An employee of a business house who, having a principal place in
the establishment, is entrusted by his employers under their
direction and on their behalf with the custody and possession, but
in a building occupied by them and subject to their control, of
printed copies of a copyrighted photograph, printed in violation of
the provisions of Rev.Stat. § 4965, has not such possession of them
as will entitle the proprietor of the copyright to proceed against
him for a forfeiture of one dollar for every sheet under that
section.
The words "found in his possession" in § 4965 of the Revised
Statutes do not relate to the finding of the jury that the articles
in question were in the defendant's possession, but require that
there should be a time before the cause of action accrues at which
they are found in his possession. Whether the provision in
Rev.Stat. § 4965 that one-half of the profit shall go "to the
proprietor and the other half to the use of the United States" does
not relate solely to the "case of a painting, statue, or statuary,"
quaere.
The case is stated in the opinion of the Court.
Page 124 U. S. 613
MR. JUSTICE MILLER delivered the opinion of the Court.
This is a
qui tam action brought by the defendants in
error, constituting a partnership in the name of Schreiber &
Sons, against Thornton, the plaintiff in error, under § 4965 of the
Revised Statutes. This is found in c. 3, Tit. LX, which has
relation to copyrights. As we have heretofore decided in the case
of
Burrow Giles Lithographic Co. v. Sarony, 111 U. S.
53, photographs are included, under certain
circumstances, among the things which may be copyrighted.
The plaintiffs in this action allege themselves to be the owners
of a valid copyright of a photograph entitled "The Mother Elephant
Hebe' and her Baby `Americus,'" and that the defendant,
Thornton, was liable to them under the above section for an
infringement of their exclusive right in such photograph. The
declaration consisted originally of four counts, but the plaintiffs
afterwards obtained leave to amend it by striking out the third and
fourth. Of the two counts which remained, the first was for copying
an printing said photograph, with the charge that 15,000 sheets of
the same were found in the defendant's possession, printed and
copied by him, and claiming the sum of $15,000 as forfeited to
plaintiffs and to the United States under said section. The second
count alleged that the defendant published said photograph, and
that 15,000 sheets of the same were found in his
possession.
SEC. 4965, on which this action if founded, reads as
follows:
"If any person, after the recording of the title of any map,
chart, musical composition, print, cut, engraving, or photograph,
or chromo, or of the description of any painting, drawing, statue,
statuary, or model, or design intended to be perfected and executed
as a work of the fine arts, as provided
Page 124 U. S. 614
by this chapter, shall, within the term limited and without the
consent of the proprietor of the copyright first obtained in
writing, signed in presence of two or more witnesses, engrave,
etch, work, copy, print, publish, or import, either in whole or in
part, or by varying the main design with intent to evade the law,
or, knowing the same to be so printed, published, or imported,
shall sell or expose to sale any copy of such map or other article,
as aforesaid, he shall forfeit to the proprietor all the plates on
which the same shall be copied, and every sheet thereof, either
copied or printed, and shall further forfeit one dollar for every
sheet of the same found in his possession, either printing,
printed, copied, published, imported, or exposed for sale, and in
case of a painting, statue, or statuary, he shall forfeit ten
dollars for every copy of the same in his possession, or by him
sold or exposed to sale, one-half thereof to the proprietor and the
other half to the use of the United States."
It will be observed that this section gives no right of action
to recover damages, merely as such, by the owner of the photograph,
but limits the remedy to the forfeiture of the plates on which the
infringing article is copied, "and every sheet thereof, either
copied or printed," and to the further forfeiture of "one dollar
for every sheet of the same found in his possession, either
printing, printed, copied, published, imported, or exposed for
sale." In case of "a painting, statue, or statuary," there is to be
a forfeiture of ten dollars for every copy found in the defendant's
possession or by him sold or exposed for sale.
