, 777 (per Channell, J.).

a

74.

For an

Carlton Illustrators v. Coleman & Co., Ltd., [1911] 1 K. B. 771. [a] "Alteration' is a word with somewhat wide meaning, and in construing it one must always have regard to the maxim de minimis non curat lex.' that there may be some alterations It is quite possible which would not within the_meaning of clause 4. be alterations instance, I do not think that signature would come within the enalteration in the form of the artist's actment. actment. To come within the enactIt would be an alteration not material to the object of the enment an alteration must be a material alteration having regard to he object with which the enactment was passed; and that which would be material in that sense would be an alteration which might affect the credit and reputation of the artist. To my mind that is what is prohibited. I do not think that it would affected the character and reputation be necessary to find in any particular case that the alteration of the artist; it is sufficient if the had alteration is of such a character that it might affect his character and reputation." Carlton Illustrators V. Coleman & Co., Ltd., [1911] 1 K. B. drawing 771. 779 (per Channell, J.). [b] Coloring.-"It is that merely contended putting colour which to would be an alteration within the uncoloured clause. I do not think that I can say that that would necessarily be so in all cases. depend upon the particular circumTo my mind it must stances of each case whether or not it amounts to a material alteration. I can quite appreciate that an artist might say that if he had understood that his drawing was going to be put into the form of a coloured poster he would have worked out different style of drawing and made it appropriate for that purpose. may be true that in the majority of It cases the publication of which has been put into the form of a drawing a coloured poster with the artist's name upon it in such a represent that he is responsible for way as to the poster would be an within the meaning of clause 4. One alteration must remember that the owner

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class of works, but the common law affords a remedy to one to whom authorship is falsely ascribed.75 Under former statutes penalties recoverable by the owner of the copyright were prescribed for unlawful importation of copyright works and for infringement of dramatic works," musical works,78 engravings and prints, paintings, drawings, and photographs.80

[§ 373] 3. Under Canadian Statutes. Under the Canadian statute a penalty of not less than ten cents nor more than one dollar for each infringing copy or sheet found in the infringer's possession may be recovered, one half being to the use of Canada.81

83

[374] J. Mechanical Musical Devices-1. Royalty under Compulsory License. Where a manufacturer of mechanical musical devices has availed himself of the compulsory license provisions of the statute,82 but fails to pay to the copyright proprietor within thirty days after written demand the full sum of royalties due at the date of such demand at the statutory rate of two cents for each part manufactured, the amount due may be recovered by action in which the court may award taxable costs to plaintiff, and a reasonable counsel fee, and the court may, in its discretion, enter judgment for any sum in addition, over the amount found due as royalty, not exceeding three times such amount.86 Failure of the owner of the copyright to file in the copyright office a notice that he has used or licensed others to use his musical work on mechanical devices is made a complete defense to any suit or proceeding for infringement of such

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the copyright has an undoubted right, subject to the provisions of this clause, to make any alteration he pleases in the drawing, provided that he thereby makes no false representation to the public as to the authorship of the drawing. If it was originally a coloured drawing the putting of different colours on it would obviously be an alteration within clause 4. But the mere addition of colour to a drawing which has got no colour on it would not, I am inclined to think, necessarily in all cases be an alteration within the meaning of the clause, although in the majority of cases it probably would be so. If it could be said that by no possibility could it affect the credit and reputation of the artist, or if it was obvious that it was not represented that the colour was the work of the artist, but that the design only was by the artist and the colour by somebody else, then case would not come within the clause. Upon the facts of this case, the colour being a very important element in the poster, I come to the conclusion that there is such an alteration in the drawing as to bring the case within clause 4." Carlton Illustrators v. Coleman & Co., Ltd., [1911] 1 K. B. 771, 780 (per Channell, J.).

the

75. Carlton Illustrators v. Coleman & Co., Ltd., [1911] 1 K. B. 771. Common law as to alteration and ascription of authorship see supra §§ 24, 38.

76. Ex p. Beal, L. R. 3 Q. B. 387; Cooper v. Whittingham, 15 Ch. D. See infra § 443.

501.

77. St. 3 & 4 Wm. IV c 15 § 2. [a] The "penalty" is not a true penalty, but a "statutory assessment of the damages in the case of small injuries, where it is difficult or impossible to prove greater damages." Adams v. Batley, 18 Q. B. D. 625, 629 [dist Saunders v. Wiel, [1892] 2 Q. B. 18]. See also Fitzball V. Brooke, 6 Q. B. 873, 51 ECL 873, 115 Reprint 329 (holding the statutory penalty to be a "debt").

