On the 27th of December, 1847, George F. Comstock was appointed
state reporter under a statute of the State of New York, which
office he held until the 27th of December, 1851.
During his term of office, viz.
in 1850, he, in
conjunction with the comptroller and secretary of the state, acting
under the authority of a statute, made an agreement with certain
persons that for five years to come, they should have the
publication of the decisions of the Court of Appeals and the
exclusive benefit of the copyright.
At the expiration of Mr. Comstock's term, viz.
27th of December, 1851, he had in his possession sundry manuscript
notes, and the decisions made at the ensuing January term, were
also placed in his hands to be reported. Out of these materials he
made a volume and sold it upon his own private account.
Whatever remedy the first assignees may have had against Mr.
Comstock individually, they are not to be considered as the legal
owners of the manuscript under the copyright act of congress, and
are not entitled to an injunction to prevent the publication and
sale of the volume.
The case is stated in the opinion of the Court.
Page 59 U. S. 169
MR. JUSTICE McLEAN delivered the opinion of the Court.
A want of jurisdiction to sustain this appeal was alleged by
counsel, as it does not appear from the record that the amount in
controversy exceeds the sum of two thousand dollars, but this
objection was obviated by an affidavit which stated that the amount
claimed by the plaintiffs exceeds that sum.
This bill was filed under the copyright act to enjoin the
defendants from publishing and selling the fourth volume of
The plaintiffs, who are publishers and booksellers at Albany,
New York, represent that on the 20th of April, 1850, they entered
into an agreement with Washington Hunt, Comptroller, Christopher
Morgan, Secretary, and George F. Comstock, Reporter of the State of
New York, as required by statute, that they should have the
publication, for the term of five years, of the decisions of the
Court of Appeals, and the exclusive benefit of the copyright, to be
taken out in behalf of the state, of the notes and references, and
other matter furnished by the reporter connected with said
decisions, and that instrument was declared to be an assignment and
transfer of the copyright of the matter so published, which should
consist of volumes of not less than five hundred pages each.
On the 27th of December, 1847, George F. Comstock was appointed
state reporter for three years and until his successor was
appointed and qualified, at a salary of $2,000 per annum. He was to
have, under the law, no interest in the reports, but the copyright
of his notes, references, and abstracts of arguments was to be
taken in the name of the Secretary of State for the benefit of the
people of New York. The law forbade the reporter and all other
persons from acquiring a copyright in the reports, but declared
they might be republished by any person.
Mr. Comstock's term of office expired on the 27th of
Page 59 U. S. 170
1850, and his successor, Henry R. Selden Esq., was appointed to
succeed him on the 17th of January, 1851. Mr. Comstock questioned
the validity of his appointment, and the matter was referred to the
judges of the Court of Appeals, then in session at Albany, who
decided that Mr. Selden was duly appointed. He took the oath on the
21st of January, 1851, and immediately entered upon the duties of
Mr. Comstock published three volumes of his reports, and having
in his hands at the expiration of his office opinions of the court
to make half or more of another volume, on the suggestion of the
judges, and with the consent of Mr. Selden, the opinions of the
January term were delivered to him, that he might complete his
fourth volume. At the time of this arrangement, he had made no
preparation, by notes &c., for this volume, and did not
commence the work until some months afterwards.
After he had made considerable advance in the preparation of
this volume, he invited proposals for the purchase of the
copyright, and although the plaintiffs, in conversation with him,
said they would give as much as any other persons, yet they made no
proposal, as they were apprehensive it might affect the contract
for the publication of the reports as above stated. The defendants
purchased the copyright, for which they paid $2,500. At a large
expense, they prepared stereotypes for the work and printed it.
The plaintiffs, so soon as the volume was published, commenced a
republication of it, and filed this bill to enjoin the defendants
from selling their edition. Previous to the publication of the
third volume of Comstock's Reports, the Secretary of State had the
copyright of the headnotes, references &c., entered by the
clerk of the district court of the United States for the benefit of
the state, and the complainants had a similar entry made, to secure
the copyright to the state of the fourth volume. This was not done
by the Secretary of State as the law directed, and it seems it was
not sanctioned by him, as he was doubtful whether he had the power
to do so.
