Although there can be no copyright in the opinions of the judges
of a court, or in the work done by them in their official capacity
as judges, there is no ground of public policy on which a reporter
who prepares a volume of law reports of the usual character can be
debarred from obtaining a copyright for the volume which will cover
the matter which is the result of his intellectual labor.
He has a right to take such copyright when there is no
legislation forbidding him to do so or directing that the
proprietary right which would exist in him shall pass to the state,
or that the copyright shall be taken out for or in the name of the
state, as the assignee of such right, even though he is a sworn
public officer with a fixed salary.
The copyright of the volume taken by the reporter, as author,
will cover the parts of the book of which he is the author,
although he has no exclusive right in the judicial opinions
published.
Such copyright may cover the title page, the table of cases, the
headnotes or syllabuses, the statements of facts, the arguments of
counsel, and the index, comprehending also, the order of
arrangement of the cases, the division of the reports into volumes,
the numbering and paging of the volumes, the table of the cases
cited in the opinions, and the subdivision of the index into
appropriate condensed titles, involving the distribution of the
subjects of the various headnotes, and cross-references.
The three conditions prescribed by the Copyright Act of February
3, 1831, c. 16, 4 Stat. 436 -- namely the deposit before
publication of the printed copy of the title of the book, the
giving of information of the copyright by the insertion of a notice
thereof on the title page or the next page, and the depositing of a
copy of the book within three months after the publication, are
conditions precedent to the perfection of the copyright.
A certified copy, under the hand and seal of the clerk of the
district court of the United States in whose office the copy of the
title of the book was deposited, of the record of the same, the
certificate bearing date the day of such deposit, with a memorandum
underneath of the pact and date of the deposit of the work, signed
by the same clerk, is sufficient
prima facie evidence not
only of the fact and date of the deposit of the title, but of the
fact and date of the deposit of the work, and it will be presumed
in the absence of evidence to the contrary that the deposit of the
title was made before publication, and also that where the work
purports to
Page 128 U. S. 618
have been deposited within three months after the date of the
deposit of the title, it was deposited within three months after
publication.
Where the deposit of the title and the deposit of the work
purport to have been made on the same day, it will be presumed, in
the absence of evidence to the contrary, that the deposit of the
title was made before publication, and that the deposit of the work
was not made prior to publication.
Where the work purports to have been deposited more than three
months after the deposit of the title, it will not be presumed that
the deposit of the work was made within three months after
publication.
The case distinguished from
Merrell v. Tice,
104 U. S. 557.
The delivery by the reporter of copies of a volume of reports to
the prescribed officer of a state, under a statute, for its use,
accompanied by the payment of the reporter therefor, was a
publication of the book so as to require the deposit of the work in
the clerk's office within three months after such publication, to
make the copyright valid.
Where the copy of the title and the work were deposited in the
clerk's office on the same day the copies were delivered by the
reporter to the state, it will be presumed, in the absence of
evidence to the contrary, that the deposit of the title preceded
the publication, and that the delivery of the copies to the state
preceded the deposit of the work.
Where the title was deposited in 1867 and the notice printed in
the volume purported to show that the copyright was entered in
1866, the variance was immaterial.
Where the title was deposited by "E. B. Myers & Chandler," a
firm, as proprietors, and the printed notice of entry of copyright
in the volume stated that the copyright was entered by " E. B.
Myers," a member of such firm, the variance was immaterial.
A written transfer of the manuscript of the volume from the
reporter to the person taking out the copyright as proprietor was
not necessary, and parol evidence was competent to show his
ownership thereof at the time of the infringement.
On the evidence, it was held that the plaintiff had not
consented to or acquiesced in the infringement or abandoned his
copyright or been guilty of laches.
The question of infringement considered and decided in favor of
the plaintiff.
It is proper, in an interlocutory decree for an accounting
before a master in a copyright case, to direct that the defendant
may be examined in regard to the subject matter of the accounting,
and may be required to produce his account books and papers.
Although the bill prays fur a forfeiture to the plaintiff, under
the statute, of copies in the possession of the defendant of the
infringing volume and for their delivery to the plaintiff, yet if
the final decree does not award any forfeiture, the defendant is
not injured by anything done under such provision of the
interlocutory decree; nor can the penalties given by ยง 7 of the act
of 1831 be enforced in a suit in equity; nor can
Page 128 U. S. 619
evidence obtained from the defendant through his examination and
the production by him of his books and papers be used against him
in any other suit in which a forfeiture is sought.
The cost of stereotyping a volume is not a proper credit to be
allowed to a defendant, nor is the amount paid to the members of a
defendant firm for their services in the way of salaries during the
time of infringement, as a part of the expense of conducting its
business; nor is the cost of producing copies of the volume which
were not sold; nor is the amount paid for editorial work in
preparing the infringing volume.
It is proper to charge the defendant with his profit on the
resale by him of copies once sold by him and then repurchased,
although he is also charged with his profit on the original sale of
such copies.
The lawful matter in the infringing volume being useless without
the unlawful, and it being impossible to separate the profit on the
latter from that on the former, and the volume being sold as a
whole, the defendant is responsible for the consequences, and the
plaintiff is entitled to recover the entire profit on the sale of
the volume if he so elects.
In considering exceptions to a master's report in matters of
fact, questioning his conclusions in respect to the amount of the
defendant's profits, those conclusions, depending on the weighing
of conflicting testimony, will not be set aside or modified unless
there clearly appears to have been error or mistake on his
part.
The case, as stated by the court, was as follows:
This is a suit in equity, brought in the Circuit Court of the
United States for the Northern District of Illinois on the 17th of
December, 1877, by Eugene B. Myers against Bernard Callaghan,
Andrew Callaghan, Andrew P. Callaghan, and Sheldon A. Clark,
composing the firm of Callaghan & Co., Marshall D. Ewell, and
Van Buren Denslow.
The bill sets forth that the firm of E. B. Myers & Chandler,
composed of the plaintiff and Horace P. Chandler, became the
proprietors of volumes 32 to 38, both inclusive, of the reports of
the Supreme Court of the State of Illinois, known as "Illinois
Reports," prepared by Norman L. Freeman; that, as such proprietors,
said firm, desiring to secure a copyright for the several volumes,
under the statutes of the United States, deposited in the office of
the Clerk of the District Court of the United States for the
Northern District of Illinois, before publication, a printed copy
of the title of the several volumes; and that they afterwards, and
within three months of the publication of the volume, deposited in
said office a copy of the
Page 128 U. S. 620
work. The dates of the deposit of the titles of the several
volumes were as follows: volume 32, August 12, 1865; 33, April 21,
1866; 34, October 23, 1866; 35, January 28, 1867; 36, October 11,
1867; 37, December 31, 1866; 38, August 22, 1867. The alleged dates
of the deposit in said office of a copy of the several volumes were
as follows: volume 32, January 17, 1866; 33, June 8, 1866; 34,
October volumes were as follows: volume 32, January 17, 1866; 33,
June 8, 1866; 34, October 23, 1866; 35, March 5, 1867; 36, November
13, 1867; 37, January 28, 1867; 38, October 10, 1867.
The bill also alleges that the plaintiff became the proprietor
of volumes 39 to 46, both inclusive, of the reports of the Supreme
Court of the State of Illinois, known as "Illinois Reports,"
prepared by Norman L. Freeman; that, as such proprietor, he,
desiring to secure a copyright for the several volumes under the
statutes of the United States, deposited in the office of the Clerk
of the District Court of the United States for the Northern
District of Illinois, before publication, a printed copy of the
title of the several volumes, and that he afterwards, and within
three months of the publication of the volume, deposited in said
office a copy of the work. The dates of the deposit of the titles
of the several volumes were as follows: volume 39, June 10, 1868;
40, September 18, 1868; 41, December 22, 1868; 42, May 21, 1869;
43, June 21, 1869; 44, September 27, 1869; 45, October 6, 1869; 46,
October 14, 1869. The alleged dates of the deposit in said office
of a copy of the several volumes were as follows: volume 39, June
12, 1868; 40, November 6, 1868; 41, January 29, 1869; 42, July 7,
1869; 43, July 7, 1869; 44, October 2, 1869; 45, December 8, 1869;
46, December 8, 1869.
The bill further alleges that all the volumes were prepared by
Mr. Freeman, and each contained a large amount of matter original
with him, and a great number of the decisions and opinions of the
Supreme Court of Illinois; that among other original matter, Mr.
