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In the important case of West Pub. Co. v. Lawyers' Pub. Co., where a
collection of selected cases and a general digest were alleged to be
infringements of the plaintiff's reports and monthly digests, Judge
Coxe in the U. S. Circuit Court enjoined 303 proved "instances of
piracy" but not the remaining portions of the digest, but in 1897 the
U. S. Circuit Court of Appeals, through Judge Lacombe, held that
under such circumstances the burden of proof must be on the unfair
user and broadened the decision by issuing an injunction against the
work as a whole, excepting those parts which were public property.
In 1910, in Park & Pollard v. Kellerstrass, Judge Philips enjoined the
whole work because the infringing parts were not separable. In
1903, in Thompson Co. v. American Law Book Co., where the editor
of the defendant's law encyclopædia had made a list of cases cited
in complainant's work, which included material "pirated" by the
complainant from copyright works, the Circuit Court of Appeals,
reversing the lower court, held through Judge Coxe that there was
no infringement, because the only use made of the list was to guide
the defendant to the reports and because the complainant had no
standing in equity. "If the defendant was guilty of piracy, so was the
complainant; and equity will not protect a pirate from infringements
of his piratical work." To like effect in Slingsby v. Bradford Co., in
1905, Justice Warrington, in the Chancery Division, held that the
plaintiff could not recover against an evident copying because his
own catalogue was fraudulent in advertising as patented articles not
so protected, and a fraud will not be protected. In the later case of
West Pub. Co. v. Thompson Co., where the publishers of the original
reports and digests sought to restrain the Thompson encyclopædias,
the Circuit Court of Appeals held that while a compiler may use a
copyright digest by making lists from which to run down cases,
which is "fair use," extensive copying or paraphrasing of the
language of the digest, whether to save literary work or mechanical
labor, constitutes an infringement. The case was sent back to the
lower court for rehearing and assessment of damages and was
settled in 1911 by an agreement involving transfer of the
encyclopædia to the plaintiff. Reference to a copyright work giving
pagination is not an infringement, as was decided in 1909, in Banks
Law Pub. Co. v. Lawyers Co-operative Pub. Co., in the U. S. Circuit
Court of Appeals.
Quotation
Where the American Book Co. brought suit against Doan & Hanson,
who had restored and rebound used copies of school books, the
U. S. Circuit Court of Appeals held in 1901 that there was no
violation of law, but required notice that the books were second-
hand copies by conspicuous stamp on the cover. In 1891 the
Pennsylvania Supreme Court, in Dodd v. Smith, declined to grant
Dodd, Mead & Co. an injunction against rebinders who had
purchased from them sheets of a fifty-cent paper-covered edition of
a novel by E. P. Roe and bound these in cloth to sell at sixty cents in
competition with the plaintiff's $1.50 cloth edition.
The Kipling case
The suit to enjoin the use of a reversed or burlesque title, when the
Boston Herald printed, under the title of "Letters of a son to his self-
made father," a skit on Lorimer's "Letters of a self-made merchant to
his son," was denied by Judge Morton in the Massachusetts Supreme
Court in 1903 as involving no deception.
The Drummond case
It was for the protection of copyrights that the statute of Anne was
passed and that statutory law thus began to replace English
common law—a gain to authors sadly offset by its losses. But it was
undoubtedly true that without statutory provision the proprietor of
literary and similar property could not obtain the protection
necessary for the enforcement of his rights. The new American code
is comprehensive, detailed and specific in its legal provisions for
protection and procedure, and in respect to punishment far beyond
any copyright legislation on the statute books of any other nation.
Injunction
"Rules and regulations for practice and procedure under this section
shall be prescribed by the Supreme Court of the United States," for
which see appendix.
Court jurisdiction
"(Sec. 34.) That all actions, suits, or proceedings arising under the
copyright laws of the United States shall be originally cognizable by
the circuit courts of the United States, 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.
"(Sec. 35.) That civil actions, suits, or proceedings arising under this
Act may be instituted in the district of which the defendant or his
agent is an inhabitant, or in which he may be found.
Injunction provisions
"(Sec. 36.) That any such court or judge thereof shall have power,
upon bill in equity filed by any party aggrieved, to grant injunctions
to prevent and restrain the violation of any right secured by said
laws, according to the course and principles of courts of equity, on
such terms as said court or judge may deem reasonable. Any
injunction that may be granted restraining and enjoining the doing
of anything forbidden by this Act may be served on the parties
against whom such injunction may be granted anywhere in the
United States, and shall be operative throughout the United States
and be enforceable by proceedings in contempt or otherwise by any
other court or judge possessing jurisdiction of the defendants.