78. Copyright (Musical Compo

87

copyright. But the application of this to a proceeding to recover royalty due under the compulsory license provisions may be doubted, as such a proceeding is not one "for infringement," although it may be that the provision was intended to reach such a case. Where defendant relies on such compulsory license provisions, but has failed to serve and file the required notice of intention to use the copyrighted work,88 the court in its discretion, in addition to the statutory royalty, may award plaintiff a further sum not exceeding three times the amount of the statutory royalty by way of damages and not as a penalty,89 and also a temporary injunction until the full amount of the award is paid.90

93

[375] 2. Infringing Devices. Where the owner of a musical copyright has not himself used or licensed others to use the copyrighted work for the purpose of mechanical reproduction, there is no compulsory license authorizing others to do so, and such use by others is an infringement.91 There are no special provisions governing the remedy for such infringements, and accordingly the general rules already stated as to injunctions,92 accounting for profits, damages, impounding,95 forfeiture and destruction9 are applicable. But where the owner of a musical copyright has used or licensed others to use the copyrighted musical work for the purpose of mechanical reproduction, then in the case of infringement by unauthorized manufacture, sale, or use of mechanical devices, it is provided that the court may grant an injunction on such terms as it may impose, and that plaintiff shall be entitled to recover in lieu of profits and damages the statu

96

97

sitions) Act, 1888 (51 & 52 Vict. c 17 § 3).

[a] Statute applied.-Where the proprietor, tenant, or occupier of any place of entertainment at which an unauthorized performance of a musical composition takes place does not "wilfully cause or permit such unauthorized performance knowing it to be unauthorized," he is by virtue of 3 of the Copyright (Musical Compositions) Act, 1888, not liable to any penalties or damages in respect thereof; and in such a case an injunction will not be granted against him unless he threatens and intends to continue the performance. Sarpy v. Holland, [1908] 1 Ch. 443 [rev on other grounds but this point affirmed [1898] 2 Ch. 198].

79. Engraving Copyright

Act,

1734 (8 Geo. II c 13 § 1); 17 Geo. III c 57; West v. Francis, 5 B. & Ald. 737, 7 ECL 402, 106 Reprint 1361.

[a] Under the earlier statute the seller of a piratical copy of an engraving or print was only liable to the penalties and forfeitures provided when he knew that the copy had been produced without the consent of the proprietor of the copyright.

[b] Each infringing copy constitutes a separate offense under § 6 of the English copyright act. Hildesheimer v. Faulkner, [1901] 2 Ch. 552. 1 BRC 755.

83. Act March 4. 1909 (35 U. S. St. at L. 1075 c 320 § 1 (e)). 81. Ashdown v. Lavigne, 2 Que. L. 361. See also supra § 338. 82. 84.

See supra § 323.

Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 1 (e)). Costs generally see infra § 436.

85. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 1 (e)).

86. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 1 (e)).

87. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 1 (e)); Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849 [aff 241 Fed. 360].

88. See supra § 323.

89. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (e)).

90. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (e)). See supra § 323.

91.

92.

93.

See supra §§ 341-352. See supra §§ 353-355.

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95.

See supra § 365.

See supra § 367.

97. Act March 4. 1909 (35 U. S. St. at L. 1075 c 320 § 25 (e)).

96. West v. Francis, 5 B. & Ald. 737. 7 ECL 402, 106 Reprint 1361; Gambart v. Sumner, 5 H. & N. 5, 157 Reprint 1078.

[b] Unauthorized sale of lawful copies.-The statute (17 Geo. III c 57) applies only to impressions of engravings pirated from other engravings, and not to prints taken from a lawful plate. Murray V. Heath, 1 B. & Ad. 804, 20 ECL 698, 109 Reprint 985.

80. St. 25 & 26 Vict. c 68 §§ 6. 9. 11; Ex p. Beal, L. R. 3 Q. B. 387; Tuck v. Priester, 19 Q. B. D. 629; Ex p. Graves, L. R. 3 Ch. 642; Hildesheimer v. Faulkner, [1901] 2 Ch. E52, 1 BRC 755; Baschet v. London Illustrated Standard Co., [1900] 1 Ch. 73; Nicholls v. Parker, 18 T. L. R. 459.

[a] The penalties are in the nature of a fine for a criminal offense, and not of a civil debt. Ex p. Graves, L. R. 3 Ch. 642.

