ages prescribed by the statute,39 or to recover statutory penalties and forfeitures.40 Particular courts. All actions, suits, or proceedings arising under the copyright laws of the United States are within the original jurisdiction of the district courts of the United States (formerly circuit courts), the district court of any territory, the supreme court of the District of Columbia, the district courts of Alaska, Hawaii, and Porto Rico, and the courts of first instance of the Philippine Islands.* 41 44 [§ 382] 2. State Courts.2 The state courts have no jurisdiction of cases under the copyright law.13 But the mere fact that a copyright is involved, or is the subject matter of the litigation, will not deprive a state court of jurisdiction. Thus, where no question of copyright is involved, a state court has jurisdiction of an action to determine the rights of parties to an agreement for the use of copyrighted matter.45 So a state court has jurisdiction of an action to restrain a combination to control the price of copyrighted books, although the issue may require the court to construe the rights of the 39. Daly v. Brady, 69 Fed. 285 (dramatic performance). 40. Brady v. Daly, 175 U. S. 148, 20 SCt 62, 44 L. ed. 109 [aff 83 Fed. 1007, 28 CCA 253]; Falk v. Curtis Pub. Co., 100 Fed. 77; Taft v. Stephens Lith., etc., Co., 37 Fed. 726. (35 U. S. 41. Act March 4, 1909 St. at L. 1075 c 320 § 34). 42. Common-law cases generally see supra § 63. 43. See supra § 381. 44. Hoyt v. Bates, 81 Fed. 641; Bird v. Thanhouser, 160 Ill. A. 653; Holt v. Silver, 169 Mass. 435, 48 NE 837; 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; Widmer v. Greene, 56 HowPr (N. Y.) 91. class of removable parties under the copyright law.16 Where the complaint asserts no rights under the copyright laws, an answer pleading a defense based on the copyright laws does not oust the state court of jurisdiction.47 [§ 383] O. Venue. Prior to the Copyright Act of 1909, there were no special provisions as to the venue of copyright suits, and accordingly the venue of such suits was governed by the general provisions of the judiciary acts, under which suits arising under the patent and copyright laws could be brought, either in the district of which defendant was an inhabitant, or in any district in which he was found.48 The provisions in the act of 1887 that no suit should be brought in any district other than that of which defendant was an inhabitant (except where jurisdiction was based on diverse citizenship) had no application to suits arising under the patent and copyright laws, which continued to be properly brought in any district in which defendant could be found and served with process. The act of 1907 relating to liability and injunctions for public performance of dramatic and 49 causes"). (2) "In the present case, as in Hoyt v. Bates, 81 Fed. 641, the question is one of title depending on the rules of common law. Did plaintiffs or defendant have the common law property in this song at the time when defendant applied for a copyright? That is the underlying question in this controversy. If title was in plaintiffs, then it was not in defendant. If it was not in defendant when he applied for a copyright, then the Federal court has no jurisdiction of the case, because defendant obtained nothing by his application for a copyright. Little v. Hall, 18 How. (U. S.) 165, 15 L. ed. 328. If the Federal court has no jurisdiction, then there must be jurisdiction in this court; otherwise no court has jurisdiction. If, on the other hand, plaintiffs had no common law property in the song, then the complaint must be dismissed because of plaintiffs' inability to make out a cause of action. In such a case dismissal of the complaint will be accomplished without adjudication as to validity of the copyright." Stern v. Carl Laemmle Music Co., 74 Misc. 262, 265, 133 NYS 1082 [aff 155 App. Div. 895 mem, 139 NYS 1146 mem]. V. 45. Little v. Hall, 18 How. (U. S.) 165, 15 L. ed. 328; Silver v. Holt, 84 Fed. 809; Bobbs-Merrill Co. Universal Film Mfg. Co., 160 NYS 37; Widmer v. Greene, 56 HowPr (N. Y.) 91 (where the state court took jurisdiction of a controversy to determine the rights of the parties to an agreement to have and perform a copyrighted play). See also Middlebrook v. Broadbent, 47 N. Y. 443, 7 AmR 457; Burrall v. Jewett, 2 Paige (N. Y.) 134 (in each of which cases the state court took jurisdiction of a controversy arising out of a contract concerning patent rights). [a] Title controverted.—(1) A bill filed in the state court alleged that complainant was the author of a certain song; that the song and accompanying music were his property; and that defendants without his knowledge procured a copyright thereon. The bill prayed that defendants be ordered to assign the copyright to complainant, "by instrument of assignment such as is provided for by the statute of the United States," and also prayed an injunction to restrain defendants from interfering with his right to the use of the song. This was not a suit arising under the copyright laws of the United States, so as to be within the jurisdiction of the federal courts and removable, but one merely involving the title to the copyright. Hoyt v. Bates, 81 Fed. 641, 644 (where the court said: "It is alleged in the bill that the complainant composed a certain song, which was copyrightable, and that the song and the music accompanying it became and are' his property. There is nothing which contains any admission that the complainant ever parted with the presumptive title which these allegations are sufficient to vest in him. The bill further alleges that the respondents, without the complainant's knowledge, obtained a copyright for the song in their own names, and that they have no right of ownership in it. The bill assumes that the copyright is valid, and it alleges no infringement, nor anything which can raise any question as to its scope or legality. On this statement of the pleadings, the 46. Straus v. American Publishonly issue presented by the bill is ers' Assoc., 45 Misc. 251. 