In § 4964, immediately preceding the one under consideration, it
is declared that every person who shall, without the consent of the
proprietor of a copyrighted book, print, publish, import, sell, or
expose for sale any copy of such book shall not only forfeit every
copy thereof to such proprietor, but shall also forfeit and pay
such damages as may be recovered in a civil action by such
proprietor. And so in § 4966, which immediately follows the one
under consideration, it is declared that
"Any person publicly performing or representing any
dramatic
composition for which a copyright has been obtained,
Page 124 U. S. 615
without the consent of the proprietor thereof or his heirs or
assigns, shall be liable for damages therefor, such damages in all
cases to be assessed at such sum, not less than one hundred dollars
for the first, and fifty dollars for every subsequent performance,
as to the court shall appear to be just."
It will thus be seen that while this chapter provides a remedy
by a civil action on behalf of the owner of the copyright of a book
or dramatic composition which has been violated, it makes no such
provision in favor of a copyright of
"any map, chart, musical composition, print, cut, engraving, or
photograph, or chromo, or of the description of any painting,
drawing, statue, statuary, or model,"
etc., except so far as it forfeits the plates on which they are
copied, and the sheets, either copied or printed, and one dollar
for every sheet found in the possession of the defendant. Section
4967 also allows an action for damages by the author or proprietor
of any
manuscript published without his consent.
As the action in the present case is brought by plaintiffs
below, who sued as well for the United States as for themselves,
under the idea that the government was entitled to one moiety of
the penalty recovered, an examination of the statute presents a
question at the outset as to whether the United States has any
interest in the only penalty sought to be recovered -- namely, that
of one dollar for each sheet of the photographs found in the
possession of the defendant. Looking critically at the language of
the statute, the question is suggested whether the one-half of the
amount recovered which is to go to the United States extends beyond
the case of "a painting, statue, or statuary."
It will be observed that in the beginning of the penalty
denounced in this section it is said that the defendant
"shall forfeit to the proprietor [meaning the proprietor of the
copyright] all the plates on which the same shall be copied, and
every sheet thereof, either copied or printed, and shall further
forfeit one dollar for every sheet of the same found in his
possession, either printing, printed, copied, published, imported,
or exposed for sale,"
and recurring, after a semicolon, to another branch of the
subject, it is said that
"in case of a painting,
Page 124 U. S. 616
statue, or statuary, he shall forfeit ten dollars for every copy
of the same in his possession or by him sold or exposed for sale,
one-half thereof to the proprietor and the other half to the use of
the United States."
With regard to the copyrighted articles mentioned in the section
under consideration, it would seem that the first penalty is a
forfeiture of them to the
proprietor, and afterwards, when
other copyrighted articles, enumerated as "a painting, statue, or
statuary," where the amount forfeited is different, it provides
that one-half of the forfeiture shall be to the proprietor and the
other half to the use of the United States.
This point, however, was not raised by either counsel in the
argument, and as we are of opinion that the copies for which
judgment was recovered in this case against the defendant were not
found in his possession, within the meaning of the statute, it is
unnecessary to decide it here.
The suit was brought originally in the District Court of the
United States for the Eastern District of Pennsylvania. It was
there tried before a jury, and a verdict rendered in favor of the
plaintiffs for a forfeiture of one dollar for each of the copies
found in defendant's possession, amounting to $14,800, for which
judgment was entered in that court. A bill of exceptions, taken at
that trial, is found in the record. A writ of error took the case
to the circuit court for that district, which, on the case as made
in the district court, affirmed its decision. To this latter
judgment the present writ of error is directed.
The assignment of errors questions the validity of the
copyright, both as regards the subject matter of the photograph and
as regards the evidences of proper proceedings with the librarian
to make the copyright effective. There are also other errors
assigned which it might be interesting to examine but which we do
not think necessary to a decision of the case as it is now before
us.