Freeman prepared for each case a syllabus or headnotes, and for
many cases in each volume a statement of the facts of the case;
that also in many of them he copied, or copied and arranged, the
instructions ruled upon by the court below; that he also prepared
and inserted, or gave,
Page 128 U. S. 621
in all or many of them, the stipulations made or made and filed
therein, and in many of them he gave the errors assigned; that he
also prepared for each of them a table of the cases cited therein
and a table of the cases decided, and other original matter, and so
arranged said decisions and the matter therein contained, or the
matter in connection with the decisions, as to make each of the
books, or each of the books and the matter therein contained,
convenient and valuable to the persons using the decisions; that in
respect of volumes 32 to 38, the firm of E. B. Myers &
Chandler, and in respect of volumes 39 to 46, the plaintiff,
purchased from Mr. Freeman all his proprietary rights in the
volumes, and paid him a large consideration therefor, and for his
labor and care in preparing them, and used the labor and matter of
Mr. Freeman in publishing the books; that by the agreements with
Mr. Freeman, the plaintiff and his partner were to have the
copyright of volumes 32 to 38, and the plaintiff the copyright of
volumes 39 to 46; that in respect of volumes 32 to 38, the said
firm, and in respect of volumes 39 to 46, the plaintiff divided the
decisions and the matter accompanying them into volumes and divided
and arranged each of the volumes into pages; that the firm
published over 1,500 copies of each of the volumes 32 to 38, and
the plaintiff over 1,500 of each of the volumes 39 to 46; that on
the 13th of June, 1868, said Chandler sold and assigned to the
plaintiff, by a written assignment, all his interest in and to
volumes 32 to 38, and the copyrights thereof, and that the
plaintiff still has the exclusive right to volumes 32 to 46.
The bill further alleges that about July, 1877, the plaintiff
reprinted volumes 37 and 38, and, as he made some changes in the
arrangement of their pages, he did, before publication, deposit in
the office of the Librarian of Congress a copy of the printed title
of each volume, on the 20th of July, 1887; that afterwards, on the
28th of July, 1877, and within one month of the publication
thereof, he deposited in said office two copies of each of the
volumes as reprinted.
The bill also alleges as to all of the volumes that the
plaintiff had the exclusive right to the arrangement of each of
Page 128 U. S. 622
them, and the exclusive right to publish the headnotes or
syllabuses, and to the arrangement of the pages of the books, and
to the division of the opinions into separate volumes, and to the
table of cases cited and table of cases decided, as published in
each of them, and to the arrangement of the decisions, as
accompanied with the headnotes, stipulations, errors assigned,
instructions, table of cases cited, table of cases reported, and
indexes accompanying the same, and the exclusive right to all of
said works, except to the matter contained in the opinions of the
judges; that the defendants had full knowledge of the exclusive
rights of the plaintiff, and attempted to buy them from him, but
refused to pay the price charged by him, and thereupon proceeded to
reprint and publish volumes 32 to 38, and, in doing so, used the
decisions of the Supreme Court of Illinois only as published by the
plaintiff, and prepared the volumes from the books of the
plaintiff, and did not procure the matter from original sources,
and in all of the books used the works of the plaintiff, and copied
the title pages thereof, and used the division and arrangement of
the plaintiff in the volumes, and the paging thereof, and copied
the table of cases cited an the table of cases reported from each
of the books of the plaintiff, and also copied from the same the
stipulations, errors assigned, and instructions given by the court;
that in publishing the statements of the cases, and in preparing
the syllabuses, the defendants used the books of the plaintiff, and
the changes they made were merely colorable, and were made only for
the purpose of avoiding the claim of the plaintiff; that the books,
as printed and published by the defendants, were all and each
merely imitations of the volumes of the plaintiff, corresponding in
number; that all and each of said republications by the defendants
are piracies on the copyrights of the plaintiff, and the books have
been made by them to take the place of, and, as far as they can, to
supersede the books of the plaintiff; that the defendants are
selling them to the persons who would otherwise buy the books of
the plaintiff, to his great damage and loss; that the defendants
threaten to republish volumes 39 to 46; and that the aggregate
value of the copyrights of the plaintiff is not less than $20,000,
and his damage is not less than that sum.
Page 128 U. S. 623
The bill waives an answer on oath, and prays for an injunction
perpetually enjoining the defendants from publishing or selling or
offering for sale any of the books and for a decree that all of
them so published by the defendants are forfeited to the plaintiff
and that they be delivered to him, and for an account of all
published and sold and for a decree for damages.
The members of the firm of Callaghan & Co. put in an answer
to the bill. It sets up that a printed copy of volume 32 was not
deposited until more than three months after publication. It avers
that but a small amount of original matter was prepared by Mr.
Freeman for any of the volumes 32 to 46, and that but few
statements of cases were prepared by him, and those few were drawn
by him from the opinions of the court in the cases reported. It
denies that he prepared any tables of cases cited for any of those
volumes, and denies that he so arranged the decisions and matter
contained in the volumes as to make the volumes convenient and of
value to the persons using them. It avers that all matters
contained in the volumes are public and common property, forming
part of the law of the State of Illinois, and as such not
susceptible of copyright or in any manner literary property in
which a private citizen can have a monopoly under the act of
Congress regulating the subject of copyright; that whatever labor,
literary or otherwise, was done upon the volumes by Mr. Freeman was
done in his official capacity as Reporter of the decisions of the
Supreme Court of Illinois, a public office then existing under and
by virtue of the laws of that state, and to which Mr. Freeman had
been duly appointed; and that all labor, literary or otherwise, by
Mr. Freeman in his capacity as official reporter upon the volumes
was public and common property, not susceptible of copyright or of
private literary ownership. The answer admits that the defendants
had negotiations with the plaintiff concerning the purchase of his
interest in volumes 39 to 46, consisting of the stereotype plates
and printed stock of those volumes; that in such negotiations the
plaintiff proposed to sell his copyrights in volumes 32 to
Page 128 U. S. 624
46, but no price or value was ever attached by either party to
such copyrights and they were always treated as a mere incident to
the proposed sale, and all offers made and received on either hand
were made with reference to such stereotype plates and printed
stock, and it was understood by all parties that if such sale were
consummated, the copyrights should be "thrown in" without
additional charge.
The answer also admits that in republishing volumes 32 to 38,
the defendants have used the opinions of the Supreme Court of
Illinois as published by the plaintiff, but avers that they have
corrected errors in names, citations, and other matters therein and
denies that they have prepared the books from those of the
plaintiff or used the work of the plaintiff except insofar as
plaintiff's books are free to the use of any and all persons, or
have copied his title pages, or have used his paging, or have
copied his tables of cases cited or reported, or the stipulations,
errors assigned, or instructions given. It avers that the
statements of cases and syllabuses in the volumes, as republished
by the defendants, are wholly original and entirely different from
and unlike those of the plaintiff except in the few instances where
there is an apparent resemblance owing to the fact that those of
the defendants have been drawn from the opinions of the court and
those of the plaintiff in the same cases appear to have been drawn
from the same source, and that the volumes so republished by the
defendants contain large amounts of new, original, and valuable
matter prepared expressly for those volumes and not contained in
any of the volumes of the plaintiff. It admits that the defendants
have under consideration the republication of volumes 39 to 46. It
also avers that for many years before the filing of the bill, the
plaintiff had abandoned volumes 32 to 38; that his stereotype
plates and stock of those volumes were destroyed in October, 1871,
and none of them was ever reproduced by him until about July or
August, 1877, when he reprinted volumes 37 and 38; that prior
thereto, he had for many years repeatedly announced that he should
never reproduce those volumes; that more than a year before the
filing of the bill, the defendants notified
Page 128 U. S. 625
the plaintiff of their intention to republish volumes 32 to 38,
and frequently thereafter notified him of such intention and
publicly announced the same by advertisement, and from time to
time, as such republication progressed, during the spring and
summer of 1877, notified him of the progress of the work, and, as
the volumes appeared from time to time during the spring and summer
of 1877, the plaintiff was constantly apprised thereof, and at
divers times during that year, and before, the defendants received
various propositions from the plaintiff for an exchange of volumes
32 to 38, so being republished, for volumes 39 to 46, which the
plaintiff had for sale; that the plaintiff, down to the filing of
the bill, never objected to such republication, but always appeared
to acquiesce therein, and encouraged the defendants to proceed
therewith, and from his conduct during such period the defendants
always believed, down to the filing of the bill, that such
republication was being done with his acquiescence and consent, and
that the plaintiff, by his conduct, is estopped from receiving the
relief asked. The answer also denies all the material allegations
of the bill.
Ewell and Denslow each put in an answer disclaiming all interest
in the publication of any volumes of the reports by Callaghan &
Co. and all interest in such volumes.
Issue was joined and proofs were taken, and on the 10th of
February, 1881, the circuit court entered an interlocutory decree
finding that the plaintiff was the owner of the copyright or
exclusive right of publication of volumes 32 to 38 and that
Callaghan & Co. had violated such copyright by publishing,
offering for sale, and selling copies of said seven volumes, and
Ewell and Denslow by editing the same. The decree awarded a
perpetual injunction against all of the defendants from further
publishing or selling or transferring or removing any of said
books, and ordered a reference to a master, Henry W. Bishop, to
ascertain and report what number of each of the volumes had been
printed, and what number sold, and at what prices, and directed
that the members of the firm of Callaghan & Co. might be
examined in regard thereto, and might be required to produce their
account books
Page 128 U. S. 626
and papers, and that the master ascertain and report what was
the market value of each of the books of the plaintiff prior to the
illegal publication by the defendants, and what was the actual cost
or value of reprinting and binding each of the volumes, and that,
upon the making of the report, the plaintiff might apply for a
further order in regard to the damages to be allowed to him for the
illegal publication and sale of the volumes. The decree also gave
leave to the plaintiff to file a supplemental bill based on the
fact that since the filing of the original bill, Callaghan &
Co. had proceeded to publish and sell copies of the books described
in the bill as volumes 39 and 41 to 46.