[a] Statutory provisions.-"Whenever the owner of a musical copyright has used or permitted the use of the copyrighted work upon the parts of musical instruments serving to reproduce mechanically the musical work, then in case of infringement of such copyright by the unauthorized manufacture, use, or sale of interchangeable parts, such as disks, rolls, bands, or cylinders for use in mechanical music-producing machines adapted to reproduce the copyrighted music, no criminal action shall be brought, but in a civil action an injunction may be granted upon such terms as the court may impose, and the plaintiff shall be entitled to recover in lieu of profits and damages a royalty as provided. in section one, subsection (e), of this Act: Provided also, That whenever

tory royalty.98 Whether the effect of this is to confine plaintiff to such royalty and to deprive him of the right to recover actual damages and profits in such cases is not altogether clear.99

[376] K. Rules for Practice and Procedure. Rules and regulations for practice and procedure in actions for the enforcement of the civil remedies given by the statute are required to be prescribed by the supreme court.1 Pursuant to this direction the supreme court has adopted a code of rules for copyright cases2 which provide, inter alia, that the existing equity rules, so far as applicable, shall be enforced in proceedings for infringement of copyright.3

[377] L. Nature and Form of Action-1. Under Act of 1909. By express provisions of the statute the proceedings for an injunction, damages, profits, and those for seizure of infringing copies, plates, molds, matrices, etc., may be united in one action;* and any court given jurisdiction by the act may proceed, in any action, suit, or proceeding instituted for violation of any provision of the act to enter a judgment or decree enforcing the statutory remedies.6 Under these provisions composite actions may be brought which it is difficult to classify as between law and equity. But where a proceeding seeks to enjoin an infringement, it will be treated as an equity suit, although it also seeks damages for the infringement, particularly where the parties have adopted and followed, without objection, the form of a proceeding in equity.

[ 378] 2. Under Prior Statutes-a. In General. Under former statutes the remedy for infringement

the

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13

18

14

[§ 379] b. For Forfeitures and Penalties. The remedy to enforce the statutory forfeitures and penalties long remained in doubt, and the decisions were conflicting and uncertain until the supreme court finally settled the law just before it was repealed and the present statute enacted. The forfeitures and penalties could not of course be enforced in equity.15 It was variously held that replevin would," and that it would not," lie to enforce the forfeiture, and that a writ of seizure, not strictly a writ of replevin, although in the nature of it, could be framed and used in aid of the court's jurisdiction." It was also held that separate actions were necessary to enforce the forfeiture and to recover the penalties-first an action in replevin, or of that nature, to seize and condemn the infringing copies, and then an action of assumpsit or debt to recover the penalties for the copies previously seized;19 and that an action to recover the penalties brought before or at the same time as the action of replevin was premature and could not be maintained.20 It finally became settled that a separate action for the penalties could not be maintained after judgment of forfeiture in a replevin action,21 and that the statute contemplated only a single action in the nature of replevin in which the plates and sheets should be seized and forfeited and the penalty recovered.22 Both in form

9. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 10.

See supra §§ 341-355.

11. See supra §§ 340, 363.

any person, in the absence of a li- 8. L. A. Westermann Co. v. Discense agreement, intends to use a patch Printing Co., 233 Fed. 609, 147 copyrighted musical composition CCA 417. upon the parts of instruments serving to reproduce mechanically the musical work, relying upon the compulsory license provision of this Act, he shall serve notice of such intention, by registered mail, upon copyright proprietor at his last address disclosed by the records of the copyright office sending to the copyright office a duplicate of such notice; and in case of his failure so to do the court may, in its discretion, in addition to sums hereinabove mentioned, award the complainant a further sum, not to exceed three times the amount provided by section one, subsection (e), by way of damages, and not as a penalty, and also a temporary injunction until the full award is paid." Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (e)).

98. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (e)). 99. See supra § 360.

1. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25).

2. Supreme Court Copyright Rules (Copyright Office Bul. No. 14 p 33 et seq). And see Tully v. Triangle Film Corp., 229 Fed. 297.

3. Supreme Court Copyright Rules (Copyright Office Bul. No. 14) rule

1.

See Equity Rules [198 Fed. v; 201 Fed. v].

12. Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; Muddock v. Blackwood, [1898] 1 Ch. 58; Newton v. Cowe, 4 Bing. 234, 13 ECL 482, 130 Reprint 759; Roworth v. Wilkes, 1 Campb. 94; Cocks v. Purdy, 5 C. B. 860, 57 ECL 860, 136 Reprint 1118; Cary v. Longman, 1 East 358, 102 Reprint 138; Beckfend v. Hood, 7 T. R. 620, 101 Reprint 1164.

