The penal provisions of § 4693, Rev.Stat., as amended by the Act
of March 3, 1891, had no extraterritorial operation, and did not
embrace the act of affixing in a foreign country to a publication a
false statement that it was copyrighted under the laws of the
United States.
Prior to the amendment of March 3, 1897, there was no provision
in the copyright laws forbidding the importation into, or the sale
after its importation within, the United States of an article
falsely stamped with the copyright notice in a foreign country and
the proviso in the amending act expressly saved the right to sell
such an article if it had been imported prior thereto.
The facts are stated in the opinion.
MR. JUSTICE WHITE delivered the opinion of the Court.
Section 4963 of the Revised Statutes, as amended by the Act of
March 3, 1891, relating to the notice of copyright to be affixed to
copyrighted articles, provided as follows:
"Every person who shall insert or impress such notice, or words
of the same purport, in or upon any book, map, chart, musical
composition, print, cut, engraving, or photograph, or other
article, for which he has not obtained a copyright, shall be liable
to a penalty of one hundred dollars, recoverable one-half for the
person who shall sue for such penalty and one-half to the use of
the United States. "
Page 191 U. S. 268
On March 3, 1897, the foregoing provisions were amended, 29
Stat. 694, c. 392, by the following:
"Every person who shall insert or impress such notice, or words
of the same purport, in or upon any book, map, chart, dramatic or
musical composition, print, cut, engraving, or photograph or other
article, whether such article to be subject to copyright or
otherwise, for which he has not obtained a copyright, or shall
knowingly issue or sell any article bearing a notice of United
States copyright which has not been copyrighted in this country; or
shall import any book, photograph, chromo, or lithograph or other
article bearing such notice of copyright or words of the same
purport, which is not copyrighted in this country, shall be liable
to a penalty of one hundred dollars, recoverable one-half for the
person who shall sue for such penalty and one-half to the use of
the United States, and the importation into the United States of
any book, chromo, lithograph, or photograph, or other article
bearing such notice of copyright, when there is no existing
copyright thereon in the United States, is prohibited, and the
circuit courts of the United States, sitting in equity, are hereby
authorized to enjoin the issuing, publishing or selling of any
article marked or imported in violation of the United States
copyright laws at the suit of any person complaining of such
violation:
Provided, That this act shall not apply to any
importation of or sale of such goods or articles brought into the
United States prior to the passage hereof."
The state of the law prior to 1897 pertinent to this case was
therefore this: a penalty was imposed of $100 for untruthfully
impressing upon an article which was subject to be copyrighted in
the United States the fact that the same had been copyrighted, but
there was no provision or penalty concerning the importation from a
foreign country of an article which was untruthfully stamped in
such country as having been copyrighted in the United States, and
no express provision or penalty concerning the sale of an article
in the United States which was untruthfully stamped as copyrighted.
The amendment
Page 191 U. S. 269
of 1897 caused the previous provision as to untruthfully
stamping a notice of copyright to apply, although the article was
not subject to copyright under the law of the United States, and
prohibited the importation of an article untruthfully stamped from
a foreign country, and also prohibited the sale of an article in
the United States which was falsely stamped, the penalty previously
provided being made applicable to the added prohibitions.
The plaintiff in error, in 1898, commenced this action in the
circuit court of the United States against the defendant in error
to recover the $100 penalty provided in the statute for each of
eighty-three alleged distinct violations of the statute. The basis
of the first to the seventieth cause of action was asserted to be
that, on or about the first day of August, 1896, the defendant, "at
the City of New York, in the State of New York, did publish and
issue a certain picture book or booklet" (a distinct article being
named in the statement of each of the seventy distinct causes of
action), "and in and upon said book did knowingly insert and
impress a false and fictitious notice that the same was
copyrighted. . . ." The seventy-first and seventy-second causes of
action charged that the defendant, on the eleventh day of June,
1897, in the City of New York, "did knowingly issue and sell a
certain picture book" described therein with a false notice of
copyright stamped on it. The seventy-third to the eighty-third and
last cause of action charged the commission as to different
publications of like acts in the City of New York on or about April
26, 1897.