The decision of the circuit court is reported in 5 F. 726. The
ruling of the court was (1) that the volumes of reports were the
proper subject of a copyright under the act of Congress for at
least what was the work of the mind and hand of the reporter --
namely the headnotes and the statements of facts and of the
arguments of counsel, notwithstanding he could have no copyright in
the opinions of the court; (2) that there had been a compliance
with the act of Congress in the procurement of the several
copyrights; (3) that the defendants had, in preparing volumes 32 to
38, used the volumes of the plaintiff so as to interfere with his
copyright; (4) that he had not consented to the publications made
by the defendants or abandoned his rights by acquiescence, laches,
or otherwise.
On the 14th of February, 1881, the plaintiff filed a
supplemental bill against the same defendants, reciting the
material allegations of the original bill, and averring that since
it was filed the defendants had published and sold large numbers of
volumes 39 and 41 to 46, and were threatening to publish volume 40;
that in the volumes they had published, they had used the
plaintiff's volumes, and had copied his arrangement or division
into volumes of the matter contained in his volumes, and had copied
his whole arrangement of each of them, and had used each of them to
make, and had made, their books an imitation and copies of his
books, and had advertised and sold their books as the same books as
his, and had not
Page 128 U. S. 627
resorted to the records for the opinions and other matter
contained in their books, but had copied the same from his books,
using and copying considerable portions of the original matter
furnished by Mr. Freeman -- in some instances copying exactly, and
in others making merely colorable changes; that before any of the
publications of the defendants were made, the plaintiff had
advertised his books extensively; that the decisions of the Supreme
Court of Illinois, as divided by plaintiff into volumes, had, by
reason of what was done by him, become known by the name which had
been applied to the classification so made by the plaintiff; that
such division was the property of the plaintiff, and was valuable,
and was covered and protected by his copyright; that the defendants
had copied the title or name of each of the books; that each of the
books of the defendants was made to supersede and take the place of
one of the books of the plaintiff of corresponding number; and that
they were being so sold, to his great damage.
The supplemental bill waives an answer on oath and prays for a
perpetual injunction restraining the defendants from publishing,
selling, offering for sale, or removing beyond the jurisdiction of
the court any of said books, and for a decree that they pay to the
plaintiff all his damages by reason of such publication and
sale.
On the 18th of February, 1881, the members of the firm of
Callaghan & Co. filed a cross-bill in the same court against
Myers, reciting the proceedings on the original bill and the terms
of the interlocutory decree of February 10, 1881. It averred that
the discovery and accounting provided for thereby were in progress
before the master, Mr. Bishop; that Bernard Callaghan, one of the
firm, had been partially examined concerning the number of volumes
printed by Callaghan & Co. and on hand, and had already been
required to produce before the master, for the examination of Myers
and his counsel, books and papers of Callaghan & Co. relating
to the volumes and the number thereof printed; that such
examination was still progressing; that Callaghan & Co. had in
their possession certain copies of volumes 32 to 38, and Myers
claimed that he was entitled to a forfeiture of the
Page 128 U. S. 628
same and a delivery thereof; that Myers, on the 11th of
February, 1881, brought an action of replevin against Callaghan
& Co. to recover those copies; that the writ was in the hands
of the marshal for service; that Myers was ignorant of the precise
number and whereabouts of the copies, but as soon as the
examination and discovery then progressing before the master should
have disclosed the number and location of the copies, Myers would
instruct the marshal to seize them under the writ; that Myers was
not entitled to any discovery from Callaghan & Co. in aid of
his proceedings for a forfeiture of the copies; that Myers, having
taken the decree for a discovery as to the copies, and having
obtained a discovery thereunder, and having acquiesced in the
publication of the volumes by the defendants, was estopped in
equity from claiming any forfeiture or recovery of any of the
copies; and that such decree, and the examination and discovery
before the master, amounted to a waiver of the forfeiture or
recovery by Myers.
The cross-bill waived an answer on oath, and prayed for a
perpetual injunction to restrain strain Myers from further
proceeding with the action of replevin and from instituting any
further action for the forfeiture or recovery from Collaghan &
Co. of any copies of volumes 32 to 38, and for an injunction to
that effect
pendente lite. Myers answered the cross-bill,
setting forth the interlocutory decree made in the original suit
and admitting that he claimed that the volumes in the possession of
Callaghan & Co. became forfeited to him under the act of
Congress, and alleging that the interlocutory decree did not
provide for a discovery or an accounting, and that he was not
seeking any discovery from Callaghan & Co. for the purpose of
aiding him in procuring the possession of the books; that the
volumes were not published by Callaghan & Co. with his
knowledge, acquiescence, or consent; that he claimed the benefit of
the forfeiture provided for by section 99 of the Act of July 8,
1870, c. 230, 16 Stat. 214, now section 4964 of the Revised
Statutes, and that he had done nothing to waive or abandon the
right given to him by that statute. A replication was filed to this
answer.
Page 128 U. S. 629
The members of the firm of Callaghan & Co. filed an answer
to the supplemental bill on the 22d of June, 1881. It admitted that
the firm had published and sold volumes 39 and 41 to 46, and denied
that in publishing those volumes, they had made any other use of
the plaintiff's volumes than such fair and legitimate use, by way
of reference, consultation, and otherwise, as might be made of any
previous publication by a succeeding author or compiler treating of
the same subject, and denied that they had copied the plaintiff's
arrangement or division of matter other than that the cases
reported in the defendants' volumes followed each other in the same
order as in the plaintiff's volumes, and denied that they had used
the plaintiff's volumes to make their books an imitation, or copies
of them, or that their books had been made in imitation of those of
the plaintiff. They denied that they had advertised or sold their
books as the same books as those of the plaintiff, but admitted
that they had used the name "Freeman's Reports" in their catalogues
and circulars, and averred that such use was in accordance with the
uniform usage of law publishers in indicating volumes of law
reports by the name of the original reporter, and with no intention
of announcing the volumes of the defendants as those of the
plaintiff; that, as appeared by their catalogues and circulars, the
defendants, by a note immediately following the words "Freeman's
Reports," directed attention to the fact that the volumes of the
defendants were a different, revised, and re-edited edition, and
were all re-reported and edited by persons other than Mr. Freeman,
whose names were stated in the note; that the plaintiff had no
property in the name "Freeman's Reports," yet, as soon as the
supplemental bill was filed, the defendants desisted from such use
of the words "Freeman's Reports," and had corrected their
catalogues and circulars by changing the words "Freeman's Reports"
to "Illinois Reports;" and that although they had used the words
"Freeman's Reports" in the manner described for several years prior
to the filing of the supplemental bill, the plaintiff had not
objected thereto prior to that time.
The answer admitted that the defendants, in making their
Page 128 U. S. 630
books, had taken the opinions of the court from the volumes as
reported by Mr. Freeman, but stated that in all cases they had
carefully compared each of the opinions with the original opinions
of the court on file or recorded in the respective cases, and had
made frequent corrections therein to correspond with the original;
and that, except as to such use of the opinions, the remaining
matter in the volumes of the defendants was obtained from the
original records of the court, and was arranged, reported,
compiled, and edited wholly by the original labor of the editors
employed by the defendants for that purpose, and whose names
appeared as such editors on the title page and cover of each of the
volumes of the defendants. It also averred that the titles of the
volumes of the defendants were so different from those claimed by
the plaintiff that they could not be mistaken therefor even by a
casual purchaser or observer, and that the volumes of the
defendants were new and original productions, with new and original
tables of cases, headnotes, statements of facts, abstracts of
briefs of counsel, corrected opinions, footnotes, and indexes, and
were in no manner copies of or infringements upon the volumes of
the plaintiff. It also averred that the plaintiff could not have,
under the acts of Congress or otherwise, any exclusive right in the
opinions of the court, as published, or in their arrangement or
division, or in the titles of the volumes. The answer also denied
all the material allegations of the supplemental bill. A
replication was filed to this answer.
Ewell and Denslow answered the supplemental bill by an answer
disclaiming all interest in the publication of the volumes named in
the supplemental bill and all interest in those volumes.
On the 2d of January, 1883, Meyers amended his supplemental bill
by averring that the defendants had infringed his copyright by
reprinting and publishing volume 40. An answer was put in to such
amendment, and a replication to that answer.
Proofs were taken as to the supplemental bill, and on the 3d of
March, 1884, the court made an interlocutory decree that the
plaintiff was the owner of the copyright and of the exclusive
Page 128 U. S. 631
right of publication of volumes 39 to 46; that the defendants
had in some particulars infringed said copyrights; and that the
plaintiff recover the profits received or made or accrued therefrom
and referring it to John I. Bennet, a master, to report such
profits, and directing that the defendants might be examined in
relation thereto, and might be required to produce before the
master their books of account and papers relating to the
publication and sale of such volumes, and that the master should
report also the damages.