Action on the case see Case, Action on 11 C. J. p 1.

13. Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39.

Trespass see generally Trespass [38 Cyc 985].

14. Werckmeister v. American Tobacco Co., 207 U. S. 375, 28 SCt 124, 52 L. ed. 254 (decided Dec. 16, 1907). 15. Werckmeister v. American Tobacco Co., 207 U. S. 375, 28 SCt 124, 52 L. ed. 254; Stevens v. Gladding, 17 How. (U. S.) 447, 15 L. ed. 155; Falk v. Curtis Pub. Co., 102 Fed. 967 [aff 107 Fed. 126, 46 CCA 201]; Trow City Directory Co. v. Curtin, 36 Fed. 829; Chapman v. Ferry, 12 Fed. 693, 8 Sawy. 191; Stevens v. Cady, 23 F. Cas. No. 13,395, 2 Curt. 200 (where Curtis, J., held that the proprietor was left, by the act, to his remedy at law by trover or replevin). See also infra § 407.

[a] Analogy to patent cases. "There is such an analogy between actions under the patent laws and actions under copyright laws that like rules of practice should be ap-ferring equitable jurisdiction in matplied in both classes of cases." Scribner v. Straus, 130 Fed. 389. But see supra § 265.

[a] Act February 15, 1819, conter of copyright on federal courts, did not extend their equitable powers so that they could make a decree

4. Act March 4, 1909 (35 U. S. St. for the penalties imposed by Act at L. 1075 c 320 § 27).

5. See infra § 381.

6. Act March 4, 1909 (35 U. S. St.

at L. 1075 c 320 § 26).

7. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417.

Febr. 3, 1831 (4 U. S. St. at L. 436), for a violation of the act. Stevens v. Gladding, 17 How. (U. S.) 447, 15 L. ed. 155.

[b] Under former English statutes recovery of the pirated copies could be had only at law. Delf v.

Delamotte, 3 Kay & J. 581, 69 Reprint 1241

16. Morrison v. Pettibone, 87 Fed.

330.

17. Hills v. Hoover, 142 Fed. 904; Gustin v. Record Pub. Co., 127 Fed. 603; Rinehart v. Smith, 121 Fed. 148 [foll Falk v. Curtis Pub. Co., 102 Fed. 967 (aff 107 Fed. 126, 46 CCA 201)].

18. Hills v. Hoover, 220 U. S. 329, 31 SCt 402, 55 L. ed. 485, AnnCas 1912C 562; Richardson v. Bosselman, 164 Fed. 781; Stern v. Remick, 164 Fed. 781 [writ of error dism 215 U. S. 585, 30 SCt 404, 54 L. ed. 338].

19. Falk v. Curtis Pub. Co., 107 Fed. 126, 46 CCA 201 [aff 102 Fed. 967].

20. Falk v. Curtis Pub. Co., 107 Fed. 126, 46 CCA 201 [aff 102 Fed. 967].

21. American Lith. Co. v. Werckmeister, 221 U. S. 603, 31 SCt 676, 55 L. ed. 873; Hills v. Hoover, 220 U. S. 329, 31 SCt 402, 55 L. ed. 485, AnnCas1912C 562; Werckmeister v. American Tobacco Co., 207 U. S. 375, 28 SCt 124, 52 L. ed. 254 [aff 144 Fed. 1023, 74 CCA 682].

[a] Replevin not prosecuted to judgment.-An action for penalties would not lie after replevin brought for infringing articles and after delivery under such writ of articles to plaintiff, although suit was not prosecuted to judgment. Hoover, 220 U. S. 329, 31 SCt 402, 55 L. ed. 485, AnnCas1912C 562.

Hills v.

