Where the copyright of a map was taken out under the act of
Congress, and the copperplate engraving seized and sold under an
execution, the purchaser did not acquire the right to strike off
and sell copies of the map.
The court below decided that an injunction to prevent such
striking off and selling could not issue without a return of the
purchase money. This decision was erroneous.
A copyright is a "property in notion, and has no corporeal
tangible substance," and
Page 55 U. S. 529
is not the subject of seizure and sale by execution. It can be
reached by a creditor's bill in chancery, but in such case the
court would probably have to decree a transfer in the mode pointed
out in the act of Congress.
The facts are stated in the opinion of the Court.
MR. JUSTICE NELSON delivered the opinion of the Court.
The bill was filed by the appellant in the court below to
restrain the defendant from printing and publishing a map of the
State of Rhode Island and Providence Plantations in violation of
the complainant's copyright.
The facts are briefly these:
The complainant, on 23 April, 1831, took out the copyright of a
map, the title of which is as follows:
"A Topographical Map of the State of Rhode Island and Providence
Plantations, surveyed trigonometrically and in detail by James
Stephens, topographer and civil engineer, Newport, R.I., 1831, the
right whereof he claims as author, in conformity with the act of
Congress entitled 'An act to amend the several acts respecting
copyrights,' "
and since then has been engaged in printing, publishing, and
vending the said maps by virtue of the copyright thus obtained. In
March, 1846, a judgment was recovered against him in the Common
Pleas of Bristol County, Massachusetts, for $194.23, upon which an
execution was issued, and the copperplate engraving of the map in
question seized and sold and bid off by the defendant for the sum
of $245, he being the highest bidder. Having thus become entitled
to the property in the engraving, he claimed the right to print and
publish the maps, and in pursuance of this supposed right he had
been engaged in printing, publishing and vending the same.
On the hearing upon the bill, answer, and proofs, the court
below differed in opinion as to the effect of the sale of the
copperplate engraving of the map, but agreed that no injunction
could issue without a repayment of the purchase money, which was
refused by the complainant, whereupon the court dismissed the bill
with costs.
The single question in the case is whether or not the property
acquired by the defendant in the copperplate at the sheriff's sale
carried with it as an incident the right to print and publish the
map engraved upon its face.
Page 55 U. S. 530
Upon this question the court below divided in opinion, but
finally agreed in dismissing the bill.
The appellee has not followed the case into this Court, and we
have not, therefore, been favored with the grounds and reasons
relied on for sustaining the decree; nor have we been furnished
with the reasons of the court for the same. The ground upon which
the decision was ultimately placed -- namely the refusal of the
complainant to refund that purchase money -- is certainly not
satisfactory, for if the copyright of the map or any right to print
or publish the same passed with the purchase of the plate as
incidental, as there is nothing in the facts of the case to
invalidate the sale, the title became complete in the purchaser and
could not be rightfully interfered with. But if otherwise, then
there was no ground for imposing the repayment of the purchase
money as a condition to the relief prayed for; the injunction
should have been awarded and the defendant directed to account.
But from the consideration we have given to the case, we are
satisfied that the property acquired by the sale in the engraved
plate, and the copyright of the map secured to the author under the
act of Congress, are altogether different and independent of each
other, and have no necessary connection. The copyright is an
exclusive right to the multiplication of the copies for the benefit
of the author or his assigns, disconnected from the plate or any
other physical existence. It is an incorporeal right to print and
publish the map, or, as said by Lord Mansfield in
Millar v.
Taylor, 4 Burr. 2396, "a property in notion, and has no
corporeal tangible substance."