The decision of the court is found in 20 F. 441. The only
question considered in the decision was that of infringement. The
court held that in some respects in each case, the Freeman volume
had been used by the defendants, in the headnotes, the statements
of facts, and the arguments of counsel.
On the 17th of April, 1882, the master, Mr. Bishop, reported
that the defendants had printed 4,313 of volumes 32 to 38, and had
sold 2,909 of the same, the amount of the sales of the several
volumes being as follows: volume 32, $1,990.91; 33, $1,971.73; 34,
$1,884.24; 35, $1,945.09; 36, $1,933.47; 37, $1,878.68; 38,
$1,847.07 -- being a total of $13,451.19, and an average of $4.62
1/2 per volume. He stated that no testimony had been offered as to
the market value of the volumes before publication by the
defendants. He also reported the cost or value of reprinting and
binding the several volumes to be as follow: volume 32, $942.88;
33, $782.35; 34, $664.13; 35, $843.50; 36, $835.97; 37, $773.18;
38, $885.78 -- making a total of $5,727.79, not including the item
of proofreading or the item of expense of selling or a charge for
stereotyping. The defendants excepted to this report because the
master had not allowed to the defendants the amount paid by them
for proofreading and editorial work on the volumes or for
stereotyping. The court, on a hearing on the report and exceptions,
referred the cause back to the master, Mr. Bishop, to ascertain and
report, on the evidence given and on further evidence, the total
amount of the damages sustained by the plaintiff in consequence of
the illegal publication and sale.
Mr. Bishop made a second report on the 2d of February, 1884, on
the previous proofs and on new testimony. He
Page 128 U. S. 632
again reported the total number of copies printed of volumes 32
to 38 to have been 4,313, and the total number of them sold to have
been 2,909. He reported the amount of sales, as before, by items,
making a total of $13,451.19, and an average of $4.62 1/2 per
volume. Excluding charges for stereotyping, counsel fees, editorial
work, and proofreading, and including 12 7/8 percent of the gross
sales as a legitimate item of expense in conducting the business of
the defendants in the course of the publications, he reported the
cost of reprinting and binding the several volumes to have been as
follows: volume 32, $1,064.25; 33, $883.06; 34, $749.63; 35,
$952.10; 36, $943.59; 37, $872.70; 38, $999.81 -- making the total
cost of reprinting, binding, and disposing of the volumes
$6,465.14. Deducting that from the $13,451.19 left a balance of
$6,986.05, which he reported as the damages sustained by the
plaintiff by reason of the illegal sale and publication.
The plaintiff filed sundry exceptions to the second report of
Mr. Bishop, and the defendants filed three exceptions to it. The
first exception of the defendants was that the master had not
allowed them credit for the cost of stereotyping; the second that
he had not allowed, as part of the expenses of conducting the
business of the defendants, salaries paid to them for their
services, the same amounting to about $12,000 a year; the third,
that he had allowed to them only 12 7/8 percent of their gross
sales as expenses incurred in effecting such sales, and had not
allowed the salaries as a part of such expenses, whereas he should
have allowed credit to them, on account of such expenses, for such
additional percentage over and above 12 7/8 percent as the amount
of such annual salaries bore to the gross annual sales during the
period in question.
On the 24th of October, 1884, the master, Mr. Bennett, filed his
report finding that the defendants had disposed of 2,292 copies of
volumes 39 to 46. He stated that the plaintiff claimed that 156
more volumes had been sold, making 2,448 in all. The 156 volumes
were volumes which, after being originally sold by the defendants,
had again come to their hands and been resold once or oftener. The
master disallowed these resales, but reported that if they were to
be allowed, the sum
Page 128 U. S. 633
of $696.38 should be added as damages for such resales. He
reported the average sale price of the volumes, received by the
defendants, to have been $4.464, making a total sale price of
$10,231.48. He reported that the cost of all the volumes sold was
$4,679.55; that the defendants were entitled to a credit of
$1,118.49 on account of the general expenses of conducting their
business, being twelve percent of their gross sales; that the total
cost of producing the volumes sold was $5,798.04; and that,
deducting that amount from the $10,231.48, left $4,433.44 as the
total amount of net receipts from sales, or damages to the
plaintiff.
The plaintiff excepted, by his first and second exceptions, to
the disallowance in respect of the 156 copies resold, and filed
other exceptions. The defendants filed exceptions in regard to the
number of volumes sold, the number of volumes on hand, the average
price of the sales, the total gross receipts from the sales, the
cost of the volumes sold, the amount of the credit for general
expenses of conducting their business, the net receipts from the
sales, the refusal of the master to allow them credit for the cost
of producing the volumes unsold and remaining on hand, or credit
for the sum expended by them for editorial work in preparing the
volumes, or credit for the amount expended by them in stereotyping
the volumes, or credit for the amount paid them as compensation for
their services, or credit on account of sundry other matters.
The court, on a hearing on the reports of the masters and the
exceptions thereto, sustained the first and second exceptions of
the plaintiff to the report of the master, Mr. Bennett, and
overruled all the other exceptions of both parties to both of the
reports.
On the 9th of July, 1885, a final decree was entered adjudging
that the plaintiff recover $340.70 as profits on the resales of the
156 volumes, in addition to the $4,433.44 reported by the master,
Mr. Bennett, and the $6,986.05 reported by the master, Mr. Bishop,
the three sums amounting to $11,760.19, and the costs of the suit.
The decree granted a perpetual injunction as to volumes 32 to 46.
It also restrained the defendants from selling or disposing of the
stereotype plates of those
Page 128 U. S. 634
volumes and dismissed the bill as to Denslow and Ewell without
costs. It further adjudged that the right of the plaintiff to
recover the additional sum of $896.19, as claimed by the plaintiff,
and referred to in the second report of the master, Mr. Bishop, in
case the cost of composition and press work should be ratably
distributed over the whole edition printed of volumes 32 to 38, and
also the rights of all parties under the cross-bill, and the rights
of all parties to the said action of replevin for the unsold copies
of volumes 32 to 38, be reserved for determination on the hearing
of the cross-bill.
The report of the decision of the circuit court on the
exceptions to the reports of the masters is found in 24 F. 636.
From such final decree the defendants composing the firm of
Callaghan & Co. have appealed to this Court.
Page 128 U. S. 645
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
The volumes of law reports of which the plaintiff claims a
copyright are in the usual from of such works. Each volume consists
of a title page, of a statement of the entry of copyright, of a
list of the judges composing the court, of a table of the cases
reported in the volume, in alphabetical order, of a headnote or
syllabus to each opinion, with the names of the respective counsel
and their arguments in some cases, and a statement of facts,
sometimes embodied in the opinion and sometimes preceding it, and
of an index, arranged alphabetically and consisting substantially
of a reproduction of the headnotes. Of this matter all but the
opinions of the court and what is contained in those opinions is
the work of the reporter and the result of intellectual labor on
his part.
The broad proposition is contended for by the defendants that
these law reports are public property, and are not susceptible of
private ownership and cannot be the subject of copyright under the
legislation of Congress. It is urged that Mr. Freeman, the
reporter, was a public officer, whose office was created by chapter
29 of the Revised Statutes of Illinois of 1845, which enacted as
follows, in regard to the supreme court and the reporter:
Page 128 U. S. 646
"SEC. 20. The court shall appoint some person learned in the law
to minute down and make report of all the principal matters, drawn
out at length, with the opinion of the court, in all such cases as
may be tried before the said court, and the said reporter shall
have a right to use the original written opinion after it shall
have been recorded by the clerk."
"SEC. 21. The reporter, before entering upon his duties, shall
be sworn by some one of the justices of the supreme court
faithfully to perform the duties of his said office. He may, for
misconduct in office, neglect of duty, incompetency, or other cause
shown, to be entered of record, be removed from office."
"SEC. 22. It shall be the duty of the reporter to deliver to the
Secretary of State, as soon as convenient after publication, such
number of copies of the respective volumes of the reports of said
court as may be necessary to enable the said Secretary to
distribute the same in the manner provided in the following
section, together with one hundred copies in addition, to be
deposited in the Secretary's office for the use of the state."
Section 23 provided for the distribution of the volumes by the
Secretary of State, and section 24 provided that, upon the delivery
of the requisite number of any volume, the Secretary of State
should deliver to the reporter a certificate specifying the number
of copies which had been so delivered, and that such certificate
should entitle the reporter to a warrant drawn by the auditor of
public accounts upon the treasury for an amount, for those volumes,
at the price for which the books should be sold to individuals,
provided the price should not exceed the ordinary price of law
books of the same description, to be determined by the Auditor,
Treasurer, and Secretary of State. These statutory provisions were
amended in 1863 by making the term of office of the reporter six
years, and in 1865 it was enacted that the price of the volumes to
be delivered to the Secretary of State should be $6 each. The
reporter was given a salary, by law, in 1877, of $6,000 a year.
It is further contended that Mr. Freeman, in preparing the
official edition of the reports, was not an author within
Page 128 U. S. 647
the meaning of the act of Congress, and that it was not intended
by that act that he should assert a monopoly in the result of his
official labors.