92 NYS 153 . one of title, depending on the rules of the common law. It has so long been settled that a suit of that character is not within the [a] License contracts.-Where plaintiff has undertaken to declare a contract for a license to make photoplays from its books at an end for failure to produce the photoplays within the time limit contained in the agreement, its rights have not ceased to be contractual, nor are they based on the Federal Copyright Act of March 4, 1909 (35 U. S. St. at L. 1075 c 320), and a state court of equity will have jurisdicion to declare the agreement terminated. Bobbs-Merrill Co v. Universal Film Mfg. Co., 160 NYS 37. Laemmle Music Co., 74 Misc. 262, 133 NYS 1082 [aff 155 App. Div. 895 mem, 139 NYS 1146 mem]. [a] The supreme court has jurisdiction to review on appeal the judgment of a state court enjoining performance of a copyrighted drama, on the ground that such copyrighted drama was a piracy on plaintiff's common-law rights in an unpublished drama as the decision denies a federal right. Ferris v. Frohman, 223 U. S. 424, 32 SCt 263, 56 L. ed. 492. 48. Wagner v. Wilson, 225 Fed. 912; Lederer v. Ferris, 149 Fed. 250 (a copyright case decided in 1906, where Holt, J., reviewed the legislation and decisions affecting this rule). 49. In re Keasbey, etc., Co., 160 U. S. 221, 16 SCt 273, 40 L. ed. 402 (a trade-mark case); In re Hohorst, 150 U. S. 653, 14 SCt 221, 37 L. ed. 1211 (a patent case); Lederer v. Ferris, 149 Fed. 250 (a copyright case); Bowers v. Atlantic, etc., R. Co., 104 Fed. 887 (a patent case, where Coxe, J., reviewed the legislation and decisions on this subject); Spears v. Flynn, 102 Fed. 6; Lederer V. Rankin, 90 Fed. 449. Contra. Fraser v. Barrie, 105 Fed. 787 [dis appr Lederer v. Ferris, 149 Fed. 250, 251] (where, after correctly holding that the act of 1897 had no application to the original venue, it was inadvertently held that a defendant could be sued only in the district of his residence, and not in any district in which he might be found). "Accordingly any district where the defendant happened to be served, no matter how distant from his home or the place of infringement, was a proper one in which to begin the action. There was not a foot of ground within the limits of the United States where an infringer was safe from process." Bowers v. Atlantic, etc., R. Co., 104 Fed. 887, 890 (per Coxe, J., in a patent case). [a] Reason for rule.-"Under this provision [i. e.. the Judiciary Act of 1789] suits arising under the copyright laws, like all other suits, could be brought in any district in which the defendant could be personally served. The act of 1887. however, and the act of 1875, of which it is an amendment, only relate to suits of which the courts of the United States have original cognizance concurrent with the courts of the several states. It therefore did not apply to or repeal the existing provisions of the law in reference to the service of process in suits of which the United States courts have exclusive jurisdiction. There has never musical compositions made no provision for the manner in which jurisdiction should be originally obtained, and did not in any way affect the question of venue. 50 The Copyright Act of 1909 provides: "That civil actions, suits, or proceedings arising under this Act may be instituted in the distriot of which the defendant or his agent is an inhabitant, or in which he may be found." 51 ously, this leaves much to interpretation, but it is Obvibelieved that the effect of it is to authorize copyright suits to be brought in the district of which either defendant or his agent is an inhabitant, or in the district where either of them can be found and served.52 The kind or class of agent contemplated by the statute is not specified, and while the act probably does not mean every kind of agent, no matter how trivial or limited his powers, doubtless it includes at least one who is agent in the very transaction complained of, as one who assists in or commits infringing acts.53 The apparent purpose of the statute is to permit suits to be brought in cases. been any act changing the rule in copyright I therefore, that, in suits arising unthink, der the copyright law, the method of service provided by the judiciary act is still in force, and in my opinion such a suit may be brought in any district in which the defendant can be found and served with process." Lederer v. Ferris, 149 Fed. 250, 251 (per Holt, J., speaking in 1906). 50. Fraser v. Barrie, 105 Fed. 787 [aff 116 Fed. 285, 53 CCA 563, and expl and appr on point stated in text Lederer v. Ferris, 149 Fed. 250, 251] (these decisions are applicable to the construction of the similar provision in § 36 of the present law); Lederer v. Rankin, 90 Fed. 449. 51. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 & 35). [a] A somewhat similar provision exists in regard to suits for infringement of patents. See Judicial Code (36 U. S. St. at L. 1100 c 231 § 48). And see Patents [30 Cyc 993]. See also Bowers v. Atlantic, etc., Co., 104 Fed. 887 (where this act is construed). of 52. West Pub. Co. v. Edward Thompson Co., [U. S. Cir. Ct. S. D. of N. Y., Jan. 5, 1911, unreported]. [a] This was the intention the framers of the act as appears from the report of the committee on patents which reported the bill in the form enacted. Mr. Currier, for the committee said: "Section provides that suits may 35 tuted in the district of which the be instidefendant or his agent is an inhabitant, or in which either of them may be found. The new provision 'or in which he may be found' serted for the reason that to limit was inthe institution of actions to the district of which the defendant is an inhabitant would fail to reach the case of an infringer of the copyright of dramatic works or of city directories, etc., who travels from state to state and whose real habitation it might be difficult to locate." of House Committee, Report No. Report 2222, 60th Congress, 2d Session p 18. was to was [b] Rule applied.-A motion set aside service of process was denied on the following facts: fendant Dethe laws of the state of New York, a corporation under with an office and place of business only in the eastern district of New York. Suit for infringement filed in the southern district of New York, and service was made in the southern district on who was soliciting subscriptions for sales agent the infringing work in the southern district. Such agent was an inhabitant of the eastern district. Pub. Co. v. Edward Thompson Co., West a [§§ 383-384 any district where acts of infringement are being committed.54 [§ 384] P. Process and Writs. In equity suits, the process of subpoena is the proper form of mesne process to require defendant to appear and answer the bill in the first instance.5 55 Writs of attachment, of sequestration, or of assistance may be issued if required. In actions at law, the ordinary form of process, whether called a summons, a citation, or other name, is used.57 The federal courts have power to frame and issue new writs not specifically provided for by statute which may be necessary to the exercise of a jurisdiction conferred by law, and agreeable to the usages and principles of law,58 and this power has been exercised in framing writs of seizure in aid of the jurisdiction to enforce forfeitures and penalties under the copyright law." Service on an agent is sufficient, under the act of 1909.60 Service must be made on either the principal or his agent, in the district where the suit is brought, and service made in another district will 329, 336, 31 SCt 402, 55 L. ed. 485, AnnCas1912C 562. 61 [U. S. Cir. Ct. S. D. of N. Y., Jan. 5, 53. Wagner v. Wilson, 225 Fed. v. Belford, 22 Fed. 275, 23 Blatchf. 1, the orators. the [a] Rule applied.-An action for 912. 55. Equity Rules rule 7; Copy- Equity Rules rule 7. 31 (action for penalty for false no- Federal Practice Conformity Act 58. Judicial Code (36 U. S. St. at "Where the state statute, or prac- was 59. Hills v. Hoover, 220 U. S. 329, [a] Writ in nature of replevin.— "There is no difficulty in issuing a writ in the nature of a writ of replevin in an action such as is authorized by § 4965, requiring the marshal to seize the alleged forfeited plates and copies, and asking in the same suit to recover the penalty for those found in the defendant's possession. fringing matter will be brought into The alleged incourt to abide its order and judgment, and at the same time, in the same action, a recovery may be had for the penalty awarded. the view of the statute suggested in This was Bolles v. Outing Co.. 175 U. S. 262, 20 SCt 94, 44 L. ed. 156. asserted in American Tobacco Co. It was also v. Werckmeister, 207 U. SCt 72, 52 L. ed. 208, 12 AnnCas 595 S. 284, 28 affirmed in this court in Werckmeister v. American Tobacco Co., 207 U. S. 375, 28 SCt 124, 52 L. ed. 254." Hills v. Hoover, 220 U. S. 329, 337, 31 SCt 402, 55 L. ed. 485, Ann Cas 1912C 562. See also supra § 379. [b] Conformity to state practice. -A writ of seizure issued in, or preliminary to, an action St. 4965, to recover the penalty under Rev. prescribed thereby for each copy of infringing copyrighted publication found in the possession of the infringer, is not strictly a writ of replevin, but only in the nature of such writ, and is not to be rendered inoperative by the technical provisions of a state statute. Richardson an v. Bosselman, 164 Fed. 781. 60. Wagner v. Wilson, 912. See also supra § 383 text and 225 Fed. note 51. 61. Wagner v. Wilson, 225 Fed. 912. case, [a] Rule applied.-"This is not a 'local' suit, and hence the service did not give jurisdiction over the person of the defendant. Even in a patent the plaintiff have process served in another discannot trict in the same state (Judicial Code [Act March 3. 