22. American Lith. Co. v. Werckmeister, 221 U. S. 603, 31 SCt 676, 55 L. ed. 873; Hills v. Hoover, 220 U. S. 329, 31 SCt 402, 55 L. ed. 485, AnnCas1912C 562; Werckmeister v. American Tobacco Co., 207 U. S. 375, 28 SCt 124, 52 L. ed. 254 [aff 144 Fed. 1023, 74 CCA 6821 (reviewing cases); Bolles V. Outing Co., 175 U. S. 262, 20 SCt 94, 44 L. ed. 156; Stern V. Remick, 164 Fed. 781 [writ of error dism 215 U. S. 585, 30 SCt 404, 54 L. ed. 338]; Tobacco American Co. V. Werckmeister, 146 Fed. 375, 76 CCA 647

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§§ 379-380]

COPYRIGHT AND LITERARY PROPERTY

and substance the action is a civil action.28 No action or [380] M. Conditions Precedent. proceeding can be maintained for infringement of copyright in any work until the provisions of the statute with respect to the deposit of copies and registration of the work have been complied with;24 such registration and deposit of copies is a condi

[aff 138 Fed. 162, and aff 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595]; Hegeman v. Springer, 110 Fed. 374, 49 CCA 86 [aff 189 U. S. 505, 23 SCt 849, 47 L. ed. 921] (not an action of replevin, but an action on the statute); Bolles Outing Co., 77 Fed. 966, 23 CCA 594, 46 LRA 712 [aff 175 U. S. 262, 20 SCt 94, 44 L. ed. 156 (aff 89 Fed. 1014 mem, 32 CCA 604 mem)].

"The cases of American Tobacco Co. v. Werckmeister, 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 AnnCas 595, and Werckmeister v. American Tobacco Co., 207 U. S. 375, 28 SCt 124, 52 L. ed. 254. related to the same copyrighted painting that is involved here. In the first case there was a recovery in an action in the nature of replevin of 1196 sheets containing second action The copies. brought to recover the money penalties for the sheets seized in the former action. The question was whether there could be two actions against the same party; one for the seizure of the sheets forfeited and another for the penalties, and was held 'that the statute contemplated but a single action in which the defendant should be brought into court, the plates and sheets seized and adjudicated to the owner of the copyright, and the penalty, provided for by the statute, recovered.' Hills v. Hoover, 220 U. S. 329. 31 SCt 403, 55 L. ed. 485, AnnCas1912C action 562. These decisions did not involve that an the determination could not be brought to enforce the forfeiture prescribed by the statute in a case of the sale of copies of a copyrighted painting where there was no finding in possession, and hence no proceeding to forfeit copies so found. Here, there is no attempt to recover in a second action penalties which should have been embraced in a former action; and the recovery is based simply upon the forfeiture inCo. V. curred by sales of the prohibited American Lith. copies." Werckmeister, 221 U. S. 603, 607, 31 SCt 676. 55 L. ed. 873.

On [a] "Found in his possession."(1) In Thornton v. Schreiber, 124 U. S. 612, 8 SCt 618, 31 L. ed. 577, that the words it was contended "found in his possession" are to be construed as referring to the finding the expression of the jury; that means simply that, where the sheets are ascertained by the finding of the jury to have been at any time in the possession of the person who comthe wrongful act, such permitted son shall forfeit one dollar for each sheet so ascertained to have been in his possession, Miller, J., said: "We, however, think that the word 'found' accrues means that there must be a time beof action the cause fore

at which they are found in the possession of the defendant." (2) In Falk v. Curtis Pub. Co., 107 Fed. 126, 128, 46 CCA 201, this holding was construed to mean that, before the for the penalty would lie, action there must be a finding of articles in the possession of defendant by means of a proceeding instituted for the express purpose of seizure, and that consequently an action of assumpsit, brought prior to the seizure as an independent proceeding, was premature and could not be maintained. (3) But in Bolles v. Outing Co., 77 Fed. 966, 23 CCA 594, 46 LRA 712, the case of Thornton v. Schreiber, supra, was held to mean only that the infringing articles must be found in the possession of defendant before the penalty could be imposed, and that the section contemplated a single suit to enforce both remedies

tion precedent to any right of action for infringement.25 This requirement is jurisdictional.26 A suit in equity for an injunction is an action or proceed27 Deposit ing within the prohibition of the statute.2 of the two copies in the mail, addressed to the Forregister of copyrights at Washington, D. C., is a sufficient compliance to support an action.28 pra § 174.

[a] "No hardship to the owner of tion here followed. At the time the person entitled to copyright publishes copyright results from the construchis work with the notice required. possession and could at once deposit presumably he has copies of it in his in the mail the two copies required, addressed as the statute prescribes. That act on his part would seem to be a compliance with section 12, sufficient to entitle him to maintain his tion is imperative." New York Times action or proceeding. But, until he Co. v. Star Co., 195 Fed. 110, 112. does this, the prohibition of that sec

[b] Where registration is wrongfully refused by the copyright office, all statutory requirements having been performed by the claimant, he may maintain an action for infringement. White-Smith Music Pub. Co.

v. Goff, 187 Fed. 247, 109 CCA 187. 26. New York Times Co. v. Star Co., 195 Fed. 110, 112.

