In a hearing on bill and answer, allegations of new matter in
the answer are to be taken as true.
Where the judge of the Supreme Court of a state prepares the
opinion or decision of the court, the statement of the case and the
syllabus or headnote, and the reporter of the court takes out a
copyright for such matter in his name "for the state," the
copyright is invalid.
A copyright, as it exists in the United States, depends wholly
on the legislation of Congress.
The judge who, in his judicial capacity, prepares the matter
above mentioned is not its author or proprietor in the sense of §
4952 of the Revised Statutes, so that the state can become his
assigns and take out a copyright for such matter.
Bill in equity to restrain the defendant from infringing the
plaintiffs' copyright. The defendant answered, and the complainants
demurred to the answer. Decree dismissing the bill, from which
plaintiffs appealed. The case is stated in the opinion of the
court.
Page 128 U. S. 245
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
The Revised Statutes of Ohio, in §§ 426 to 435, title 4, chapter
1, pp. 273, 274 (ed. 1879), provide for the appointment of a
reporter by the Supreme Court of that state, to report and prepare
for publication its decisions, and for the printing of copies of
the reports by the public printer, and for their distribution to
public officers, as soon as a form of sixteen pages of printed
matter is printed, and also for the binding and distribution of a
full volume.
Section 436 provides as follows:
"The reporter shall secure a copyright, for the use of the
state, for each Volume of the reports so published, and he shall
receive such compensation for his services, not exceeding eighteen
hundred dollars per year, during the time the Supreme Court
Commission is in session, and at all other times not exceeding one
thousand dollars yearly, payable out of the state treasury, in such
installments as the Supreme Court, by order entered on its journal,
directs."
Section 437, as amended by the Act of January 17, 1881, 78 Laws
of Ohio 14, provides for the mode of doing such printing and
binding, under a contract to be made by the Secretary of State with
a responsible person or firm, when and as often as he shall be
authorized to do so by a resolution of
Page 128 U. S. 246
the General Assembly. That section says:
"Such contract shall not be for a longer period than two years,
and such contractor shall have the sole and exclusive right to
publish such reports, so far as the state can confer the same,
during such period of two years, and shall be furnished with the
manuscript to be printed, as provided in this chapter."
It also provides not only for the printing and binding, and the
furnishing to the state and the selling to the public, of copies of
the Volumes of the reports, but for the furnishing to the Secretary
of State of a prescribed number of advance sheets of the reports,
in forms of sixteen pages of printed matter.
On the 17th of April, 1882, the General Assembly of the State of
Ohio passed the following joint resolution, 79 Laws of Ohio
249:
"
Joint resolution providing for the publication of
the"
"
Ohio State Reports, and the advance sheets of the
same"
"Be it resolved by the General Assembly of the State of Ohio,
that the Secretary of State be and he is hereby authorized to
contract with some responsible person or firm to furnish material,
print, bind, and supply the state with three hundred and fifty
copies of the thirty-eighth and any other subsequent Volume or
Volumes of the Ohio State Reports that may be ready for publication
within two years from the 23d day of June, 1882, said contract to
be made with the lowest responsible bidder, as provided in § 2,
article 15, of the constitution, after first giving public notice
to bidders for four weeks in some weekly newspaper published in
Columbus, Ohio, and of general circulation in the state. Said
contract to be made in accordance with the provisions and subject
to the limitations and instructions of § 437 of the Revised
Statutes as to cost and otherwise, and shall include the advance
sheets provided for in said section. The Volume to be, in quality
of paper and binding, equal to Volume 1, Ohio State Reports, as
provided by law."
On the 16th of June, 1882, in pursuance of that resolution, the
Secretary of State of the State of Ohio entered into a contract on
behalf of that state, and in which it was named as the party of the
second part, with H. W. Derby & Co., of
Page 128 U. S. 247
Columbus, Ohio, the material parts of which were as follows: H.
W. Derby & Co. agree to furnish the material for, and to print
and bind, on paper and in character and quality of binding equal to
Volume 1, Ohio State Reports, in the manner in all respects, and
with the expedition as provided by law, a sufficient number of
copies of Volume 38, and of the next succeeding Volume or Volumes,
if any, of the Ohio State Reports, that might be ready for
publication within two years from and after June 23, 1882; to
supply the state with a specified number of copies of each Volume,
when bound at a specified price per Volume; to supply the public
with like copies at a specified limited price, and to set up the
matter furnished them in forms of sixteen pages, and furnish to the
Secretary of State printed copies of such forms. The state agreed
that Derby & Co.