1911, Stat. 1100] § 48 [Comp. c 231, 36 $ 10301), but must make St. 1913, the alleged agent. service of Service of sum For later cases, developments and changes in the law see cumulative Annotations, same title, page and note number. be set aside.62 64 [§ 385] Q. Parties3-1. Plaintiffs-a. In General. The legal owner of the copyright may sue for its infringement either at law or in equity, although the beneficial ownership is in another.65 The assignee of a copyright may sue in his own name for infringement, for copyrights are assignable so as to pass the legal title.67 Formerly an assignee was permitted to sue at law in the name of his assignor. mons will be set aside." Wagner v. Wilson, 225 Fed. 912. 66 62. Wagner v. Wilson, 225 Fed. 912. 63. Parties: Generally see Parties [30 Cyc 1]. In equity see Equity [16 Cyc 181]. 64. Historical Pub. Co. v. Jones Pub. Co., 231 Fed. 638. 145 CCA 524; Scribner v. Clark, 50 Fed. 473 [aff 144 U. S. 488, 12 SCt 734, 36 L. ed. 514]; Scribner v. Henry G. Allen Co., 49 Fed. 854; Black v. Henry G. Allen Co., 42 Fed. 618, 9 LRA 433; Hanson V. Jaccard Jewelry Co., 32 Fed. 202; Estes V. Williams, 21 Fed. 189; Yuengling v. Schile, 12 Fed. 97, 20 Blatchf. 452; Little v. Gould, 15 F. Cas. No. 8.394, 2 Blatchf. 165; 15 F. Cas. No. 8,395, 2 Blatchf. 362; Roberts v. Myers, 20 F. Cas. No. 11,906, Brunn. Coll. Cas. 698; Shook v. Rankin, 21 F. Cas. No. 12,804, 6 Biss. 477; Bernard v. Bertoni, 14 Que. L. 219. [a] One who is the owner of a Copyright at the time of the filing of a bill for infringement, and at the time of the threatened acts of infringement, may maintain a suit for injunction, although at the time of the previous act of infringement he was not the owner. Historical Pub. Co. v. Jones Pub. Co., 231 Fed. 638, 145 CCA 524. 65. Hanson V. Jaccard Jewelry Co., 32 Fed. 202 (equity); Little v. Gould, 15 F. Cas. No. 8,395, 2 Blatchf. 362. 66. New Fiction Pub. Co. v. Star Co., 220 Fed. 994; Roberts v. Myers, 20 F. Cas. No. 11,906, Brunn. Coll. Cas. 698. 67. Assignment of copyright see supra §§ 246-252. 68. See generally Assignments §§ 7-60. [a] If the author refused to allow plaintiff to bring the action in his name, defendant might be ordered to admit at the trial that plaintiff was the legal proprietor of the work. Sweet v. Cater, 11 Sim. 572, 34 Eng Ch 572, 59 Reprint 994. 69. Fitch v. Young, 230 Fed. 743 [aff 239 Fed. 1021 mem, 152 CCA 664 mem]; New Fiction Pub. Co. v. Star Co., 220 Fed. 994; Lederer v. Saake, 166 Fed. 810 [rev on other grounds 174 Fed. 135, 98 CCA 571]; Wooster v. Crane, 147 Fed. 515, 77 CCA 211; Empire City Amusement Co. v. Wilton, 134 Fed. 132; London Printing, etc., Alliance, Ltd. v. Cox, [1891] 3 Ch. 291; Heap v. Hartley, 42 Ch. D. 461. See Neilson v. Horniman, 25 T. L. R. 684 [app dism 26 T. L. R. 188 (sole license to produce play except in London and suburbs). But see Tuck v. Canton, 51 L. J. Q. B. 363 (where a licensee was held entitled to sue). [a] Reason for rule.-"It must be remembered throughout that the remedies here sought are statutory creations. They have been made drastic to protect authors against wrongful invasions, but they were not intended to be cumulative, so as to subject a defendant to more than one recovery for the redress of one Under section 25 of the act, which enumerates the remedies, an infringer, among other things, 'shall be liable to pay to the copyright proprietor such damages as the Copyright proprietor may have suffered due to infringement.' Yet, if plaintiff's theory were right, the anomalous result would follow that not only plaintiff, but every other licensee of plaintiff, could severally sue the defendant, and each obtain a wrong. 68 A mere licensee, as a general rule, cannot sue in his own name strangers who infringe.69 But even a mere licensee, if his license is exclusive for a specified time and territory, may sue in equity to protect his limited interest.TO But a mere agent to sell has not such a real interest in a work as will entitle him to relief." The owner of the equitable title is not a mere licensee and he may sue in equity,72 particularly where the owner of the legal separate judgment for one and the same violation of a copyright which no one of them owned, but in respect of which each had only certain special or limited rights. Finally, it is said that if the owner of rights such as in the case at bar cannot sue under the act, but is remitted to an appropriate action because of the invasion of its contract rights obtained from the author, then that a valuable protection will be lost to the author as the result of the diminished protection to his transferee. I think I fully appreciate the new situations which the enlarged use of copyrighted works has developed commercially. The motion picture scenario, the daily short story in the newspaper, the growing vogue of the concise one-act play and of the short-story magazine, have all been developments towards specialization, which doubtless render particular rights of increasing importance; but if the statute has not met these new developments, and in this regard I do not express my opinion, the time-worn answer of the courts is that the subject-matter then becomes one for legislative consideration." New Fiction Pub. Co. v. Star Co., 220 Fed. 994, 996, 997. [b] Applications of rule.