"The subject of statutory copyright of Congress, it had full power to rebeing one wholly within the powers strict in any way it chose the maintaining of such actions or proceedings in the courts as are concerned with the subject of infringement of the rights secured by such statute. A prohibition so broad as this goes to the jurisdiction of the courts to entertain such action or proceedings, and if the prohibition were operative when the injunction was served, the latter would be void, because made

[graphic]

court could not have jurisdiction." tained, and of which, therefore, the New York Times Co. v. Star Co., supra.

[a] Rule applied.-A temporary injunction, or a restraining order contained in an order to show cause, and its violation cannot be punished New York Times Co. granted before deposit of the reas a contempt. quired copies in the mails is void, v. Star Co., 195 Fed. 110.

27. Thompson v. Hubbard, 131 U. S. 123, 9 SCt 710, 33 L. ed. 76; New York Times Co. v. Sun Printing, etc., Assoc., 204 Fed. 586, 587, 123 CCA 195 Fed. 110; Social Register Assoc. 54; New York Times Co. v. Star Co., v. Murphy, 128 Fed. 116.

"It is contended that as soon as the copyright was secured and before the copies were mailed, as required by law, the complainant acquired a right which was entitled to the protection of a court of equity. Such a construction wholly ignores the provision for mailing. It may never be complied with, and still, if the complainant's contention be correct, an equity suit may be commenced, an injunction issued and an accounting had. How can a court of plete right by a suit which the law equity protect an inchoate or incomsays cannot be maintained? We are unable to assent to the proposition as complainant contends, 'a suit in fringement of a copyright, but rather, that this is not an action for inequity by a party aggrieved, for an violation of the complainant's copyBut this statement of the action is injunction to prevent and restrain the right secured by the copyright law.' There can be no doubt as to the charmerely a change in nomenclature. action. As before acter of the determine an action for infringement is omitted." New York Times Co. v. stated, not one of the criteria which Sun Printing, etc., Assoc.,_supra.

28. New York Times Co. v. Star Co., 195 Fed. 110.

merly, in England, registration at Stationers' Hall
was likewise a condition precedent to the mainte-
nance of an action for infringement,29 but this re-
quirement has been abolished.30 The necessity of
inserting a notice of copyright on published copies.
has been considered in another place.31
and refusal were not conditions precedent to main-
A demand
tenance of an action to enforce forfeitures and to
recover penalties under the prior law.32

[381] N. Jurisdiction33—1. Federal Courts. The
federal district courts have original jurisdiction of
all suits at law or in equity arising under the copy-

29.

30.

31. 32.

See supra § 225 et seq.
See supra § 220.

See supra §§ 194-197; 212-219.
Hegeman v. Springer, 110 Fed.
374, 49 CCA 86 [aff 189 U. S. 505, 23
SCt 49, 47 L. ed. 921].

33. Jurisdiction to enforce injunctions see supra 352.

34. Judicial Code (36 U. S. St. at L. 1100 c 231 § 24 par 7); Harper v. Klaw, 232 Fed. 609; Photo-Drama

Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42; Wooster v. Crane, 147 Fed. 515, 77 CCA 211; Lederer v. Rankin, 90 Fed. 449.

35. Harms v. Stern, 229 Fed. 42, 49, 145 CCA 2 [cit Cyc]; Dixon v. Corinne Runkel Stock Co., 214 Fed. 418; Photo Drama Motion Picture Co. v. Social Uplift Film Corp., 213 Fed. 374 [aff 220 Fed. 448, 137 CCA__42]; Stern v. Remick, 164 Fed. 781 [writ of error dism 215 U. S. 585, 30 SCt 404, 54 L. ed. 338]; Lederer v. Rankin, 90 Fed. 449; Hoyt v. Bates, 81 Fed. 641; Taft v. Stephens Lith., etc., Co., 37 Fed. 726; Boucicault v. Hart, 3 F. Cas. No. 1.692, 13 Blatchf. 47; Jollie V. Jaques, 13 7,437, 1 Blatchf. 618; Pierpont v. F. Cas. No. Fowle, 19 F. Cas. No. 11,152. 2 Woodb. & M. 23; Jewelers' Mercantile Agency v. Jewelers' Weekly Pub. Co., 155 N. Y. 241 49 NE 872, 63 AmSR 666, 41 LRA 846 [rev 84 NYS 41]; Dudley v. Mayhew, 3 N. Y. Hun 12, 32 9; O'Neill v. General Film Co., 171 App. Div. 854, 157 NYS 1028 [mod 152 NYS 599]; Outcault v. Lamar, 135 App. Div. 110, 119 NYS 930; Potter v. McPherson, 21 Hun (N. Y.) 559; Stern v. Carl Laemmle Music Co., 74 Misc. 262, 133 NYS 1082 [aff 155 App. Div. 895 mem, 139 NYS 1146 mem]; Bobbs-Merrill Co. v. Universal Film Mfg. Co., 160 NYS 37.