The judge in the trial in the court below charged the jury as
follows:
"The court instructs you that under the evidence, if you believe
it (and the court sees nothing that would justify disbelief),
Page 124 U. S. 617
the plaintiff is entitled to recover and to have damages
assessed at the rate of one dollar ($1.00) for every sheet of that
copied photograph found in his [defendant's] possession, and every
sheet under his control at the time must be treated as in his
possession, notwithstanding the interest his employers may have had
in it. . . ."
"A large number of the copies, according to the testimony, were
upon a shelf. . . ."
"And he [the defendant] obtained these copies for the purpose of
labels. They were found in the store where he was, and under his
charge."
"Now I repeat what I have said -- that every sheet under his
control (then under his control) -- notwithstanding the interest
that the firm of Sharpless & Sons may have had in them -- every
sheet thus subject to his control must be regarded, for the
purposes of this suit, as in his possession, and for every sheet
thus found in his possession, if you find for the plaintiff, you
must assess one dollar damages, and I see nothing that would
justify you in not so finding."
This left nothing for the jury to consider but whether they
would believe the testimony; if they did, it was a peremptory
instruction to them to find a verdict against defendant of one
dollar for every sheet found in the store of Sharpless & Sons.
There is no contradiction in the testimony on the subject of the
relation of the defendant Thornton to the possession of these
15,000 sheets of the photographs. Sharpless & Sons were a
partnership in the City of Philadelphia, and large wholesale
dealers in dry goods. Mr. Thornton was, according to his own
testimony and that of Mr. Sharpless, employed by them somewhat in
the character of a business manager, but his main business was,
however, the purchasing of goods which were afterwards sold by that
firm. Their place of business was a three or four story building in
which they had large quantities of textile fabrics stowed away for
sale, and it was in the second or third story of this building that
the sheets were found which are the subject of this suit. They were
among other goods, and were to be used by pasting them upon parcels
of dry goods, which was also often done at the dyers' before the
goods were brought to the business house for sale.
Page 124 U. S. 618
That these copies were the property of Sharpless & Sons can
admit of no doubt; that they were in their building, subject to
their control and use in the same manner as any of the other goods
that they had there is also clear, as well as the fact that the
plaintiffs in this case so understood it.
It appears from the evidence of Francis Schreiber, who was not,
however, a member of the plaintiffs' firm, that he went, in company
with his brother Henry, to the place of business of Sharpless &
Sons and sought an interview with Mr. Sharpless. In the course of
the conversation which ensued, he asked Mr. Sharpless where he got
the pictures from, and he said, "His man who had charge had got it
at Queen's," by his man evidently meaning Thornton, the defendant.
Then, after some conversation about the injury done the proprietors
of the picture, Mr. Sharpless said that he did not intend to do
anything wrong, whereupon witness then asked him whether he had any
of them, to which the reply was, "Yes, he had a great many of them
upstairs." The witness asked him whether they could have them, and
Sharpless said, "Yes, they could have the copies."
This language is inconsistent with any other idea than that Mr.
Sharpless considered the matter entirely under his control. This
conversation with Mr. Sharpless occurred on the eighth day of May,
in their place of business at the corner of Eighth and Chestnut
Streets; it was in the second story of the building, and Henry
Schreiber, a brother of the witness, was also present.
In regard to this same conversation, the witness Francis
Schreiber was asked: "How came you to ask Mr. Sharpless if he would
surrender any of the pictures?" His answer was: "I wanted to know
if he had any. . . . That was my object in going there."
Henry Schreiber, one of the plaintiffs, was also sworn, and
stated that he was present upon the Saturday morning when the
conversation occurred with Mr. Sharpless as to which his brother
Francis testified; that he had been there a few days before, upon
which occasion he saw Mr. Thornton, who was employed there to the
best of his knowledge. He testified that Thornton showed him a
picture; that he saw the place
Page 124 U. S. 619
from which it was taken, a shelf, and that there were others,
quite a package of them, on the shelf. He further testified that in
the conversation on Saturday, Mr. Sharpless said, "Mr. Thornton has
the sole charge of that; he gets up the labels, and gets everything
that he thinks will be appropriate," or something to that effect,
and that Mr. Sharpless also said that Thornton had shown him this
picture before it was used, and he (Sharpless) told him to go
ahead. He also states that Mr. Sharpless said that they had a lot
upstairs, and that he (the witness) could have them all.