"shall have the sole and exclusive right to publish the reports
aforesaid, so far as the said State of Ohio can confer the same,
for and during the said period of two years, commencing with said
23d day of June, 1882, and that they shall, moreover, be furnished
with all the manuscript thereof, to be printed, as provided by
law."
Derby & Co. assigned all their right and interest in the
contract to Banks & Brothers, of New York City.
The bill of complaint in the present case was filed by David
Banks and A. Bleecker Banks, composing the firm of Banks &
Brothers, against G. L. Manchester, in the Circuit Court of the
United States for the Southern District of Ohio. It sets forth the
matters above stated and avers that Banks & Brothers have
proceeded to carry out all the terms and conditions of the
contract, and that they and the State of Ohio are complying with
its conditions; that the Supreme Court of Ohio has decreed that
Volumes 41 and 42 of the Ohio State Reports shall be published
under, and are included in, the terms of the contract, and that no
other persons have any right to publish the decisions which are to
be contained in said Volumes 41 and 42, except as authorized by
Banks & Brothers; that the contract was made in pursuance of §§
436 and 437 of the Revised Statutes of Ohio; that the plaintiffs,
on October 1, 1884, entered into an arrangement with "The Capital
Printing and
Page 128 U. S. 248
Publishing Company" of Columbus, Ohio, by which that company was
authorized to publish the decisions of the Supreme Court of Ohio,
and of the Supreme Court Commission of Ohio, which were to be
contained in, and to constitute what would be, the 41st and 42d
Ohio State Reports, the same to be published in the Ohio Law
Journal, a publication owned by said company; that under such
arrangement, that company, on the 14th of October, 1884, issued its
No. 9 of Volume 6 of the Ohio Law Journal, and at the same time
issued, as a supplement to that number, a certain book or
publication containing, among other case, one entitled
The
Scioto Valley Railway Co. v. McCoy, decided by the Supreme
Court of Ohio, and which would appear as a part of Volume 42 of
Ohio State Reports, and one entitled
Bierce et al. v. Bierce et
al., decided by the Supreme Court Commission of Ohio, and
which would appear as a part of Volume 41 of Ohio State Reports,
and that, before said book was issued and on the 13th of October,
1884, E. L. De Witt,
"reporter for the Supreme Court of Ohio and of the Supreme Court
Commission of Ohio, in pursuance of the duties of his office, and
for the benefit of the State of Ohio,"
entered in the office of the Librarian of Congress at
Washington, a printed copy of the title of said work, containing
the said decisions, and did, within ten days thereafter, deposit in
the said office at Washington two complete copies of said book.
A copy of the said number of the Ohio Law Journal, with the book
as a supplement, containing 16 printed pages, is attached to the
bill. It shows the title of the book or supplement, as entered in
the office of the Librarian of Congress, and as afterwards issued,
namely, "Cases argued and determined in the Supreme Court and
Supreme Court Commission of Ohio," and, below the title and table
of contents, and on the first page of the book, which is page 17,
is printed the following:
"Entered according to the Act of Congress in the year eighteen
hundred and eighty-four, by E. L. De Witt, for the State of Ohio,
in the Office of the Librarian of Congress at Washington. [All
rights reserved.]"
The bill avers that that title was printed on each copy of
Page 128 U. S. 249
the book issued by the Capital Printing and Publishing Company,
as was also the above notice of copyright; that the defendant, on
November 5, 1884, issued Nos. 22 and 23 of Volume 1 of a book
entitled "The American Law Journal," in one of which numbers he
printed and published the said case of
Bierce et al. v. Bierce
et al., and in the other of which he printed and published the
said case of
The Scioto Valley Railway Co. v. McCoy; that,
prior to the said publication by the defendant, neither of said
cases had been published except in the book so issued on the 14th
of October, by the Capital Printing and Publishing Company, and
that those cases were copied by the defendant from the book so
copyrighted by De Witt for the State of Ohio. Copies of such
publications of the defendant are annexed to the bill. It further
avers that the defendant has declared to the plaintiffs, in
writing, his intention to disregard their rights and to continue
the publication in the American Law Journal of the decisions of the
Supreme Court and Supreme Court Commission of Ohio.