[a] In determining whether an action arises under the copyright laws (1) and is therefore within the exclusive jurisdiction of the federal courts, or whether it is an action based on plaintiff's common-law

rights in an unpublished manuscript, and therefore within the jurisdiction of a state court, the court's examination is limited to the allegations of the complaint. mle Music Co., 74 Misc. 262, 133 Stern v. Carl LaemNYS 1082 [aff 155 App. Div. 895 mem, 139 NYS 1146 mem] answer alleged that defendant had (where the published and copyrighted a song as proprietor, but it was nevertheless held that the action did not arise under the copyright laws). (2) Where a complaint is based on an alleged common-law property right as author, and the answer alleges copyright by defendant as proprietor, a dismissal of the complaint on ground that plaintiff had no commonthe law property is not an adjudication as to the validity of the copyright. Stern v. Carl Laemmle Music Co., supra. (3) But a decision for plaintiff in such a case denies a federal right specially set up, so as to support an appeal to the United States supreme court. 223 U. S. 424, 32 SCt 263, 56 L. ed. Ferris v. Frohman, 492. (4) "The question as to whether the State court has jurisdiction depends upon the allegations of the complaint, and unless it appears

[§§ 380-381

right laws. The jurisdiction of the federal courts in cases arising under the copyright laws is exclusive; the state courts have no jurisdiction of such cases. 35 But except in cases where the jurisdiction is supported by the requisite diverse citizenship of the parties,36 the jurisdiction of the federal courts is dependent on the existence of a controversy arising under the federal law; if there is no such controversy the federal court has no jurisdiction.37 action or suit to enforce any right secured by the copyright laws is within the jurisdiction of the federal courts,38 such as an action to recover the dam

therefrom that the plaintiff seeks to
enforce a right based upon the copy-
right laws of the United States, the
Federal court would have no jurisdic-
tion of the case in the absence of a
State courts would have exclusive
diversity of citizenship, and the
jurisdiction, even though the answer
presents a defense based upon the
copyright laws."
[foll Stern v. Carl Laemmle Music
Outcault v. Lamar,
135 App. Div. 110, 112, 119 NYS 930
Co., supra].
dependent only upon the allegations
(5) "The jurisdiction of
this court is beyond question, being
in the bill that the plaintiff is the
owner of a statuory copyright and
that that copyright has been
fringed."
in-
Photo Drama Motion Pic-
ture Co. v. Social Uplift Film Corp.,
213 Fed. 374, 375 [aff 220 Fed. 448.
137 CCA 42]. (6) The analogy of the
removal causes is applicable.
v. Carl Laemmle Music Co., 74 Misc.
Stern
262, 133 NYS 1082 [aff 155 App. Div.
895 mem, 139 NYS 1146 mem].
36.

165, 15 L. ed. 328; Royal Sales Co. v.
Gaynor, 164 Fed. 207; Scribner v.
Little v. Hall, 18 How. (U. S.)
Straus, 147 Fed. 28. 78 CCA 122 [aff
SCt 735, 52 L. ed. 10941; Scribner v.
139 Fed. 193, and aff 210 U. S. 352, 28
Straus, 130 Fed. 389; Silver v. Holt,
84 Fed. 809.
[11 Cyc 866].
See generally Courts