The 9th section of the Copyright Act of the 3d of February,
"That anyone who shall print or publish any manuscript whatever
without the consent of the author or legal proprietor first
obtained as aforesaid . . . shall be liable to suffer and pay to
the author or proprietor all damages occasioned by such
At common law, an author has a right to his unpublished
manuscripts the same as to any other property he may possess, and
this statute gives him a remedy by injunction to protect this
Page 59 U. S. 171
A formal transfer of a copyright by the supplementary act of the
30th of June, 1834, is required to be proved and recorded as deeds
for the conveyance of land, and such record operates as notice.
After the expiration of his official term, Comstock did not and
could not act as reporter. His successor, having been appointed and
qualified, discharged the duties of the office and received the
salary. As many of the opinions of the court were in the hands of
Comstock when his office expired, it might have been made a
question whether he could not publish the fourth volume as
reporter. This would have given to the state a continuous report of
the decisions of the Court of Appeals, as the law contemplated,
with the copyright of the notes &c., secured for the benefit of
the people of the state. If the opinions of the court came into his
hands during his continuance in office, there would seem to be no
impropriety in his publishing them as filling up the measure of his
But it seems a different view was taken by the late reporter. As
his term of office had expired, he was unwilling to publish the
fourth volume without compensation for his labor. This changed his
relations with the plaintiffs, as that contract was made as
reporter, and on the supposition that he would be continued in that
office. Under that contract, the complainants had the advantage of
publishing the reports for the price stipulated, but anyone was at
liberty to republish them.
The fourth volume was published by Mr. Comstock as an
individual, he having secured to himself the copyright. This
probably insured to the purchaser of the right the republication of
the work for the term of twenty-eight years. Under the agreements
made with the plaintiffs, they had only the profit of their
Whether the plaintiffs may not have a remedy on their contract
with Mr. Comstock in the local tribunals of the state is not a
question before us. Our only inquiry is whether any relief can be
given by this Court under the copyright act. Where a case arises
under that act, we have jurisdiction though both the parties, as in
this case, are citizens of the same state. But if the act do not
give the remedy sought, we can only take jurisdiction on the ground
that the controversy is between citizens of different states.
Were the plaintiffs the legal proprietors of the manuscript from
which the fourth volume of Comstock's Reports was published? The
plaintiffs rely upon their contract with the Comptroller, the
Secretary of State, and Mr. Comstock the Reporter. In that contract
it is said
"this instrument is declared to be an
Page 59 U. S. 172
assignment and transfer of the copyright of the matter so
published to the parties of the second part."
This contract was made with Mr. Comstock as reporter, and the
plaintiffs agreed to publish the work in volumes containing five
hundred pages each, to have them well bound in calf, the types,
paper, and the entire execution, to be equal to Denio's Reports,
the work to be done under the superintendence of the reporter,
copies to be furnished to certain officers of the state, and the
publishers were to keep the volumes for sale at two dollars and
fifty cents per copy, and in all things they were bound to comply
with the statutes of the state.
Comstock could not have published the work as reporter without
the consent of the Court of Appeals and also the Secretary of
State, who was required to secure the copyright to the state, and
for his labor in preparing the notes, references &c. and
superintending the printing he could have received no
Without saying what effect might have been given to the contract
had the relation of the parties remained unchanged, we are unable
to say, as the case now stands before us, that the plaintiffs were
the legal owners of the manuscript within the copyright law. The
contract was made by Comstock as reporter, whose duties were
regulated by law, and the obligations of the complainants as
publishers were embodied in the contract and were incompatible with
any publication on private account.
The entire labor of the work was performed by Comstock not as
reporter, but on his own account. It is, we think, not a case for a
specific execution of the contract, and in effect that is the
object of the bill. This result has not been brought about by the
acts of Comstock. He may have been imprudent in extending his
contract unconditionally beyond the term of his office. But in
doing so, he has an apology, if not an excuse, by being associated
in making the contract with two high functionaries of the state.
Under the changed relation of the parties, the plaintiffs cannot be
considered as the legal owners of the manuscript for the purposes
of the contract under the copyright law.
Whatever obligation may arise from the contract under the
circumstances as against Comstock must be founded on his failure to
furnish the manuscripts to the plaintiffs, and of such a case we
can take no jurisdiction as between the parties on the record.
The decree of the circuit court is affirmed.