The copyright statutes of the United States afford all the
relief to which a party is entitled, and no action outside of those
provided therein will lie.
Globe Newspaper Co. v. Walker,
210 U. S. 356.
Section 914, Rev.Stat., was not intended to require the adoption
of the state practice where it would be inconsistent with the terms
or defeat the purposes of the legislation of Congress, and state
statutes which defeat or encumber the administration of the law
under federal statutes are not required to be followed in the
federal courts.
Mexican Central R. Co. v. Pinkney,
149 U. S.
207.
Questions of the character propounded in this case must be
answered in reference to the actual case.
Columbus Watch Co. v.
Robbins, 148 U. S. 266.
In a Circuit Court of the United States within the State of
Pennsylvania, the owner of a copyright for an engraving is
restricted to a single action to find and seize the copies alleged
to infringe and likewise to recover the money penalty therefor.
In a circuit court of the United States within the State of
Pennsylvania, the institution by the owner of a copyright for
engravings of an action for replevin for recovery of the copies
alleged to infringe, not prosecuted to judgment, precludes such
copyright owner from subsequently bringing and maintaining an
action of assumpsit to recover the pecuniary penalty for the copies
found and seized under the writ of replevin, and which were
delivered to plaintiff.
The facts, which involve the construction of the federal
copyright statutes, are stated in the opinion.
MR. JUSTICE DAY delivered the opinion of the Court.
This case comes here upon certificate from the Circuit
Page 220 U. S. 330
Court of Appeals for the Third Circuit. Hills & Company,
Limited, a corporation of Great Britain, brought an action of
assumpsit for its own use and that of the United States against
Joseph and Henry L. Hoover, citizens of Pennsylvania, partners as
Joseph Hoover & Son, to recover under § 4965 of the Revised
Statutes of the United States for a forfeiture of money to the
amount of $4,763, alleged to be due the plaintiff as the owner of
the copyright of certain engravings, 4,763 of which were found in
the defendant's possession, which at the statutory sum of $1 each,
make up the amount sued for.
In the circuit court, a verdict for that amount was rendered for
the plaintiff, subject to the reserved question whether there was
any evidence to go to the jury in support of the plaintiff's claim.
Upon this question, the circuit court subsequently entered judgment
in favor of the defendants, and the plaintiff took the case to the
circuit court of appeals.
The certificate states the following facts:
"The plaintiff owned copyrights of certain engravings which the
defendants wrongfully reproduced, sold some of the reproduced
copies, and on December 10, 1902, still had a number thereof
remaining in their possession when the plaintiff's agent went to
the defendants' printing establishment with a deputy marshal who
was serving a writ of replevin the plaintiff had had issued in the
circuit court against the defendants for infringing copies. The
agent there found in the possession of the defendants forty-seven
hundred and sixty-three infringing copies. These the deputy
marshall then and there took and delivered to the plaintiff's
agent, who still retains them. Subsequently, on June 18, 1903, the
plaintiff brought the present action of assumpsit against the
defendant infringers to recover the $1 forfeit to the plaintiff or
each of the forty-seven hundred and sixty-three infringing
Page 220 U. S. 331
sheets of the copyrighted engravings which, on December 10,
1902, its agent had found in and taken from the defendants'
possession. To this action the defendants appeared and pleaded
nonassumpsit, and in it a verdict was had for the plaintiff, as
above noted. The action of replevin was no further proceeded
in."
The questions propounded by the circuit court of appeals under
the Act of March 3, 1891, are as follows:
"1. In a circuit court of the United States within the State of
Pennsylvania, is the owner of a copyright for engravings restricted
to a single action to find and seize the copies alleged to infringe
and likewise to recover the money penalty therefor?"
"2. In a circuit court of the United States within the State of
Pennsylvania, does the institution by the owner of a copyright for
engravings of an action of replevin for recovery of the copies
alleged to infringe, not prosecuted to judgment, preclude such
copyright owner from subsequently bringing and maintaining an
action of assumpsit to recover the pecuniary penalty for the copies
found and seized under the writ of replevin?"
As a question of this character must be answered in reference to
the actual case (
Columbus Watch Co. v. Robbins,
148 U. S. 266),
the second question must be answered in view of the facts stated,
having in mind that the copies had been seized in the replevin suit
and delivered to the plaintiff's agent.
An answer to these questions requires the construction of § 4965
of the Revised Statutes of the United States. That section declares
that any person offending against its provisions
"shall forfeit to the proprietor all the plates on which the
same shall be copied and every sheet thereof, either copied or
printed, and shall further forfeit one dollar for every sheet of
the same found in his possession, either printing, printed, copied,
published, imported, or exposed for sale, . . . one-half thereof to
the
Page 220 U. S. 332
proprietor and the other half to the use of the United
States."
This section has been, in varying forms, a part of the copyright
law of the United States for many years prior to the enactment,
since this suit, of the present law of July, 1909, which has
superseded former statutes upon the subject of copyright. It has
been the subject of frequent and not always harmonious construction
in the federal courts.
See Bolles v. Outing Co.,
175 U. S. 262,
175 U. S.
267.