The prayer of the bill is for an injunction perpetually
restraining the defendant from printing and publishing the
decisions which will appear in Volumes 41 and 42, Ohio State
Reports, and for an injunction to that effect
pendente
lite.
The defendant answered the bill. The answer denies that the
Supreme Court of Ohio has decreed that Volumes 41 and 42 of the
Ohio State Reports shall be published under and are included in the
terms of the contract with Derby & Co., and that no other
persons have the right to publish the decisions which are to be
contained in said Volumes 41 and 42, except as authorized by the
plaintiffs. It also denies that the attempt on the part of Mr. De
Witt, the reporter, to obtain a copyright on the book and printed
matter described in the bill and published by the Capital Printing
and Publishing Company, was in pursuance of his duties as reporter,
and denies that the attempted copyright by the reporter was for the
benefit of the State of Ohio, and denies that the contract referred
to was made in pursuance of § 436 of the Revised Statutes, but
avers that it was made under § 437 and the joint resolution
Page 128 U. S. 250
referred to. It also avers that the opinions and decisions of
the Supreme Court and Supreme Court Commission of Ohio, referred to
in the bill as having been published by the defendant in the
American Law Journal, were exclusively the work of the judges
composing those courts; that the reporter performed no work in
preparing the said opinions and decisions; that it is the universal
custom and practice of those courts that the judge to whom the duty
is assigned of preparing the opinion, prepares not only the
opinion, but also the statement of the case and the syllabus, the
latter being subject to revision by the judges concurring in the
opinion; that the reporter takes no part, and performs no labor, in
preparing the syllabus, the statement of the case, and the opinion;
that the duty of the reporter consists in preparing abstracts of
arguments of counsel, tables of cases, indexes, reading proof, and
arranging the cases in their proper order in the volumes of
reports, and that the reporter is paid a stated annual salary out
of the treasury of the state, fixed by law, and has no pecuniary
interest in the publication of the reports.
The plaintiffs filed a formal demurrer to the answer, but, no
such pleading being authorized by the rules in equity, the case was
heard upon bill and answer, and a decree was entered dismissing the
bill, from which decree the plaintiffs have appealed.
The decision of the circuit court is reported in 23 F. 143. That
court held (1) that no duty was imposed upon the reporter by the
statutes of Ohio before mentioned to secure a copyright for the use
of the state for any volume of reports published by virtue of a
contract made by the Secretary of State under § 437; (2) that there
was nothing in the statute which authorized the reporter or any
other person to acquire a copyright in the opinions or decisions of
the judges; (3) that the copyright of a volume would not interfere
with the free publication of everything which was the work of the
judges, including the syllabus and the statement of the case as
well as the opinion, but would protect only the work of the
reporter -- namely the indexes, the tables of cases, and the
statements of points made and authorities cited by counsel.
Page 128 U. S. 251
Rule 60 in equity authorizes the plaintiff, instead of filing a
replication to an answer, to set the cause down for hearing upon
bill and answer. In such case, allegations of new matter in the
answer are to be taken as true. 2 Daniell, Ch.Pr. (4th Am. ed.)
982, note 1;
Brinckerhoff v. Brown, 7 Johns.Ch. 217, 223;
Perkins v. Nichols, 11 Allen 542, 544;
Leeds v.
Marine Ins. Co., 2 Wheat. 380,
15 U. S. 384.
In the present case, it is to be taken as true, as alleged in the
answer, that what the defendant published in the American Law
Journal was exclusively the work of the judges, comprising not only
the opinion or decision of the court or the commission, but also
the statement of the case and the syllabus or headnote. The copies
of the publications made by the defendant, which are appended to
the bill, show that the two cases referred to, published by him,
consist in each case of only the syllabus or headnote, the
statement of the case, the names of the counsel for the respective
parties, and the opinion or decision of the court.
The copy of the supplement to No. 9 of Volume 6 of the Ohio Law
Journal, appended to the bill, shows that what Mr. De Witt
undertook to obtain a copyright for, for the State of Ohio, in
respect of the two cases referred to, was a report of each
consisting of the headnote or syllabus, the statement of the case,
the names of the counsel for the respective parties, and the
decision or opinion of the court, all in identical language in each
case with what was so afterwards printed and published by the
defendant in the American Law Journal, except that in the case of
The Scioto Valley Railway Co. v. McCoy, the words "(To
appear in 42 Ohio St.)" and in the case of
Bierce et al. v.