-(1) Where an American copyright of a German play was taken in the name of the author, a contract by which he granted the stage right to produce the play in the United States to another does not vest the latter with the right to sue in his own name for penalties for infringement. Lederer v. Saake, 166 Fed. 810 [rev on other grounds 174 Fed. 135, 98 CCA 571]. (2) An assignment of a part of the rights protected by a copyright, as of the right of serial publication, operates merely as a license, and does not carry the right to sue for infringement given to the "copyright proprietor." New Fiction Pub. Co. v. Star Co., 220 Fed. 994. (3) The owners of the copyright of a play granted to plaintiff "the sole license" to produce the play for twelve months, except in London and its suburbs. Plaintiff sued defendants for having, without his sanction, produced the play at Manchester, and it was held that as plaintiff did not hold an assignment of the acting rights, but only a "sole license," he had no title to sue in his own name. Neilson v. Horniman, 26 T. L. R. 188 [appr London Printing, etc., Alliance, Ltd. v. Cox, [1891] 3 Ch. 291]. a [c] Analogy of patent cases applied.-(1) "The licensee under patent cannot sue alone in his own name, and every partial assignee of patent rights, who does not take an undivided part of the whole patent or a territorial share of the whole patent (or, perhaps, an undivided part of a territorial share), is deemed a mere licensee. Rev. St. § 4898 [U. S. Comp. St. 1901, p. 3387]; Gayler v. Wilder, 10 How. 477. 13 L. ed. 504. Section 4954 [U. S. Comp. St. 1901, p. 3407], which deals with the assignment of copyright, is similar to section 4898, and by analogy it seems that an assignee of the exclusive right to dramatize' is a mere licensee, and so cannot sue in his own name. See Black v. Henry G. Allen Co., 42 Fed. 618, 621, 9 LRA 433; Keene v. Wheatley, 14 F. Cas. No. 7.644, 4 Phila. 157. In Roberts v. Myers. 20 F. Cas. No. 11,906, the court held that the assignee of the exclusive right to act and represent a copyrighted dramatic composition for one year could sue in his own name. That case is not precisely analogous to this." Empire City Amusement Co. v. Wilton, 134 Fěd. 132, 133. (2) "Judge Sprague, indeed, in Roberts V. Myers, 20 F. Cas. No. 11,906, Brunn. Coll. Cas. 698, held that an assignment of the right to perform a play for a limited period would give the assignee the right to sue; but that was certainly an extension of the rules applicable to patents, and a step further than it is necessary to go in the case at bar." Fitch v. Young, 230 Fed. 743, 745 [aff 39 Fed. 1021 mem, 152 CCA 664 mem]. (3) "As I understand the rule governing the right of a licensee to sue in his own name for infringement, it is settled by the Waterman v. Mackenzie, 138 U. S. 252, 11 SCt 334, 34 L. ed. 923 (approved in Pope Mfg. Co. v. Gormully, etc., Mfg. Co., 144 U. S. 248, 12 SCt 641, 36 L. ed. 423), that the assignee or licensee of a part of the patent rights in certain territory, or even in the whole country cannot sue in his own name, because the patent is an entirety and cannot be divided up among different owners. The so-called exclusive licenses in this case included only the right to use and sell, and not to manufacture. In the Fountain Pen Case there was a license to manufacture and sell, without the express right to use, and it was held that the licensee could not sue in his own name, either at law or in equity." Consolidated Rubber Tire Co. v. B. F. Goodrich Co., 237 Fed. 893, 894 (a patent case). License distinguished from assignment see supra § 248. 70. Photo Drama Motion Picture Co. v. Social Uplift, etc., Co., 220 Fed. 448, 137 CCA 42 (where the licensee of the motion picture rights in a novel was permitted to maintain a suit against a rival claimant to such license); Hill v. Whalen, 220 Fed. 359; Roberts v. Myers, 20 F. Cas. No. 11,906, Brunn. Coll. Cas. 698. [a] An assignee of the exclusive right of acting and representing a copyrighted drama for one year throughout the United States, excepting five specified cities, may maintain an injunction suit in his own name against a mere wrongdoer. Roberts v. Myers, 20 F. Cas. No. 11,906, Brunn. Coll. Cas. 698. See also Aronson v. Fleckenstein, 28 Fed. 75; Aronson v. Baker, 43 N. J. Eq. 365, 12 A 177 (both cases applying the same rule to an exclusive licensee under the common-law dramatic performing right). Partial and limited assignments see supra § 247. 71. Nicol v. Stockdale, 3 Swanst. 687, 36 Reprint 1023. 72. Wooster v. Crane, 147 Fed. 515, 516, 77 CCA 211; Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1; Little v. Gould, 15 F. Cas. No. 8,394, 2 Blatchf. 165, 15 F. Cas. No. 8,395, 2 Blatchf. 362; Pierpont v. Fowle, 20 F. Cas. No. 11,152, 2 Woodb. & M. 23; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328; Sims v. Marryat. 17 Q. B. 281. 79 ECL 281, 117 Reprint 1287; Turner v. Robinson, 10 Ir. Ch. 121 [aff 10 Ir. Ch. 510]; Hodges v. Welsh, 12 Ir. Eq. 266; Bohn v. Bogue, 10 Jur. 420; Sweet v. Shaw, 3 Jur. 217; Mawman v. Tegg, 2 Russ. 385, 3 Eng Ch 385, 38 Reprint 380; Sweet V. Cater, 11 Sim. 572, 34 EngCh 572, 59 title is the infringer, or one of the infringers, thus occupying a position hostile to plaintiff. By express provision of the present statute, "any party aggrieved" may sue for an injunction to restrain the violation of any right secured by the copyright laws.74 [§ 386] b. Joinder. Joint proprietors of copy- Reprint 994; Colburn v. Duncombe, 9 L§§ 385-389 [387] 2. Defendants. The infringement of a copyright is a tort and all persons concerned therein are jointly and severally liable as joint tort feasors.83 The rule as to