It was before this Court in the case of
Thornton v.
Schreiber, 124 U. S. 612. In
that case, an action was brought by Schreiber against Thornton to
recover the penalties for the unlawful reproduction of a certain
copyrighted photograph. The infringing copies were found in the
store of Sharpless & Sons in Philadelphia, where they were
being used as labels on parcels of goods. Thornton was a manager in
the employ of Sharpless & Sons, and had ordered 1,500 of the
photographs, which were delivered to the firm, who paid for them.
It was held that Thornton was not liable, as he had not the
possession of the infringing prints within the meaning of the act,
and that the proper parties defendant against whom an action of
replevin might have been sustained was the firm of Sharpless &
Sons, and not their agent. All that was necessary for the decision
of the case was the holding that the prints were not found in the
possession of Thornton within the meaning of the act. In the course
of the opinion, Mr. Justice Miller said:
"Counsel for defendants in error, Schreiber & Sons, insist
that the words 'found in his possession' are to be construed as
referring to the finding of the jury; that the expression means
simply that, where the sheets are ascertained by the finding of the
jury to have been at any time in the possession of the person who
committed the wrongful act, such person shall forfeit $1 for each
sheet so ascertained to have been in his possession. We,
however,
Page 220 U. S. 333
think that the word 'found' means that there must be a time
before the cause of action accrues at which they are found in the
possession of the defendant."
The question whether more than one suit could be maintained
under § 4965, or whether it was necessary to find the infringing
sheets by means of some action or process before beginning an
action for the penalty, was not before the court in that case, and
was in no way decided. The expression of Mr. Justice Miller, that
the word "found" meant that there must be a time before the cause
of action accrues at which the infringing matter is found in the
possession of the defendant, has been differently interpreted in
the courts of the United States.
In
Falk v. Curtis Pub. Co., 107 F. 126,
Thornton v.
Schreiber was interpreted to mean that, before the action for
the penalty would lie there must be a finding of articles in the
possession of the defendant by means of a proceeding instituted for
the express purpose of seizure, and that consequently an action of
assumpsit, brought prior to the seizure, as an independent
proceeding, was premature, and could not be maintained.
In
Bolles v. Outing Co., 77 F. 966, the case of
Thornton v. Schreiber was held to mean only that the
infringing articles must be found in the possession of the
defendant before the penalty could be imposed, and that the section
contemplated a single suit to enforce both remedies -- the money
recovery and the forfeiture of the offending sheets, etc. That case
was a suit by Bolles against the Outing Company, seeking to recover
not only the penalty for one copy of Outing which was found in the
defendant's possession, but also for all the copies which had been
within the defendant's possession within any time two years
previous to the commencement of the suit. The circuit court limited
the recovery to $1 as penalty for the copy purchased by an agent of
the plaintiff from the company, and the court
Page 220 U. S. 334
refused to permit recovery for the copies printed and delivered
to the Outing Company within two years of the commencement of the
suit, but not found in the defendant's possession. The case came
here, and the judgment of the circuit court of appeals was
affirmed.
Bolles v. Outing Co., 175 U.S.,
supra.
In that case, this Court approved the judgment of the Circuit Court
of Appeals of the Second Circuit, and quoted with approval the
following language from that court:
"The remedy by condemnation and forfeiture is only appropriate
in a case where the property can be seized upon process, and where,
as here, the forfeiture declared is against property of the
'offender,' it is only appropriate when it can be seized in his
hands."
In the same case Mr. Justice Brown, speaking for this Court,
said:
"No remedy is provided by the act, although by § 4970 a bill in
equity will lie for an injunction, but the provision for a
forfeiture of the plates and of the copies seems to contemplate an
action in the nature of replevin for their seizure, and, in
addition to the confiscation of the copies, for a recovery of $1
for every copy so seized or found in the possession of the
defendant."
With a difference of opinion, as we have stated, in two circuit
courts of appeal as to the proper construction of the act, there
came before this Court two cases,
American Tobacco Co. v.
Werckmeister, 207 U. S. 284, and
Werckmeister v. American Tobacco Co., 207 U.
S. 375. In the first of the cases, Werckmeister, the
owner of a copyright painting, recovered in an action in the nature
of replevin 1,196 sheets containing a copy of the copyrighted
picture belonging to him. In the second case, the action was
brought to recover $10 each as penalty for the sheets seized in the
former suit. In that case, the question was distinctly made
whether, under § 4965 of the Revised Statutes, two actions could be
brought, one for the seizure of the sheets forfeited under the
act,
Page 220 U. S. 335
and another for the penalty of $1 for every sheet found in the
defendant's possession. Upon consideration, this Court held that
the statute contemplated but a single action, in which the offender
should be brought into court, the plates and sheets seized and
adjudicated to the owner of the copyright, and the penalty provided
for by the statute recovered. It was held that only a single action
was within the scope of the statute, and that to construe it so as
to require two actions would be to extend it beyond its terms.