Mr. Thornton himself testified that he got up this plate, and
ordered 15,000 copies to be made; that these copies were delivered
to Sharpless & Sons; that the tickets were often put on the
goods at the dyeing establishment, received afterwards by Sharpless
& Sons, and sold to other parties. After some further testimony
as to the details of this transaction, Mr. Thornton was asked:
"Tell us what your business was then at that store of Sharpless
& Sons." He replied:
"I was employed there as the superintendent of the wholesale
domestic department; I have the purchasing of all the goods, the
making of the price, and seeing that they are sold."
He testified in substance that these prints or copies were paid
for by Sharpless & Sons; that he never paid out any money, but
that they were paid for as other goods were by that firm in the
course of business; that they were contracted for by him and paid
for by Sharpless & Sons when the bill was sent to them.
The attempt was made to establish the fact that Thornton had the
possession or control of these prints by showing that he was the
man who first conceived the idea of getting up and using them in
the business of Sharpless & Sons; that he did in effect order
the photograph to be made, and only showed it to Mr. Sharpless
after this was done. Thornton, however, states that before it was
used, and a month before the time the prints were found at the
store by the plaintiffs, that Mr. Sharp less had known about the
photograph and copy; that he approved it, and that the bills were
paid by his firm.
We do not see how Mr. Thornton, merely as an employee, although
he may have had a principal place in that establishment,
Page 124 U. S. 620
could be said to have had the possession of these prints when
they were found by the plaintiffs in the store of Sharpless &
Sons. In any other light that it can be viewed, that firm would be
held to be in possession. An action of replevin could have been
sustained against them for the possession of these goods, or an
action of trover, if they had been the property of plaintiffs, on
account of the possession of them by Sharpless & Sons.
Sharpless & Sons could have done what they pleased with them;
they could have ordered them thrown out and burned; they could have
given them up, and they did offer to give them up, to plaintiffs.
It was Sharpless himself who made this offer, and the plaintiffs
obviously understood that Sharpless was the man with whom they were
dealing all this time. Their first visits were to him; they talked
the matter over with him; they recognized him as having control of
the plates, of the prints, of the entire transaction, and it is
impossible to conceive that Mr. Thornton had any other control over
those sheets than he had over any piece of dry goods in the
building. What he did during all the time in which this transaction
occurred was as an employee of Sharpless & Sons, and any other
clerk, porter, or salesman in that establishment who handled these
articles or who had access to them and could use them upon packages
of goods, had as much possession of them as Mr. Thornton, and any
such person could have been sued and a recovery had against him as
lawfully as against Thornton so far as the matter of possession is
concerned. What right of action might have been maintained against
Thornton for actively copying, printing, selling, or exposing these
prints for sale is not now in question; the recovery here is based
upon the fact of their being found in his possession.
Counsel for defendants in error, Schreiber & Sons, insist
that the words "found in his possession" are to be construed as
referring to the finding of the jury; that the expression 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
committed the wrongful act, such person shall forfeit one dollar
for each sheet so ascertained to have
Page 124 U. S. 621
been in his possession. We, however, think that the word "found"
means that there must be a time before the cause of action accrues
at which they are found in the possession of the defendant. If,
however, plaintiffs' view of the subject were tenable, the fact
still remains that the only possession Mr. Thornton ever had of
these prints was the possession of Sharpless & Sons, holding
them merely as their employee, subject always to their order and
control, and never with any claim of right in him to control them
except in their service.
The instructions of the court to the jury therefore on this
subject were erroneous, and the testimony did not justify the
charge. For this reason,
The judgment of the circuit court is reversed and the case
remanded with instruction to set aside the verdict, and for further
proceedings in accordance with this opinion.