parties follows the rule of liability.8 84 But where defendants have acted severally, and not jointly or in concert, in committing an infringement, they cannot be sued jointly.85 [§ 388] R. Defenses-1. In General. A denial of any fact essential to plaintiff's title and right to relief is of course a defense. These matters have already been treated in detail.86 fringement or of liability therefor is likewise a deA denial of infense. This also has been specifically treated.87 The effect of laches and acquiescence as a bar to equi table relief,88 of the omission of the notice of copyright from published copies,89 of the failure to file notice of user of music on mechanical devices,90 and of compulsory licenses for the mechanical reproduction of music91 have likewise all been considered. There remain a few conventional or affirmative defenses which, assuming the existence of plaintiff's copyright and its infringement, may yet bar relief." [389] 2. Custom to Copy. A custom of the trade to copy certain classes of literary work is no defense to an action for infringement of the copyright in such work.93 posed by one of the plaintiffs, and 76. Tully v. Triangle Film Corp., the author of a United States shall be a party to "There is no requirement that the the action, and we think the pur"It is the general rule that a mere proprietor of the copyright accountpose of the statute was to make the licensee cannot in its own name sue able to the United States for onestrangers who infringe. Shaliol, 112 U. S. 485. 5 SCt 244, 28 Birdsell v. half of the money penalty recovL. ed. 768. Here, however, the comered." Werckmeister plainant is not a mere licensee, but Pub. Co., 231 Fed. 638, 145 CCA 524; Tobacco Co., supra. V. American has the full 82. equitable title, Historical Pub. Co. Wooster, who has the legal title, is and v. Jones one of the infringers and occupies aprietor-Where [a] Joinder of licensee and pro- See also Equity [16 Cyc 181]. Gaumont Co. v. Hatch, .208 Fed. 378. position altogether hostile to the copyrighted drama assigned the right picture film.-The owner of a copycomplainant. Its right in this situa[a] Owners and lessees of motion tion to sue in equity in its own name to produce and present it on is plain in principle and well estabstage by a company of players, rethe righted moving picture film and his lished by authority." serving all other rights, including who have contracted to return it on lessees within Wooster a certain Crane, supra: territory the moving picture rights, the li[a] Where a plaintiff has a good censee was not a proper party to a termination of the lease may join in equitable title, a court of equity will right by producing a motion picture ing copies of such film. suit for infringement of the copy-infringement by making or exhibita suit to enjoin a third person from interfere to protect from piracy even though it should his copyright play, although this production would not be quite clear that his legal title be financially injurious to the Co. v. Hatch, 208 Fed. 378. Gaumont is complete. censee by diverting persons 83. Gross Mawman Russ. 385, 3 EngCh 385, 38 Reprint Van Dyk Gravure V. Tegg. 2 might see the play from doing so. who Co., 230 Fed. 412, 144 CCA 554. 380. Tully v. Triangle Film Co., 229 Fed. supra §§ 331-335. See 297. [38 Cyc 483]. See also Torts V. [b] If the equitable right to the copyright is complete, the court will take care that the real question shall be tried, notwithstanding there may be a defect in respect of the legal property. Bohn v. 420. Bogue, 10 Jur. [c] An equitable interest limited in point of time is sufficient. Sweet v. Cater, 11 Sim. 572, 34 EngCh 572, 59 Reprint_994. [d] A clear color of title with assertion of right is sufficient. Maw man v. Tegg. 2 Russ. 385, 3 EngCh 385. 38 Reprint 380; Oxford, etc., Univ. v. Richardson, 6 Ves. Jr. 689, 31 Reprint 1260. 73. Wooster v. Crane, 147 Fed. 515, 77 CCA 211. 77. See supra § 261. li 78. Lauri v. Renad, [18921 3 Ch. 402; Prince Albert v. Strange, 2 De G. & Sm. 652, 64 Reprint 293. 1 Hall & T. 1, 47 Reprint 1302, 1 Macn. & G. 25, 47 EngCh 19, 41 Reprint 1171. 79. Historical Pub. Co. v. Jones Pub. Co., 231 Fed. 638, 145 CCA 524; Sweet v. Maugham, 11 Sim. 51, 34 EngCh 51, 59 Reprint 793. [a] Executory contract to assign. [b] Oral contract.-Where merely 74. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 36); Eolian Co. v. Royal Music Roll Co., 196 Fed. 926. [a] A licensee to make records for the mechanical reproduction of music was held to be a person aggrieved and entitled to sue for injunction against the copying of his records. | prietor, Æolian Co. v. Royal Music Roll Co., 196 Fed. 926 (where a preliminary injunction was granted. It would be difficult, however, to point out in the statute any provision securing any right in such records, unless they are themselves copyrightable, and copyrighted, as to which see supra § 123). 75. Stevens v. Wildy, 19 L. J. Ch. 80. Roberts v. Myers, 20 F. Cas. No. 11,906, Brunn. Coll. Cas. 698. 81. Werckmeister v. American Tobacco Co., 207 U. S. 375, 384, 28 SCt 124, 52 L. ed. 254. V. 84. See Parties [30 Cyc 1]. 85. Dilly v. Doig, 2 Ves. Jr. 486, 30 Reprint 738. [a] Rule applied.-A separate suit must be brought against each person taking copies of a spurious edition for sale. Dilly v. Doig, 2 Ves. Jr. 486, 30 Reprint 738. 