"(Sec. 37.) That the clerk of the court, or judge granting the
injunction, shall, when required so to do by the court hearing the
application to enforce said injunction, transmit without delay to said
court a certified copy of all the papers in said cause that are on file
in his office.
Appeal
The copyright statutes are construed strictly, by the letter of the law,
in respect to procedure as well as to other features. This is especially
the case in respect to forfeiture and penalties, as where, in Falk v.
Heffron, in 1893, 2400 copies of a copyright portrait of Lillian Russell
had been lithographed, twenty-one on a sheet. Judge Wheeler in the
U. S. Circuit Court in New York held with the jury that only one dollar
per sheet could be recovered as penalty, because the law specified
"sheets." In McDonald v. Hearst, in 1899, in the U. S. Circuit Court in
California, Judge DeHaven held that the proprietor of the San
Francisco Examiner could not be held liable for copyright penalties
because an employer could not be held to penal responsibility for the
act of his agent. In a suit to obtain damages based on forfeiture, in
Wheeler v. Cobbey, in 1895, Judge Shiras in the U. S. Circuit Court in
Nebraska sustained a demurrer on the ground that the damages
asked for depended on forfeiture and could not be obtained unless
the actual forfeiture was had within the statutory limit of two years.
In Morrison v. Pettibone, in 1897, in the U. S. Circuit Court in Illinois,
Judge Seaman held that certain sheets, seized during the process of
lithographing, when only one color had been printed, were not exact
copies and therefore could not be forfeited. In Bennett v. Boston
Traveler Co., in 1900, the Circuit Court of Appeals, through Judge
Colt, refused relief because the plaintiff had alleged infringement of
a cartoon published in the New York Herald, which was not
specifically copyrighted, instead of alleging infringement of the
copyrighted newspaper of which it was a part. An extreme case was
that of Child v. N. Y. Times Co., in 1901, where the plaintiff had
purchased infringing copies from the defendant, in which case Judge
Hazel in the U. S. Circuit Court in New York held that as these were
not literally "found in possession" of defendant, a penalty could not
be collected. Several of these cases illustrate escapes from justice
which will not be possible under the code of 1909, which uses
broader phraseology. In Walker v. Globe Newspaper Co., in 1908,
where no copies of a pirated map were found in possession of the
defendants, the U. S. Supreme Court held that outside of statutory
remedies no suit for damages could be maintained.
Damage not penalty
On the other hand, in the case of Brady v. Daly, which came before
the U. S. Supreme Court in 1899, the defendants, on a question of
jurisdiction, raised the issue that the old law provided for a penalty
and not for damages, in denying which Justice Peckham held that:
"The statute in using the word 'damages' did not mean a forfeiture
or penalty, as it is difficult to prove the exact amount which the
proprietor of a play may suffer by reason of an infringement. It is
probable that Congress intended to provide a remedy so that the
proprietor could recover a certain amount of damages without proof
of what his actual loss had been. In the face of the difficulty of
determining the amount of damages, a minimum sum is provided in
any case, with the possibility of recovering a larger amount on proof
of greater damage. The idea of punishment is not so much
suggested as the desire to provide for compensation to the
proprietor." This rule was applied by Judge Lacombe in Patterson v.
Ogilvie, in 1902.
Other procedure decisions
In the case of Falk v. Curtis Pub. Co., which came before the U. S.
Circuit Court in Pennsylvania twice in 1900, some important
decisions or indications as to copyright procedure were given. The
defense that under the copyright act the words "any person" did not
include a corporation was overruled by Judge Dallas on the ground
that the general statute specifically construed the word "person" to
extend to partnerships and corporations. In this case an action to
recover penalties and an action to replevin copies in possession were
started independently and simultaneously, and the Circuit Court of
Appeals through Judge Buffington affirmed the decision that as the
penalties under the old act were restricted to copies "found in
possession," the suit for penalties was premature. In the later case
of Rinehart v. Smith, also in the Pennsylvania circuit, it was pointed
out that an action for replevin was not the proper form of suit
because in such actions bonds might be given and the forfeiture of
copies thus be barred; and in Hegeman v. Springer, the Circuit Court
in New York held, in 1901, that a replevin suit, involving prior
demand, was not necessary and that the copyright statute itself
gave authority for an action for seizure without previous demand, as
would be necessary in replevin proceedings. It was held, however, in
the Illinois circuit in an earlier case, that a suit of replevin will lie to
enforce forfeiture under the copyright act. Several of these
perplexities, however, are removed by the code of 1909, which
expressly (sec. 27) authorizes the bringing together of all the
remedies in one action.
Preventive action