But although there can be no copyright in the opinions of the
judges or in the work done by them in their official capacity as
judges,
Banks v Manchester, ante, 128 U. S. 244, yet
there is no ground of public policy on which a reporter who
prepares a volume of law reports of the character of those in this
case can, in the absence of a prohibitory statute, be debarred from
obtaining a copyright for the volume which will cover the matter
which is the result of his intellectual labor.
In the present case, there was no legislation of the State of
Illinois which forbade the obtaining of such a copyright by Mr.
Freeman, or which directed that the proprietary right which would
exist in him should pass to the State of Illinois, or that the
copyright should be taken out for or in the name of the state, as
the assignee of such proprietary right. Even though a reporter may
be a sworn public officer, appointed by the authority of the
government which creates the court of which he is made the
reporter, and even though he may be paid a fixed salary for his
labors, yet in the absence of any inhibition forbidding him to take
a copyright for that which is the lawful subject of copyright in
him or reserving a copyright to the government as the assignee of
his work, he is not deprived of the privilege of taking out a
copyright which would otherwise exist. There is in such case a
tacit assent by the government to his exercising such privilege.
The universal practical construction has been that such right
exists unless it is affirmatively forbidden or taken away, and the
right has been exercised by numerous reporters, officially
appointed, made sworn public officers, and paid a salary under the
governments both of states and of the United States.
This question was, it is true, not directly adjudged in
Wheaton v.
Peters, 8 Pet. 591. In that case, the owners of the
copyrights of Wheaton's Reports of the Supreme Court of the United
States brought a suit in equity against Mr.
Page 128 U. S. 648
Peters for publishing and selling a volume of his Condensed
Reports of the Supreme Court. The bill was dismissed by the circuit
court. On an appeal by the plaintiffs to this Court, one of the
points urged by the defendants was that reports of the decisions of
this Court, published by a reporter appointed under the authority
of an act of Congress, were not within the provisions of the law
for the protection of copyrights. This Court held (1) that the
plaintiffs could assert no common law right to the exclusive
privilege of publishing, but must sustain such right, if at all,
under the legislation of Congress; (2) that under such legislation,
there must have been, in order to secure the copyright, a
compliance with the provisions of the statute in regard to the
publication in a newspaper of a copy of the record of the title of
the book, and in regard to the delivery of a copy of it, after
publication, to the Secretary of State. The Court remanded the case
to the circuit court for a trial by a jury as to whether there had
been a compliance with the above-named requisites of the act of
Congress. In a note by Mr. Peters at page 618 of the report of the
case, he states that he has been informed that the Court did not
consider the point whether reports of the decisions of the Court,
published by a reporter appointed under the authority of an act of
Congress, were within the provisions of the law for the protection
of copyrights.
When the suit was brought, Mr. Wheaton had published the twelve
volumes of his copyrighted reports. The allegation of the bill was
that the volume complained of, published by Mr. Peters, contained
all the reports of cases found in the first volume of Wheaton's
Reports. It appears from the report of the case and the record in
it that Mr. Wheaton had published his first volume in 1816, and his
twelfth volume in 1827. From March 3, 1817, for three years, the
reporter had a salary of $1,000 a year, and the same salary from
May 15, 1820, to March 3, 1826, and for three years from February
22, 1827. The decree of this Court, providing for a trial by a jury
(p.
33 U. S. 698),
covered the entire twelve volumes of Wheaton's Reports.
If this Court had been of opinion that there could not have
Page 128 U. S. 649
been a lawful copyright in the volumes of Wheaton's Reports, it
would have been useless to send the case back to the circuit court
for an inquiry whether the conditions precedent to the obtaining of
a lawful copyright, under the act of Congress, had been complied
with, especially in view of the fact that the opinion of the Court
concludes (p.
33 U. S. 668)
with this statement:
"It may be proper to remark that the Court is unanimously of
opinion that no reporter has or can have any copyright in the
written opinions delivered by this Court, and that the judges
thereof cannot confer on any reporter any such right."
Therefore the only matter in Wheaton's Reports which could have
been the subject of the copyrights in regard to which the jury
trial was directed was the matter not embracing the written
opinions of the court -- namely the title page, table of cases,
headnotes, statements of facts, arguments of counsel, and index.
Such work of the reporter, which may be the lawful subject of
copyright, comprehends also the order of arrangement of the cases,
the division of the reports into volumes, the numbering and paging
of the volumes, the table of the cases cited in the opinions (where
such table is made), and the subdivision of the index into
appropriate, condensed titles, involving the distribution of the
subjects of the various headnotes and cross-references, where such
exist. A publication of the mere opinions of the Court, in a
volume, without more, would be comparatively valueless to
anyone.
The case of
Wheaton v. Peters was decided at January
term, 1834. In
Gray v. Russell, 1 Story, 11, in 1839, Mr.
Justice Story, in speaking of the question as to how far a person
was at liberty to extract the substance of copyrighted law reports,
says, (p. 20):
"In the case of
Wheaton v. Peters, 8 Pet.
591, the same subject was considered very much at large. It was not
doubted by the Court that Mr. Peters' Condensed Reports would have
been an infringement of Mr. Wheaton's copyright, supposing that
copyright properly secured under the act, if the opinions of the
Court had been or could be the proper subject of the private
copyright by Mr. Wheaton. But it was held that the opinions of the
Court, being published under the authority of Congress, were not
the
Page 128 U. S. 650
proper subject of private copyright. But it was as little
doubted by the Court that Mr. Wheaton had a copyright in his own
marginal notes, and in the arguments of counsel as prepared and
arranged in his work. The cause went back to the circuit court for
the purpose of further inquiries as to the fact whether the
requisites of the act of Congress had been complied with or not by
Mr. Wheaton. This would have been wholly useless and nugatory
unless Mr. Wheaton's marginal notes and abstracts of arguments
could have been the subject of a copyright, for that was the work
which could be the subject of a copyright, so that if Mr. Peters
had violated that right, Mr. Wheaton was entitled to redress."
This seems to us to be a proper view of the decision in
Wheaton v. Peters, and that decision is as applicable
where a reporter receives a compensation or salary from the
government as where he does not, in the absence of any restriction
against his obtaining a copyright.
In the present case, although Mr. Freeman, during the period of
his preparation of volumes 32 to 46, received no direct salary from
the state, it is contended by the defendants that he received from
the state compensation for his services through the purchase by it,
under a statute, of copies of his volume at a stated price of $6
per copy for 553 copies of each volume, and that this was
substantially the payment of a salary to him by the state. But, as
stated before, in the view we take of the case, the question of a
salary or no salary has no bearing upon the subject.
The general proposition that the reporter of a volume of law
reports can obtain a copyright for it as an author, and that such
copyright will cover the parts of the book of which he is the
author, although he has no exclusive right in the judicial opinions
published, is supported by authority. Curtis on Copyright 131, 132;
Butterworth v. Robinson, 5 Ves. 709;
Cary v.
Longman, 1 East 358, and note, 362;
Mawman v. Tegg, 2
Russell 385, 398-399;
Hodges v. Welsh, 2 Irish Eq. 266,
287;
Lewis v. Fullarton, 2 Beavan 6;
Saunders v.
Smith, 3 Mylne & Cr. 711;
Sweet v. Benning, 16
C.B. 491;
Jarrold v. Houlston, 3 Kay & Johns. 708,
719-720.
Page 128 U. S. 651
It is further contended by the defendants that the plaintiff is
not entitled to relief in respect to volumes 32 to 46 because he
did not comply with the conditions of the statute concerning
copyrights. Those volumes were all of them published while the Act
of Congress of February 3, 1831, c. 16, 4 Stat. 436, was in force.
The fourth section of that act provided that no person should be
entitled to the benefit of the act unless he should, before
publication, deposit a printed copy of the title of the book
intended to be copyrighted in the clerk's office of the district
court of the district wherein the author or proprietor should
reside. The section also required that the clerk should record such
title forthwith in a book, in words prescribed in the section,
giving a copy of the title, under the seal of the court, to the
author or proprietor whenever he should require the same. It also
provided that the author or proprietor should, within three months
from the publication of the book, deliver, or cause to be
delivered, a copy of the same to the clerk of the district court,
and that it should be the duty of the clerk, at least once in every
year, to transmit a certified list of all such records of
copyright, including the titles so recorded, and the dates of
record, and also all the copies of books deposited in his office,
to the Secretary of State, to be deposited in his office.
Although, under ยง 6 of the same act, the exclusive right to the
copyright vests upon the recording of the title of the book, and
runs for the prescribed period from that date, and although the
right of action for infringement under ยง 6 also accrues at that
time, yet it is quite clear that under ยง 4, in respect at least to
suits brought after three months from the publication of the book,
it must be shown, as a condition precedent to the right to maintain
the suit, that a copy of the book was delivered to the clerk of the
district court within three months from the publication.
Section 5 of the same act provides that no person shall be
entitled to the benefit of the act unless he shall give information
of copyright being secured by causing to be inserted in the
published copies, on the title page of the book or the page
immediately following, the words: "Entered according to act
Page 128 U. S. 652
of Congress, in the year _____, by A. B., in the clerk's office
of the district court of _____."