The second
Werckmeister case was decided while the case
now before us was pending in the circuit court of appeals, and
shortly before argument in that court. The circuit court of appeals
thereupon certified to this Court the two questions, as
hereinbefore stated. In the
Werckmeister case, the matter
was fully considered, and we find no occasion to depart from the
construction which was given the statute in that case.
It is to be noted that both questions propounded by the circuit
court of appeals relate to actions in the circuit courts of the
United States within the State of Pennsylvania, and it is insisted
by the counsel for Hills & Company that in the State of
Pennsylvania there is no form of action in which the double remedy
can be enforced, and that the effect of the decision in the
Werckmeister case should be limited to those states
wherein the practice permits the remedies given to the copyright
proprietor to be enforced in one action. This argument proceeds
upon the theory that the state practice can alone be resorted to
for remedies in the federal courts under the copyright law of the
United States.
Section 914, Revised Statutes, provides:
"The practice, pleadings, and forms and modes of proceeding in
civil causes, other than equity and admiralty causes, in the
circuit and district courts, shall conform, as near as may be, to
the practice, pleadings, and forms and modes
Page 220 U. S. 336
of proceeding existing at the time in like causes in the courts
of record of the state within which such circuit or district courts
are held, any rule of any court to the contrary
notwithstanding."
This section is intended to secure on the law side of the
federal courts the practice which prevails in like causes in courts
of the states. Its requirement is that such proceeding shall
conform "as near as may be" to that prevailing in the state courts
"in like cases." This section was not intended to require the
adoption of the state practice where it would be inconsistent with
the terms or defeat the purposes of the legislation of Congress.
Luxton v. North River Bridge Co., 147 U.
S. 337,
147 U. S. 338;
Chappell v. United States, 160 U.
S. 499,
160 U. S.
512.
In fact, the language of the statute is itself an indication
that the state practice cannot be at all times and under all
circumstances complied with. It is enough if the federal courts, in
adjudicating the rights of parties, comply with the state practice
"as near as may be." state statutes which defeat or encumber the
administration of the law under federal statutes are not required
to be followed in the federal courts.
Mexican C. R. Co. v.
Pinkney, 149 U. S.
207.
It follows that, where the state statute, or practice, is not
adequate to afford the relief which Congress has provided in a
given statute, resort must be had to the power of the federal court
to adapt its practice and issue its writs and administer its
remedies so as to enforce the federal law.
We think this power is not wanting in the present case. Section
716, Rev.Stat., confers broad powers upon the courts of the United
States. That section provides:
"The Supreme Court and the circuit and district courts shall
have power to issue writs of
scire facias. They shall also
have power to issue all writs not specifically provided for by
statute which may be necessary
Page 220 U. S. 337
for the exercise of their respective jurisdictions, and
agreeable to the usages and principles of law."
At an early day, it was held that, under this section, the
courts of the United States are not restricted to the kind of
processes used in the state courts, or bound to conform themselves
thereto in all respects, but have the authority to alter the
process in such manner as may be deemed expedient, and to so adapt
it that its effect and operation may be effectual.
Bank of
United States v. Halstead, 10 Wheat. 51.
There is no difficulty in issuing a writ in the nature of a writ
of replevin in an action such as is authorized by § 4965, requiring
the marshal to seize the alleged forfeited plates and copies, and
asking in the same suit to recover the penalty for those found in
the defendant's possession. The alleged infringing matter will be
brought into court to abide its order and judgment, and at the same
time, in the same action, a recovery may be had for the penalty
awarded.
This was the view of the statute suggested in
Bolles v.
Outing Co. supra. It was also asserted in
American Tobacco
Co. v. Werckmeister, supra, affirmed in this Court in
Werckmeister v. American Tobacco Co. supra.
It is true that, in the first
Werckmeister case, the
plaintiff recovered a judgment for the forfeiture of the infringing
sheets, but the question made and decided in the second case
involved the construction of the statute upon the question whether
one or two actions was authorized, and it was held that the statute
provided for one action, in which all the relief authorized by the
statute could be obtained.
The copyright statutes of the United States afford all the
relief to which a party is entitled, and no action outside of those
provided therein will lie.
Globe Newspaper Co. v. Walker,
210 U. S. 356. It
therefore follows that Hills & Company, having brought an
action for the recovery
Page 220 U. S. 338
of the infringing matter, and having conducted it so far as to
have the goods seized and turned over to them, can have no other
remedy under the statute which provides for all relief in a single
action.
It is stated in the certificate that the replevin suit
originally begun is still pending. Such being the fact, we do not
wish to intimate by anything herein decided that the authority to
amend pleadings and process in the federal courts may not justify
an amendment in that case so as to embrace the entire relief which
could have been obtained in a single action under § 4965 of the
Revised Statutes of the United States, as we have stated. That
question will arise if an application shall be made to the circuit
court of the United States in that view.
Holding that the remedy under the copyright statute embraces but
one action, as was held in the
Werckmeister case, and that
the local statutes of the state as to replevin or other remedies
will not prevent the federal courts from framing its process and
writs so as to give full relief in one action, we answer both of
the questions certified in the affirmative.
It is so ordered.