Bierce et al., the words "(To appear in 41 Ohio St.)" printed
in the publication in the Ohio Law Journal, to not appear in the
defendant's publication. It is therefore clear that in respect of
the publication complained of, the reporter was not the author of
any part of the matter for which he undertook to take a copyright
for the State of Ohio.
Although the Constitution of the United States, in § 8 of
Article I, provides that the Congress shall have power
"to
Page 128 U. S. 252
promote the progress of science and useful arts by securing for
limited times to authors and inventors the exclusive right to their
respective writing and discoveries,"
yet the means for securing such right to authors are to be
prescribed by Congress. It has prescribed such a method, and that
method is to be followed. No authority exists for obtaining a
copyright beyond the extent to which Congress has authorized it. A
copyright cannot be sustained as a right existing at common law,
but, as it exists in the United States, it depends wholly on the
legislation of Congress.
Wheaton v.
Peters, 8 Pet. 591,
33 U. S.
662-663. Section 4952, Rev.Stat., provides that
"Any citizen of the United States or resident therein who shall
be the author, inventor, designer, or proprietor of any book, . . .
and the executors, administrators or assigns of any such person,
shall, upon complying with the provisions of this chapter, [chapter
3 of title 60] have the sole liberty of printing, reprinting,
publishing, completing, copying, executing, finishing, and vending
the same."
This right is granted for the term of twenty-eight years from
the time of recording the title of the book in the manner directed
in the statute, and § 4954 provides that
"The author, inventor, or designer, if he be still living, and a
citizen of the United States, or resident therein, or his widow or
children, if he be dead, shall have the same exclusive right
continued for the further term of fourteen years"
upon recording the title of the work a second time, and
complying with all other regulations in regard to original
copyrights within six months before the expiration of the first
term.
We are of opinion that these provisions of the statute do not
cover the case of the State of Ohio in reference to what Mr. De
Witt undertook to obtain a copyright for, for the benefit of that
state, in the present instance. Mr. De Witt, although he may have
been a citizen of the United States or a resident therein, was not
the author, inventor, designer, or proprietor of the syllabus, the
statement of the case, or the decision or opinion of the court. The
state therefore could not become the assignee of Mr. De Witt, as
such author, inventor, designer,
Page 128 U. S. 253
or proprietor. The state cannot properly be called a citizen of
the United States or a resident therein, nor could it ever be in a
condition to fall within the description in § 4952 or § 4954.
The copyright claimed to have been taken out by Mr. De Witt in
the present case, being a copyright "for the state," is to be
regarded as if it had been a copyright taken out in the name of the
state. Whether the state could take out a copyright for itself, or
could enjoy the benefit of one taken out by an individual for it,
as the assignee of a citizen of the United States or a resident
therein, who should be the author of a book, is a question not
involved in the present case, and we refrain from considering it
and from considering any other question than the one above
indicated. In no proper sense can the judge who, in his judicial
capacity, prepares the opinion or decision, the statement of the
case, and the syllabus, or headnote be regarded as their author or
their proprietor in the sense of § 4952, so as to be able to confer
any title by assignment on the state sufficient to authorize it to
take a copyright for such matter under that section as the assignee
of the author or proprietor.
Judges, as is well understood, receive from the public treasury
a stated annual salary, fixed by law, and can themselves have no
pecuniary interest or proprietorship, as against the public at
large, in the fruits of their judicial labors. This extends to
whatever work they perform in their capacity as judges, and as well
to the statements of cases and headnotes prepared by them as such,
as to the opinions and decisions themselves. The question is one of
public policy, and there has always been a judicial
consensus, from the time of the decision in the case of
Wheaton v.
Peters, 8 Pet. 591, that no copyright could, under
the statutes passed by Congress, be secured in the products of the
labor done by judicial officers in the discharge of their judicial
duties. The whole work done by the judges constitutes the authentic
exposition and interpretation of the law, which, binding every
citizen, is free for publication to all, whether it is a
declaration of unwritten law or an interpretation of a constitution
or a statute.
Nash
Page 128 U. S. 254
v. Lathrop, 142 Mass. 29, 35. In
Wheaton v.
Peters, at
33 U. S. 668,
it was said by this Court that it was
"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."
What a court or a judge thereof cannot confer on a reporter as
the basis of a copyright in him they cannot confer on any other
person or on the state.
The decree of the circuit court is affirmed.