Undoubtedly the three conditions prescribed by the statute --
namely the deposit before publication of the printed copy of the
title of the book, the giving of information of the copyright by
the insertion of the notice on the title page or the next page, and
the depositing of a copy of the book within three months after the
publication, are conditions precedent to the perfection of the
copyright.
Wheaton v.
Peters, 8 Pet. 591;
Merrell v. Tice,
104 U. S. 557.
It is contended by the defendants that the plaintiff has not
proved the date of the publication of any of the volumes in
question; that the only proof he has offered is in the form of
certificates by the clerk of the district court showing the dates
of the filing of the printed titles of the volumes; and that he has
failed to show whether such filing preceded or followed the
publication of the volumes.
The record shows that the plaintiff, in respect of volumes 32 to
46, offered in evidence fifteen certificates made by William H.
Bradley, Clerk of the District Court of the United States for the
Northern District of Illinois, each of which was in the following
form, except as to the number of the volume, and its contents, and
except that, as to volumes 39 to 43, the name "Eugene B. Myers,"
and, as to volumes 44 to 46, the name "E. B. Myers," was
substituted for the names "E. B. Myers & Chandler:"
"United States of America"
"Northern District of Illinois ss:"
"
CLERK'S OFFICE OF THE DISTRICT COURT"
"
OF THE UNITED STATES FOR SAID DISTRICT"
"Be it remembered that on the 12th day of August, A. D. 1865, E.
B. Myers & Chandler, of said district, deposited in this office
the title of a book, as follows, to-wit: Reports of cases at law
and in chancery argued and determined in the Supreme Court of
Illinois, by Norman L. Freeman, counselor at law, volume 32,
containing the remainder of the cases
Page 128 U. S. 653
decided at the April term, and a part of the cases decided at
the November term, 1863 --"
"The right whereof they claim as proprietors, in conformity with
an act of Congress entitled 'An act to amend the several acts
respecting copyrights.'"
"WM. H. BRADLEY,
Clerk"
"Northern District of Illinois ss:"
"I, William H. Bradley, Clerk of the District Court of the
United States for the Northern District of Illinois, do hereby
certify the foregoing to be a true copy from the records of said
court in the matter of the entry of a copyright by E. B. Myers
& Chandler, as the same appears of record in said court, and
now remaining in my custody."
"In testimony whereof I have hereunto set my hand and affixed
the seal of said court, at my office, in Chicago, this 12th day of
August, A. D. 1865, and of our Independence the 90th year."
"[L.S.] WM. H. BRADLEY,
Clerk"
"Work deposited Jan'y 17, 1866."
"WM. H. BRADLEY,
Cl'k"
The certificates show that the dates of the several deposits of
the titles and of the works were as hereinbefore stated. The
certificate to the copy of the title bears date in each case the
same day as the deposit of the title. In each case, the memorandum
of the deposit of the work was in the same form as that in regard
to volume 32, with the necessary change of date, except that in
regard to volumes 35, 36, 42, 43, and 44, the memorandum was, "Work
deposited in my office," with the date.
When the certificates were offered in evidence, the defendants
objected to the introduction of that portion of each of the papers
at the bottom thereof which purported to show the date when the
volume was deposited, on the ground that the same constituted no
part of the certificate, but was a mere anonymous statement, that
it did not appear when or by whom the same was made, and that the
evidence was incompetent
Page 128 U. S. 654
to show the date of the deposit. The objection was overruled by
the court, and the defendants excepted.
They also objected to the introduction of the paper pertaining
to volume 34 on the ground that even if the memorandum at the
bottom of the paper was competent evidence of the date when the
volume was deposited, the deposit was made at the same time with
the deposit of the printed title page -- namely October 23, 1866;
that it did not appear that the title page was filed in advance of
the publication and the work deposited after publication; and that
the paper was therefore incompetent as evidence. The objection was
overruled by the court, and the defendants excepted to such
ruling.
The defendants also objected to the introduction of the paper as
to volume 35 for the reason that it purported to show that the
title of the volume was deposited on the 28th of January, 1867,
while the printed notice on the back of the title page of that
volume stated that the copyright was entered "in the year 1866,"
and that because of such variance, the paper was incompetent as
evidence. The objection was overruled by the court, and the
defendants excepted to the ruling.
These various objections are now urged by the defendants, and it
is contended that the memorandum of the date of the deposit of the
work, written on the certificate and purporting to be signed by the
clerk, is not in the form of a certificate by the clerk of the fact
and the date of the deposit of the book and is not competent proof
of such fact or date, and is not attested by the official seal of
the clerk; and that no proof was offered as to the genuineness of
the signature purporting to be that of the clerk.
The statute makes no provision for the keeping by the clerk of a
record of the deposit of the book with him after publication. The
memorandum of the deposit of the book, signed in each case by the
clerk, appears to have been written in each case on the certified
copy, furnished to the proprietor by the clerk, of the record of
the deposit of the title of the book. The two things were thus
connected together by the act of the officer whose duty it was to
receive both the deposit
Page 128 U. S. 655
of the title and the deposit of the book. The paper amounts to a
sufficient certificate by him of the fact and the date of the
deposit of the book. In the absence of evidence to the contrary,
which it was open to the defendants to introduce, it must be
presumed that the deposit of the title was made in each case before
publication, and also that in every instance where the work
purports to have been deposited within three months after the date
of the deposit of the title, it was deposited within three months
after publication.
So also, in the case of volume 34, it must be equally presumed,
in the absence of evidence to the contrary, that the deposit of the
title was made before publication and that the deposit of the work,
though made on the same day with the deposit of the title, was not
made prior to publication.
In the case of volume 32, however, although it is to be presumed
that the title was deposited before publication, yet as the work
was deposited five months and five days after the deposit of the
title, it cannot be presumed that such deposit of the work was made
within three months after publication. The evidence therefore fails
as to volume 32, but it is sufficient
prima facie as to
all the other volumes.
Section 4 of the act of 1831 requires the clerk to give a copy
of the title as deposited and recorded, under the seal of the
court, to the author or proprietor who deposits it whenever he
shall require the same. Necessarily such copy is sufficient
prima facie evidence of the deposit of the title. Such a
copy was given in regard to each of the volumes in question here.
On each of these papers, the memorandum of the fact and of the date
of the deposit of the work, signed by the clerk, was written. The
clerk was the officer required to receive the deposit of the work.
He was not required to keep a record of such deposit, and he was
required to transmit the works so deposited to the Secretary of
State at least once a year. The memorandum in the present case of
the fact and date of the deposit, purporting to be signed by the
clerk, must be regarded as a sufficient
prima facie
certificate of such deposit and as competent evidence of the fact
and of the date, without further proof of the signature of the
clerk, that
Page 128 U. S. 656
being on the same paper with his signature as clerk to the
certificate of the copy of the record of the deposit of the title,
and it being open to the defendants to show that his signature to
the memorandum was not genuine.
We do not think the present case is governed by the decision in
Merrell v. Tice, 104 U. S. 557. In
that case, the Librarian of Congress had given a certificate to a
copy of the record of the deposit of the title of the book. On that
paper was written a memorandum in these words: "Two copies of the
above publication deposited" on a date given. This memorandum was
not signed by the Librarian of Congress. This Court held the
memorandum not to be competent as proof of the deposit of the two
copies of the book, on the ground that it was not a certificate of
that fact. We are of opinion that the memorandum in the present
case, purporting to be signed by the same clerk, is substantially a
certificate of the fact and date of the deposit of the work,
written by him on the same paper with the other certificate, and
that it is not open to the objection which obtained in the case of
Merrell v. Tice.
The defendants offered in evidence certificates made by the
Auditor of Public Accounts and by the Secretary of State of the
State of Illinois, showing that, on the 2d of October, 1865, Mr.
Freeman delivered to the Secretary of State, for the use of the
state, 553 copies of volume 32, required by law to be furnished by
the reporter, and on the 23d of October, 1866, 553 copies of volume
34. The introduction of this evidence was objected to by the
plaintiff on the ground that the papers constituted no evidence of
the publication of either of the volumes, and were incompetent. The
objection was sustained by the court, and the defendants excepted
to the ruling. The exclusion of these papers is assigned as error.
The papers also show the payment by the state, for each set of the
copies, at the rate of six dollars per volume. As the delivery of
the copies of volume 32 to the Secretary of State for the use of
the state took place on the 2d of October, 1865, and the work was
not deposited in the clerk's office until the 17th of January,
1866, it is contended that such delivery of the copies to the
state
Page 128 U. S. 657
was a publication of the volume, and that the deposit of it did
not take place until three months and fifteen days after
publication. We think this assignment of error must prevail, that
the evidence offered was competent, that the delivery of the copies
for the use of the state was a publication of the volume, that the
deposit of the work was not made in time, and that the copyright of
volume 32 therefore fails. But we do not think the same objection
is tenable as to volume 34, although the 553 copies of that volume
were delivered on October 23, 1866, and the title and the work were
both of them deposited on that day. It must be presumed, in the
absence of evidence to the contrary, that the deposit of the title
preceded the publication, and that the delivery of the copies to
the Secretary of State preceded the deposit of the work in the
clerk's office. Where the three things are prescribed by the
statute to be done in consecutive order and all three appear to
have been done on the same day, it will be presumed that the
statute was complied with, leaving the
prima facie
evidence open to be rebutted.