The engraved plate and the press are the mechanical instruments
or means by which the copies are multiplied, as the types and press
are the instruments by which the copies of a book are produced. And
to say that the right to print and publish the copies adheres to
and passes with the means by which they are produced would be
saying, in effect, that the exclusive right to make any given work
of art necessarily belonged to the person who happened to become
the owner of the tools with which it was made, and that if the
defendant in this case had purchased the stereotyped plates of a
book, instead of the engraved plate, he would have been entitled to
the copyright of the work, or at least to the right to print,
publish, and vend it, and yet we suppose that the statement of any
such pretension is so extravagant as to require no argument to
refute it. Even the transfer of the manuscript of a book will not
at common law carry with it a right to print and publish the work
without the express consent of the author, as the property in the
manuscript and the right to multiply the copies are two separate
and
Page 55 U. S. 531
distinct interests. 4 Burr. 2330, 2396; 2 Eden 329; 2 Atkyns
342; 2 Story 100.
Lord Mansfield observed in
Millar v. Taylor that
"No disposition, no transfer of paper upon which the composition
is written, marked, or impressed, though it gives the power to
print and publish, can be construed a conveyance of the copy, by
which he means copyright, as appears from a previous part of his
opinion, without the author's express consent 'to print and
publish,' much less against his will."
Now it seems to us that the transfer of the manuscript of a book
by the author would of itself furnish a much stronger argument for
the inference of a conveyance of the right to multiply copies than
exists in the case of a transfer of the plate in question or of the
stereotype plates as the ideas and sentiments -- or in other words
the composition and substance of the work -- is thereby
transferred. But the property in the copyright is regarded as a
different and distinct right, wholly detached from the manuscript
or any other physical existence, and will not pass with the
manuscript unless included by express words in the transfer.
The copperplate engraving, like any other tangible personal
property, is the subject of seizure and sale on execution, and the
title passes to the purchaser the same as if made at a private
sale. But the incorporeal right, secured by the statute to the
author, to multiply copies of the map by the use of the plate,
being intangible and resting altogether in grant, is not the
subject of seizure or sale by means of this process -- certainly
not at common law. No doubt the property may be reached by a
creditor's bill and be applied to the payment of the debts of the
author the same as stock of the debtor is reached and applied, the
court compelling a transfer and sale of the stock for the benefit
of the creditors. 20 J.R. 554; 5 J.Ch. 280;
S.C., 4
id. 687; 1 Paige 637. But in case of such remedy, we
suppose, it would be necessary for the court to compel a transfer
to the purchaser in conformity with the requirements of the
copyright act in order to invest him with a complete title to the
property. The first section of that act provides that the author of
any map, chart &c., his executors, administrators, or legal
assigns, shall have the sole right of printing, publishing, and
vending the same during the period for which the copyright has been
secured. And the seventh section forbids any person from printing,
publishing, or selling the map or chart, under heavy penalties,
without the consent of the proprietor of the copyright, first
obtained in writing, signed in the presence of two credible
witnesses. Act of Congress, Feb. 3, 1831.
Page 55 U. S. 532
An assignment, therefore, that would vest the assignee with the
property of the copyright according to the act of Congress must be
in writing and signed in the presence of two witnesses, and it may,
I think, well be doubted whether a transfer even by a sale under a
decree of a court of chancery would pass the title so as to protect
the purchaser unless by a conveyance in conformity with this
requirement. 6 B. & Cranch 169; 1 Car. & P. 558; R. &
M. 187; D. & K. 215.
It is unnecessary, however, to express an opinion upon the
point. It is sufficient for the purposes of this case to say that
the right in question is wholly independent of and disconnected
from the engraved plate, and that there is no foundation for the
defense set up that it passed as appurtenant to the sale and
transfer of the property in the engraved plate from which the
copies of the map were struck off.
For these reasons we are of opinion that the decree below, must
be
Reversed with costs and the proceedings remitted with
directions that a decree be entered for the complainant in
conformity with this opinion.
Order
This cause came on to be heard on the transcript of the record
from the Circuit Court of the United States for the District of
Rhode Island and was argued by counsel. On consideration whereof it
is now here ordered, adjudged, and decreed by this Court that the
decree of the said circuit court in this cause be and the same is
hereby reversed with costs, and that this cause be, and the same is
hereby remanded to the said circuit court with directions to enter
a decree therein in conformity to the opinion of this Court.