86. Cross references: Damages see supra §§ 357-364. Duration and extension of term see Discovery see supra § 356. supra §§ 235-244. Forfeiture see supra §§ 367-370. Injunctions see supra §§ 341-352. Penalties see supra §§ 371-373. Profits see supra §§ 353-355. Requirements for securing and preserving copyright see supra §§ 167Royalties for mechanical musical de234. vices see supra §§ 374, 375. Transfers, see supra §§ 245-262. What may be copyrighted see supra Who entitled to copyright see supra §§ 90-143. SS 144-163. licenses, and contracts 87. Infringement and liability See supra § 348. See supra §§ 194-196, 212-219. 91. See supra § 323. 92. See infra $$ 389-392. 93. Walter v. Steinkopff, [1892] 3 Ch. 489 (holding that a general custom among journalists to allow one For later cases, developments and changes in the law see cumulative Annotations, 94 [§ 390] 3. Unclean Hands. Unclean hands is a bar to equitable relief." An immoral work will not be protected;95 but general immorality or illegal acts not affecting the particular right asserted in the suit is no defense.96 Membership by plaintiff in an illegal combination in violation of state or federal antitrust laws is no defense to a suit for infringement of copyright.97 Importation of copies of the copyrighted work by plaintiff in violation of the statute by reason of noncompliance with the domestic manufacturing requirements is no defense.98 Where plaintiff's work is itself a piracy, plaintiff does not come into court with clean hands,99 and equity will afford him no relief, although the infringement is clearly established.1 V. ment or decree in an action for infringement is a bar to another action between the same parties for the same infringement. Thus a judgment forfeiting infringing copies was a bar to a second action to recover statutory penalties, because both could have been enforced in the first action. It has been held that a judgment against the lithographer who made infringing prints for an infringer for the value of such prints is a bar to an action for the value of the same prints brought against such infringer.* A decree merely for an injunction, where no accounting for profits was in fact sought or obtained, although formally prayed for in the bill, was no bar to a subsequent action at law for statutory damages under the prior law. The rule may be different now in view of the statute authorizing proceed Thomas Pub. Co., 242 Fed. 37; Chicago Bd. of Trade v. L. A. Kinsey Co., 130 Fed. 507, 64 CCA 669, 69 LRA 59 [aff 198 U. S. 236, 25 SCt 637, 49 L. ed. 1031]. See also Equity [16 Cyc 144]. [§ 391] 4. Former Adjudication. A final judgnewspaper to copy from another on condition of giving credit was no defense to an action for infringement of copyright); Maxwell Somerton, 30 L. T. Rep. N. S. 11; Wyatt v. Barnard, 3 Ves. & B. 77. 35 Reprint 408; Hogg v. Kirby. 8 Ves. Jr. 215, 32 Reprint 336; Maxwell v. Somerton, 22 Wkly. Rep. 313. "The plea of the existence of such custom, or habit, or practice of copying as is set up can no more be supported when challenged than the highwayman's plea of the custom of Hounslow Heath. It has often been relied upon as a defence in such cases, but always has been repudiated by the Courts. In one of the early cases, Wyatt v. Barnard, 3 Ves. & B. 77, 35 Reprint 408, the defendant relied on the usual practice' among publishers of magazines to take articles from each other; but Lord Eldon pointed out that such a custom could not control the law." Walter v. Steinkopff, [1892] 3 Ch. 489, 499. 94. Harms v. Stern, 231 Fed. 645, 145 CCA 531; Stone v. Dugan Piano Co., 220 Fed. 837, 136 CCA 583; Edward Thompson Co. v. American Law Book Co., 122 Fed. 922, 59 CCA 148, 62 LRA 607 [rev 121 Fed. 907]. [a] Copyright no exception to rule. "There is nothing in the fact that the injunction is asked to protect a copyright which takes the case out of the general principle to which we have referred. In Kerr on InJunction (5th Ed.) 413, the rule is laid down respecting the right to an injunction in copyright cases as follows: "The interference of the court by injunction being founded on pure equitable principles, a man who comes to the court must be able to show that his own conduct in the transaction has been consistent with equity. A book accordingly which is itself piratical cannot be protected from invasion, nor will the court protect by injunction a work which is of an immoral, indecent. seditious or libelous nature, or which is fraudulent.' The rule thus stated is well established, and the particular instances the author mentions not intended to be exhaustive, but simply illustrative of the principle applicable in such cases." Stern, 231 Fed. 645, 649. 145 CCA 531. [b] Untrue, misleading, and deceptive advertisements, although duly entered for copyright, will not protected against infringement. Stone v. Dugan Piano Co., 220 Fed. 837, 136 CCA 583. are Harms v. be [c] Repudiation of license.-An author who makes a valid contract, vesting in others exclusive publishing rights for a period of years, cannot repudiate it and then sue for infringement because of acts permitted by such contract. Harms v. Stern, 222 Fed. 581 [rev on other grounds 229 Fed. 42, 145 CCA 21. Doctrine of unclean hands see Equity [16 Cyc 144 et seq). 95. Glyn v. Western Feature Film Co., [1916] W. N. pt II 5. See also supra § 99. 96. S. E. Hendricks Co., Inc. V. [a] Rule applied.