In regard to volume 35, the title was deposited January 28,
1867, and the notice printed in the volume purports to show that
the copyright was entered in 1866. The statute required that each
copy of the book should have inserted in it a statement of the year
the copyright was entered. It is sufficient to say, in answer to
this objection, that the variance must be regarded as immaterial,
inasmuch as the statement that the title was recorded in an earlier
year than the actual year, being conclusive on the person taking
the copyright, could cause no injury to any other person or to the
public because the copyright would expire in twenty-eight years
from the expiration of the year stated in the notice in the book,
and not in twenty-eight years from the time of the recording of the
title.
In regard to volume 36, it is objected that the certificate of
the clerk shows that the printed title was deposited by "E. B.
Myers & Chandler," and that the printed notice of the entry of
copyright in the volume, as published, purports to show that the
copyright was entered by E. B. Myers alone.
Page 128 U. S. 658
We think that, under the circumstances of the case, as the
printed notice contained the name of E. B. Myers, the variance was
immaterial and that the statute was substantially complied with,
particularly as it is not shown that the defendants were misled by
the variance, or induced to do or omit anything because of it.
It is also urged by the defendants that the court erred in
finding the title to the volumes to be in the plaintiff because he
failed to prove any written assignment or transfer to him from Mr.
Freeman as to any of the volumes, or from Chandler as to his
alleged interest in volumes 32 to 38, or to prove any means through
which he derived title to any of the volumes. By section 4 of the
act of 1831, the proprietor of a book, as well as its author, could
obtain a copyright, and provision was made, in the form of record
given in that section, for a claim by the depositor of the title of
the book as its proprietor, and for the deposit of the copy of the
book by the proprietor. While, after the obtaining of a copyright,
a written assignment may be necessary to convey title to it, or a
written license to give a right to reproduce copies of the
copyrighted book, we perceive no reason why Myers or Myers &
Chandler could not become the owners by a parol transfer of
whatever right Mr. Freeman, prior to the taking of the copyright,
had to convey. While the work was in manuscript, no written
transfer of such manuscript from Mr. Freeman was necessary, because
the copyright had not yet been taken. Moreover, the defendants, in
all their transactions with the plaintiff, recognized his title to
the copyrights of volumes 32 to 38, as to which the titles had been
deposited by E. B. Myers & Chandler, and parol evidence that
the plaintiff owned the copyrights of volumes 32 to 46 at the time
the infringements were committed was introduced without objection,
and was sufficient
prima facie evidence until rebutted. If
the defendants had objected to this parol evidence, the production
of the written assignment from Chandler, set up in the bill, could
have been required.
It is also objected that the plaintiff acquiesced in consented
to and ratified the publication of the volumes by the
defendants,
Page 128 U. S. 659
and was guilty of laches in bringing his suit. The evidence on
this subject is voluminous, and it would not be profitable, either
for the purposes of this case or as a guide for any other case, to
discuss it at length. We are of opinion that neither of these
defenses is established, that the plaintiff did not consent to the
republication of the volumes by the defendants; that he never
abandoned his copyrights, or consented to surrender them without
consideration, or gave the defendants cause to understand that he
did so or would do so; that he never acquiesced in any infringement
of his copyrights by the defendants; and that he was not guilty of
laches in seeking relief. The defendants recognized his copyrights
in volumes 32 to 38 by offering to purchase them, and there was
considerable negotiation on that subject. This fact is inconsistent
with consent and abandonment, and the other evidence in the case is
inconsistent with any abandonment.
It is also contended by the defendants that each of the volumes
as published by them was a new and independent work, not copied
from that of the plaintiff, but prepared by the original labor of
the editors employed by the defendants. While it is admitted that
volumes 32 to 38, as published by the defendants, were, with the
exception of the footnotes, prepared entirely from the plaintiff's
volumes, it is contended that volumes 39 and 41 to 46 were, with
the exception of the opinions of the judges, prepared from the
records and files of the Supreme Court of Illinois. The evidence on
the subject of infringement is very full and minute. It is
impossible for us to discuss it at length, and we must content
ourselves with stating, as a general result, that we concur in the
views stated by Judge Drummond in his decision in the circuit court
in regard to volumes 32 to 38. He says (5 F. 726):
"In considering the question of infringement of the copyright by
the defendants, it must be borne in mind what is the character of
the work. They are reports of the decisions of the supreme court of
this state, to which no one can have a copyright; but he may have
to the headnotes and statements of each case, and of the arguments
of counsel. These headnotes and statements which have been made are
in themselves
Page 128 U. S. 660
an abridgment, the one of the opinions of the court, consisting
of the principles of law decided, and the other an abstract of the
facts and of the arguments. It should also be stated that the
volumes of the defendants, as edited by those employed by them, are
very much condensed as compared with Mr. Freeman's reports, and yet
the paging of the volumes is substantially the same throughout, so
that the cases in the corresponding volumes appear on the same
page. The list of cases which precedes each report is the
same."
"The defendants Ewell and Denslow, who were employed by the
other defendants to annotate these decisions or reports, both state
upon examination that their work was independent of that of Mr.
Freeman, but it appears from the evidence that all the volumes of
Mr. Freeman were used in thus editing or annotating; and although
it may have been their intention to make an independent work, it is
apparent from a comparison of the Freeman volumes and those of the
defendants that the former were used throughout by the editors
employed by the defendants. It is true that in each volume, perhaps
in the majority of cases, there is the appearance of independent
labor performed by them, without regard to the volumes of Mr.
Freeman, but yet in every volume it is also apparent that Mr.
Freeman's volumes were used -- in some instances words and
sentences copied without change, in others changed only in form --
and the conclusion is irresistible that for a large portion of the
work performed in behalf of the defendants, the editors did not
resort to original sources of information, but obtained that
information from the volumes of Mr. Freeman. Undoubtedly it was
competent for an editor to take the opinions of the supreme court,
and possibly from the volumes of Mr. Freeman, and make an
independent work, but it is always attended with great risk for a
person to sit down, and, with the copyrighted volume of law reports
before him, undertake to make an independent report of a case. It
is not difficult to do this, going to the original sources of
information, to the decisions of the court, the briefs of counsel,
the records on file in the clerk's office, without regard to the
regular volumes of reports. Anyone who has tried it can easily
Page 128 U. S. 661
understand the difference between the headnotes of two persons,
equally good lawyers and equally critical in the examination of an
opinion, where they are made up independent of each other; and,
bearing in mind this fact, it seems to be beyond controversy that
although in many and perhaps most instances there is a very
considerable difference between the headnotes of the defendants'
volumes and those of the plaintiff, the latter have been freely
used in the preparation of the former. I conclude, therefore, that
the defendants have, in the preparation of those volumes, from 32
to 38 inclusive, of the Illinois Reports, used the volumes of the
plaintiff so as to interfere with his copyright."
So also we concur with the conclusions of Judge Drummond in
regard to volumes 39 to 46. He says (20 F. 441):
"The present inquiry is limited to what is alleged to be an
infringement by the defendants of volumes 39 to 46, inclusive, of
Mr. Freeman's Illinois Reports. Volume 40 seems never to have been
regularly published like the other volumes, although the evidence
of the infringement of the plaintiff's copyright in that volume is
perhaps stronger than that applicable to any of the other volumes
named. Upon comparing parts of each of the volumes, those of the
complainant and of the defendants, one with the other, I think
there can be no doubt that in some respects, in each case, the
Freeman volume has been used by the defendants in the headnotes,
the statements of facts, and the arguments of counsel -- that is,
there are certain unmistakable indicia that in every volume
prepared by the defendants they have not confined themselves solely
to the original sources of information -- namely the opinions of
the judges, the records, and the arguments of counsel."
He also says (p. 442):
"The fact appears to be, and indeed it is not a subject of
controversy, that in arranging the order of cases and in the paging
of the different volumes, the Freeman edition has been followed by
the defendants; but while this is so, I should not feel inclined,
merely on that account, and independent of other matters, to give a
decree to the plaintiff, although it is claimed that the
arrangement of the cases and the paging of the volumes are
protected by a copyright.
Page 128 U. S. 662
Undoubtedly in some cases where are involved labor, talent,
judgment, the classification and disposition of subjects in a book
entitle it to a copyright. But the arrangement of law cases and the
paging of the book may depend simply on the will of the printer, of
the reporter, or publisher, or the order in which the cases have
been decided, or upon other accidental circumstances. Here the
object on the part of the defendants seems to have been that there
should not be confusion in the references and examination of cases;
but the arrangement of cases and the paging of the volumes is a
labor inconsiderable in itself, and I regard it not as an
independent matter, but in connection with other similarities
existing between the two editions when I say, taking the whole
together, the Freeman volumes have been used in editing and
publishing the defendants' volumes."
It may be added that one of the most significant evidences of
infringement exists frequently in the defendants' volumes -- namely
the copying of errors made by Mr. Freeman.