On the trial to a jury, the defendant admitted that all the
publications referred to had on them an untruthful statement that
they had been copyrighted under the laws of the United States,
which statement had been affixed in a foreign country at their
request and for their account. It was also proved by the defendant,
without conflict in the testimony, that all the publications having
on them the untruthful statement of copyright were imported into
the United States prior to the enactment of the amendment of 1897.
Under this state of
Page 191 U. S. 270
the proof, the trial court instructed a verdict for the
defendant. Error was prosecuted by the plaintiff to the circuit
court of appeals, and that court affirmed the judgment. 115 F. 85.
The court held that the penal provisions of the law had no
extraterritorial operation, and therefore did not embrace the act
of affixing in a foreign country to a publication a false statement
that it was copyrighted under the laws of the United States.
Concerning the sales made after the passage of the amendment of
1897, the court held that the trial court had correctly instructed
the jury that as the books so sold after the amendment of 1897 were
imported into the United States prior thereto, the right to sell
them in the United States was saved by the proviso of that
amendment.
The court below was clearly right in its conclusions as to the
nonextraterritorial operation of the law as it stood prior to the
amendment of 1897.
Flash v. Conn, 109
U. S. 376. In saying this, we do not wish to be
considered as holding that, where an act done in a foreign country
against a penal provision of the law of the United States is but
the initial step in accomplishing a subsequent violation in the
United States of other penal provisions, that the act done in the
foreign country might not, under some circumstances, be treated as
having been performed in the United States. On this question, we
intimate no opinion whatever, as the circumstances of the case do
not require us to do so. Under the law as it stood prior to 1897,
there was no provision forbidding the importation of an article
falsely stamped in a foreign country, or prohibiting the sale in
the United States of an article falsely stamped. There could
therefore be no possible relation between subsequent lawful acts
performed in the United States concerning the article falsely
stamped in a foreign country.
The court was also manifestly right concerning the articles
falsely stamped which were imported into the United States prior to
the amendment of 1897, but sold in the United States subsequent to
that amendment. The proviso expressly excluded from the operation
of that amendment "any importation
Page 191 U. S. 271
of or sale of such goods or articles brought into the United
States prior to the passage hereof." Whilst this was not disputed
in the argument at bar, it was insisted that the court below erred
in affirming the act of the trial court in instructing a verdict on
this subject, because the evidence did not unquestionably establish
that the articles which were sold after March 3, 1897, were in fact
imported prior to that date. To support this contention, the
evidence which is contained in the bill of exceptions is referred
to. We are of opinion that the claim is without merit, and that,
from the testimony as preserved in the bill of exceptions, it
results that the trial court correctly instructed the jury on the
subject.
It is urged, however, that error was committed by the trial
court in the admission of proof concerning the date of the
importation of the articles sold after March 3, 1897. Whilst we
think the contention is without merit, we shall not review the
grounds upon which it is based because it is not open to inquiry
upon the record before us. No error concerning the admission or
rejection of testimony was assigned in the circuit court of
appeals, and that court, in considering the case, treated it as
involving only two issues -- the extraterritorial operation of the
provisions of the law as it stood prior to March 3, 1897, and the
effect of the proviso which formed a part of that amendment. And
this upon the assumption that the correctness of the ruling of the
lower court concerning the admission of testimony was unchallenged
by the plaintiff in error. We say upon the assumption, since the
opinion of the court of appeals makes no reference to any question
concerning the admissibility of testimony, and because the
assignment of errors made for that court was directed to the
adequacy of the "admissions and testimony" to sustain the action of
the trial court in instructing a verdict.
Affirmed.
MR. JUSTICE HOLMES did not hear the argument, and took no part
in the decision of this case.