-"The trial court dismissed the defense of 'unclean hands,' because the inequitable conduct charged against plaintiff did not affect the matter in litigation.' If plaintiff did borrow from defendant's sixth edition for the benefit of its twenty-fourth edition, that act was not deemed so connected with the subject-matter of this suit, viz. infringement of the copyright of plaintiff's twenty-third edition by defendant's seventh edition, as to render the defence admissible. Bentley v. Tibbals, 223 Fed. 247, 138 CCA 489. Appellant insists that this case is not within that decision, but is ruled by Edward Thompson Co. v. American Law Book Co., 122 Fed. 922, 59 CCA 148, 62 LRA 607, where we said that 'an author who has pirated a large part of his work from others is not entitled to have his (own) copyright protected.' Decisions are idle unless based upon the facts of the case in which they are rendered, and the facts in this case do not require consideration of the question whether the alleged wrongdoing of plaintiff herein debars it from equitable relief against the admitted wrong of defendant." S. E. Hendricks Co., Inc. v. Thomas Pub. Co.. 242 Fed. 37. 40. 97. Scribner v. Straus, 130 Fed. 389. Contra Bobbs-Merrill Co. V. Straus, 139 Fed. 155 [aff 147 Fed. 15, 77 CCA 607, 15 LRANS 766 (aff 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086)]. 98. Meccano v. Wagner, 234 Fed. 912; Bentley v. Tibbals, 223 Fed. 247, 138 CCA 489. [a Reason for rule.-"It is not sufficient to debar a suitor for relief that he has committed an unlawful act, unless that unlawful act affects the matter in litigation. The offense which Bentley committed in wrongfully importing the work was not a wrong done to this defendant, or one which in any wise prejudiced him. It was an offense committed against the United States, and one of which it alone could take cognizance. The unlawful importation and vending of the book here is not SO connected with the subject-matter of the present suit as to justify the application of the maxim to the plaintiff's suit." Bentley v. Tibbals, 223 Fed. 247, 252, 138 CCA 489. 99. S. E. Hendricks Co., Inc. V. Thomas Pub. Co., 242 Fed. 37; Bentley v. Tibbals, 223 Fed. 247, 138 CCA 489. 1. S. E. Hendricks Co., Inc. V. Thomas Pub. Co., 242 Fed. 37; Bentley v. Tibbals, 223 Fed. 247, 138 CCA 489; Sweet v. Bromley, 154 Fed. 754; Edward Thompson Co. v. American Law Book Co., 130 Fed. 639 [aff 157 Fed. 1003, 85 CCA 677 (app dism 216 U. S. 625, 30 SCt 576, 54 L. ed. 642)]; Edward Thompson Co. V. American Law Book Co.. 122 Fed. 922, 59 CCA 148, 62 LRA 607 [rev 121 Fed. 907]; Banks v. McDivitt, 2 F. Cas. No. 961. 13 Blatchf. 163 (where, however, the defense failed Gn the facts); Carey v. Faden, 5 Ves. Jr. 24. 31 Reprint 453 [quot with appr Edward Thompson Co. v. American Law Book Co., supra]. [a] "A literary pirate is not entitled to consideration in a court of equity. Consistency requires that the defendant should not be punished for doing that which the complainant does with perfect impunity. An author who has pirated a large part of his work from others is not entitled to have his copyright protected." Edward Thompson Co. v. American Law Book Co., 122 Fed. 922, 926, 59 CCA 148, 62 LRA 607 [rev 121 Fed. 907] (where complainant, the publisher of a law encyclopedia, furnished the authors of its articles with paragraphs cut from copyrighted digests of other publishers, its authors using such paragraphs in the compilation of their articles, in some instances copying the language of such paragraphs without the consent of the owners of the copyrights, and therefore had no standing in a court of equity to charge another with infringement of its own copyright). 2. See See cases infra notes 3-6. also Judgments [23 Cyc 1106]. 3. Hills v. Hoover, 220 U. S. 329, 31 SCt 402, 55 L. ed. 485, AnnCas 1912C 562 (holding that a replevin suit not prosecuted to judgment, but under which the infringing copies had been seized, was a bar to a subsequent action of assumpsit for penalties); Werckmeister V. American Tobacco Co., 207 U. S. 375, 28 SCt 124, 52 L. ed. 254. 4. Sarony v. Ehrich, 28 Fed. 79, 23 Blatchf. 556 (but this is a mere dictum, for the court had already decided that no such action would lie against anybody under the statute as it then was). 5. Brady v. Daly, 175 U. S. 148, 20 SCt 62, 44 L. ed. 109 [aff 83 Fed. 1007, 28 CCA 253]. [a] Rule applied. "The equity action was brought to enjoin the defendant from performing the play of After Dark' with the railroad scene in it, taken from the plaintiff's play 'Under the Gas Light,' and the injunction was asked for on the ground that plaintiff's injuries could not be accurately ascertained or computed, and compensation for such injury could not be made by damages, and as a portion of the relief complainant asked that the defendant be decreed to render a full and true account of all money and profits received by him. The decree in that case, however, did not direct the master to ascertain anything in regard to profits, no evidence was offered upon that subject, no finding was made thereon, and upon the coming in of the master's report no final judgment or decree for profits was ever asked or rendered. In view of these facts, we think there was no election of an inconsistent remedy by the plaintiff in the action which would bar him from the maintenance |