The next objection urged is that the defendants were compelled
to produce their books and papers on the accounting before the
master, the plaintiff having sought a forfeiture of the copies of
volumes 32 to 38, and that the defendants were thereby compelled to
produce evidence against themselves in aid of such forfeiture. The
original bill prays for a decree that all of the copies published
by the defendants of volumes 32 to 38 be forfeited to the
plaintiff, and that the defendants be required to deliver the same
to him.
The supplemental bill contains no such prayer in regard to
volumes 39 and 41 to 46, but contains a prayer for general relief.
The cross-bill and the answer to it show that Myers brought an
action of replevin against Callaghan & Co. to recover as
forfeited the copies of the infringing volumes 32 to 38. The final
decree shows that the cross-suit was not brought to a hearing with
the original suit. On the contrary, the final decree reserves for
consideration and determination, on the hearing of the cross-bill,
the rights of the parties thereunder, and their rights in respect
to the action of replevin to recover possession of the unsold
copies of volumes
Page 128 U. S. 663
32 to 38. Although, under the provisions of the interlocutory
decree in respect to volumes 32 to 38, the defendants were required
to produce their account books and papers before the master and
were examined in regard to them, yet the final decree did not award
any forfeiture, and so no injury has resulted to the defendants by
reason of such provision of the interlocutory decree or by reason
of any action thereunder. Irrespective of this, it is determined by
the case of
Stevens v.
Gladding, 17 How. 447, that the penalties given by
section 7 of the copyright act of 1831 cannot be enforced in a suit
in equity. The provision of the interlocutory decree for an
examination of the defendants in regard to the subject of inquiry,
and for the production by them of their account books and papers,
is the usual provision in an interlocutory decree in a suit in
equity for the infringement of a copyright. As the forfeiture of
the volumes could not be obtained by this suit, although prayed for
in the bill, the evidence was admissible.
We now come to the question of damages. It is contended that the
circuit court erred in disallowing to the defendants a credit for
stereotyping volumes 32 to 46. Both of the masters refused to allow
credit for the cost of stereotyping. Stereotyping was not a
necessary incident of printing and publishing, as typesetting was.
It was resorted to by the defendants to enable them the more
successfully and profitably to infringe by dispensing with the
necessity of resetting the type for every new edition, and thus
reducing the cost of multiplying copies in the future. The
stereotype plates were made without the consent of the plaintiff,
and if credit is allowed for them, the plaintiff is compelled to
buy and pay for them when they are useless to him, and when he has
stereotyped for himself volumes 32 to 46.
It is also contended that both of the masters erred in
disallowing a credit to the defendants for the amount paid to the
different members of their firm for their services, in the way of
salaries, as a part of the expense of conducting their business,
being the amount of about $12,000 a year during the period in
controversy. These amounts were drawn by the
Page 128 U. S. 664
defendants under the partnership agreement, as family and
personal expenses. We do not think that the value of the time of an
infringer, or the expense of the living of himself or his family
while he is engaged in violating the rights of the plaintiff, is to
be allowed to him as a credit, and thus the plaintiff be compelled
to pay the defendant for his time and expenses while engaged in
infringing the copyright. If the defendants, instead of employing
others to do the work, had chosen to do it themselves, they might
as well have made a charge, and claimed to have been credited for
it, of so much a month or a year for their services in preparing
the infringing volumes.
Elizabeth v. Pavement Co.,
97 U. S. 126,
97 U. S. 139.
The case stands on a different footing from that of the salaries of
the managing officers of a corporation, as in
Rubber
Company v. Goodyear, 9 Wall. 788.
The defendants also object that the master, Mr. Bennett, should
have found the number of volumes sold by the defendants to have
been 103 less, and that the total number of bound volumes on hand
found by him was erroneous, as also was the total number of volumes
found by him to have been on hand unsold. The exceptions to the
master's report in these respects substantially complain that the
master found too many volumes to have been sold, by 103. We do not
perceive any error in the above particulars. The master, Mr.
Bennett, rightfully excluded a credit for the cost of producing
copies of the volumes which the defendants did not sell. There were
no profits from copies not sold, and therefore there could have
been nothing to charge against such profits. In regard to the
exceptions to the report of Mr. Bennett that he found the average
selling price of the defendants' volumes to be $4.464 each, instead
of $4.34, and that he found their gross receipts from sales of the
infringing volumes to have been $10,231.48 instead of $9,459.37, we
are of opinion that the selling price found and the gross receipts
found were not too high.
We do not concur in the view of the defendants that there were
no net receipts or profits on the sales of volumes 39 to 46, or in
the view that the master, Mr. Bennett, erred in refusing
Page 128 U. S. 665
credit to the defendants for the amount paid by them for
editorial work in preparing their volumes, or in the view that the
circuit court erred in allowing the $340.70 as profits on the
resales of the 156 volumes mentioned in the first and second
exceptions of the plaintiff to the report of the master, Mr.
Bennett.
In regard to the 156 copies, they were volumes which had been
already sold by the defendants, and which they purchased as
second-hand books and resold. The master had held that, as he had
charged the defendants with the profits on the first sale of these
volumes, the profits on their resale could not be charged against
them. The circuit court overruled this view, and, as we think,
properly. The sale of the volume originally prevented the purchase
from the plaintiff of a lawful volume, and the sale of the same
infringing volume a second time prevented the purchase from the
plaintiff of another lawful volume. The plaintiff was thus twice
injured by the acts of the defendants, and the sales of the
second-hand volumes must be accounted for as if they were first
sales.
Birdsell v. Shaliol, 112 U.
S. 485,
112 U. S.
487-488.
The circuit court held that the master approximated as nearly as
could be done to the true amount in fixing the selling price at
$4.464 per volume. We concur in this view.
In regard to the eighth exception of the defendants to the
report of the master, Mr. Bennett, that he had credited the
defendants, in their expense account, with only 12 percent on their
gross sales, instead of 17 percent, the circuit court held that, as
Mr. Bennett had allowed 12 percent, and Mr. Bishop had allowed 12
7/8 percent, for such average expenses, and those conclusions were
so nearly alike, the court would allow their findings in this
regard to stand. We concur in this view, and also in the conclusion
of the circuit court sustaining the findings of the two masters as
to the average price per volume at which the defendants sold the
volumes.
In regard to the general question of the profits to be accounted
for by the defendants as to the volumes in question, the only
proper rule to be adopted is to deduct from the selling price the
actual and legitimate manufacturing cost. If the
Page 128 U. S. 666
volume contains matter to which a copyright could not properly
extend, incorporated with matter proper to be covered by a
copyright, the two necessarily going together when the volume is
sold, as a unit, and it being impossible to separate the profits on
the one from the profits on the other, and the lawful matter being
useless without the unlawful, it is the defendants who are
responsible for having blended the lawful with the unlawful, and
they must abide the consequences on the same principle that he who
has wrongfully produced a confusion of goods must alone suffer. As
was said by Lord Eldon in
Mawman v. Tegg, 2 Russell 385,
391:
"If the parts which have been copied cannot be separated from
those which are original without destroying the use and value of
the original matter, he who has made an improper use of that which
did not belong to him must suffer the consequences of so doing. If
a man mixes what belongs to him with what belongs to me, and the
mixture be forbidden by the law, he must again separate them, and
he must bear all the mischief and loss which the separation may
occasion. If an individual chooses in any work to mix my literary
matter with his own, he must be restrained from publishing the
literary matter which belongs to me, and if the parts of the work
cannot be separated, and if by that means the injunction which
restrained the publication of my literary matter prevents, also,
the publication of his own literary matter, he has only himself to
blame."
The present is one of those cases in which the value of the book
depends on its completeness and integrity. It is sold as a book,
not as the fragments of a book. In such a case, as the profits
result from the sale of the book as a whole, the owner of the
copyright will be entitled to recover the entire profits on the
sale of the book, if he elects that remedy.
Elizabeth v.
Pavement Co., 97 U. S. 126,
97 U. S.
139.
In considering the exceptions of the defendants to the masters'
reports in matters of fact, questioning the accuracy of their
conclusions in respect to the amount of the defendants' profits, we
have observed the rule recognized and affirmed in
Tilghman v.
Proctor, 125 U. S. 136,
125 U. S. 149,
that in dealing with such exceptions,
"the conclusions of the master, depending
Page 128 U. S. 667
upon the weighing of conflicting testimony, have every
reasonable presumption in their favor and are not to be set aside
or modified unless there clearly appears to have been error or
mistake on his part."
On the whole case, we are of opinion that the final decree was
correct except in respect of volume 32. The amount of damages
reported by the master, Mr. Bishop, as to that volume, and allowed
by the final decree as part of the $6,986.05, was $926.66. That sum
is disallowed, and must be deducted. The other items of recovery in
the decree were proper. The injunction as to volume 32 must be
vacated, and the appellee will recover his costs of this Court.
The decree of the circuit court is reversed as to volume 32,
and is affirmed in all other respects, and the case is remanded to
that court with a direction to correct the decree in the
particulars above indicated and to take such further proceedings as
may be according to law and not inconsistent with this
opinion.