37. Scribner v. Straus, 210 U. S.
352, 28 SCt 735, 52 L. ed. 1094 [aff
193)]; Little v. Hall, 18 How. (U.
147 Fed. 28, 78 CCA 122 (aff 139 Fed.
S.) 165, 15 L. ed.
Klaw, 232 Fed. 609; Harms v. Stern,
328; Harper v.
229 Fed. 42, 49, 145 CCA 2 [cit Cycl;
New Fiction Pub. Co. v. Star Co.,
220 Fed. 994; Photo-Drama Motion
Corp., 220 Fed. 448, 137 CCA 42 [aff
Picture Co. V. Social Uplift Film
213 Fed. 374]; Royal Sales Co. v.
Crane, 147 Fed. 515, 77 CCA
Gaynor, 164 Fed. 207; Wooster v.
Scribner
211:
v. Straus,
Maloney v. Foote, 101 Fed. 264; Lar-
130 Fed. 389;
rowe-Loisette v. O'Loughlin, 88 Fed.
896; Silver
Hoyt v. Bates, 81 Fed. 641; Corbett
Holt, 84 Fed. 809;
v. Purdy, 80 Fed. 901; Ladd v. Ox-
nard, 75 Fed. 703; Daly v. Brady, 69
Fed. 285.

V.

right law. (1) Where an
[a] Controversies under copy-
tion
associa-
of publishers of copyrighted
books printed notices
the books
therein that
were sold on
that prices be maintained as pro-
condition
vided by the regulations
American
of
Publishers'
the
but there was no statement in the
Association,
notice or blanks used in the sale of
the books of any claim of right un-
der the copyright law, the question
of the liability of a purchaser of
such books for failure to maintain
prices by reason of such notice was
not one
of infringement of copy-
right, but as to whether the publish-
by
ers were entitled to relief in equity
rights, independent of their statu-
virtue of their common-law
tory copyright.
147 Fed. 28, 78 CCA 122 [aff 139 Fed.
Scribner v. Straus,
193, and aff 210 U. S. 352, 28 SCt 735,
primary and controlling purpose of
52 L. ed. 1094]. (2) 'A suit, the
by the copyright laws which is being
which is to enforce a right secured
infringed by the defendants, is a

An

suit under those laws, and within the jurisdiction of the federal Circuit Courts, although it incidentally draws in question the validity, interpretation, and effect of a contract through which the complainant derives title." Wooster v. Crane, 147 Fed. 515, 516, 77 Whether the owners of the copyright CCA 211. (3) in a book can have relief in a court of equity by virtue of their rights, courts cannot consider in a suit to independent of statutory copyright, sale, is a question which the federal in view of an alleged conditional restrain the sale of the book at retail at less than the fixed price, in which suit there is damages in the sum of two thousand no claim of dollars and no diversity of citizenship. Scribner v. Straus, 210 U. S. 352, 28 SCt 735, 52 L. ed. 1094. A suit which, although charging in(4) fringement and praying an injunction and account, is in reality merely a suit to enforce a contract between an author and a publisher is not a case arising under laws, so as to be within the juristhe copyright diction of the federal courts. Šilver v. Holt, 84 Fed. 809.

are

[b] Copyright invalid.—(1) Where the jurisdiction of a federal court in a suit depends entirely on the alleged infringement of a copyright, laws, no estoppel on the part of deand the thing so alleged to be infringed is not within the copyright fendant to deny such fact can__ confer jurisdiction. action for infringement that a copyGaynor, 164 Fed. 207. (2) Royal Sales Co. v. federal court has determined in an After a relief on other grounds. right is invalid, it has no jurisdiction, as between parties who citizens of the same state, to grant Loisette v. O'Loughlin, 88 Fed. 896. Larrowe(3) Where the parties are residents of the same state, and plaintiff fails to make out his title to the copyright, the court has no jurisdiction to restrain the use of the title of the work on principles relating to the good will of trades and the law of unfair competition. Jollie v. Jaques, 13 F. Cas. No. 7,437, 1 Blatchf. 618. 38. Harper v. Klaw, 232 Fed. 609; Wooster v. Crane, 147 Fed. 515, 77 CCA 211; Falk v. Curtis Pub. Co., 100 Fed. 77 (holding that the former circuit, as distinguished from district, court had jurisdiction of action for penalties).

defense. A suit by the owner of the [a] License contract pleaded as copyright of a play to enjoin licensees from producing it as a photoplay, which right they claim their license contract, is one for inunder fringement of copyright, of which a federal court has jurisdiction, 609, 611 gardless of the citizenship of reparties. Harper v. Klaw, 232 "Plaintiffs the Fed. (where the court do said: not rest contract, nor bring their action to upon the and leave the defendants to come enforce the contract; they seek to restrain the commission of a tort, and prove, if they can, that the acin tion complained of is not a tort, beanticipate this defense; but that cause it is justified by a contract. To be sure, plaintiffs do in their bill a matter of no moment

, same title, page and note

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