Belford Clarke Company v. Scribner/Opinion of the Court

The assignments of error filed by the defendants in this court allege that the final decree of the circuit court is erroneous (1) because it recites that the hearing was upon the master's report, with exceptions thereto, when there was no report nor any exceptions thereto before the court at the final hearing; (2) because it finds that the plaintiff is entitled to damages, when the only remedy in equity is by injunction and an account of profits; (3) because it finds that copyright in the book, the title of which is set forth in the bill, was vested in the plaintiff as proprietor thereof, when the proofs show that he never was its proprietor, and therefore could not procure a valid copyright therein; (4) because the proofs did not show that any valid copyright had been procured at any time in said book, or in either edition thereof; (5) because the decree goes for the entire amount of profits realized by the corporation defendant, which was the proprietor of the book which is alleged to infringe the rights of the plaintiff, instead of such part of the profits as was realized by reason of such infringement; (6) because it orders the defendants Donohue & Henneberry to pay the amount of said profits, when the pleadings and proofs fail to show that any part of such profits was realized by them, or either of them; (7) because the court granted the motion of the plaintiff, after the hearing of the cause, to file proofs therein, and denied the motion of the defendants to have such proofs stricken from the record; and (8) because the findings and decrees of the court were against the law and the evidence.

1. It is true that the record shows that on the 17th of October, 1884, the court made an order referring the cause to a master in chancery 'to take proof and state an accountherein.' No report afterwards made is found in the record. The only special report found therein is one of the master, hereinbefore set forth, filed February 27, 1884, on the question of the issuing of a preliminary injunction. To that report no exceptions appear to have been filed. Not only does the final decree of April 9, 1888, state that the cause was heard upon bill, answers, replications, and proof, 'and upon the master's report herein, with exceptions thereto,' but the opinion of Judge BLODGETT says: 'The case was referred to one of the masters of the court to take proofs and report findings upon the question of infringement; and he has reported that the defendants, by the publication and sale of two books set out and described in the bill of complaint, one under the title of 'How to Cook,' and the other under the title of 'Economy Cook-Book,' have infringed upon the complainant's copyright by incorporating into their said publication something over fifty pages of the matter of complainant's book, as well as substantially following the arrangement of subjects and headings. Myers v. Callaghan, 10 Biss. 139, 5 Fed. Rep 726. I have carefully examined the proof upon which the master bases his findings, and am satisfied that the finding was fully justified by the testimony. The case is now before me on defendants' exception to the master's findings, and on complainant's motion for a decree in pursuance of the master's report.'

The report thus referred to in the decree and in the opinion is manifestly the report filed February 27, 1884, and there must have been exceptions thereto taken by the defendants. The testimony on which that report was based is not found in the record. The only other master's report in the record is one made by him reporting the testimony which he had taken in the cause in Chicago in May, 1885, and subsequently, and which report is dated April 20, 1886, and was filed April 27, 1886. If exceptions were taken by the defendants to either or both or those reports, it was their duty as appellants to have them brought into this court as part of the record; and if they took no exceptions the reports stand without exception. The first assignment of error is of no avail to the defendants.

2. It is also contended that the plaintiff is not the owner of the two copyrights in question, because the authoress of the book was a married woman, residing with her husband in New Jersey, when the agreement between her and Charles Scribner & Co. was made, on April 1, 1871; that at common law a married woman has no interest in personal property acquired by her during marriage, but it belongs absolutely to her husband; that no proof was introduced of the provisions of the laws of New York, or those of New Jersey or those of Massachusetts, in which latter state the bill averred that the authoress resided, at the time the bill was filed, and no proof was offered to show that the laws of any of those states differed from the common law, and the presumption was that the common law was in force in those different states; ahat it does not appear that the authoress had any right to sell her husband's property, or to make contracts in regard to it; that this suit ought to have been brought in his name as plaintiff; and that if, by ratification, he had confirmed her right to hold and deal with the property in question, then the suit ought to have been brought in her name, as owner in fact of the copyright.

On this point the circuit court said, in its opinion, that as the proof showed that the authoress from time to time settled with the owners of the copyright for her royalties the court would presume that her legal title as the author of the books was in some due and proper manner conveyed to and vested in the persons who secured the copyright thereof, and that acquiescence for so many years, by all the parties, in that claim of proprietorship in the copyright, was enough to answer the suggestion of the husband's possible marital interest in his wife's enrnings. This is, we think, a sound view.

The opinion of the circuit court further correctly said: 'It is certain that, if there is any ownership in this work by copyright at all, it is in the complainant, in whose name the copyright was taken and now stands, so far as is shown by the proof in this case. If the law of the domicile of Mrs. Terhune entitles her husband to any part of her earnings, that is a matter to be settled between her husband and the complainant, and which the defendants cannot interpose as a defense to a trespass upon the complainant's property rights in this copyrighted book.'

3. It is also contended for the defendants that the two contracts in the case-one dated April 1, 1871, between the authoress and Charles Scribner & Co., and the other dated November 6, 1884, between her and Charles Scribner's Sons-did not vest the title of the book in the plaintiff, or in those through whom he claims title, and that those agreements did not show that she parted with the title to the book of which she was the authoress. But we are of opinion that the proofs are to the contrary, and that the copyright was secured in accordance with law, in both editions of the book, by the proprietor, and that the plaintiff owns such copyright.

4. Objection is also made that it is stated in the amendments to the bill that a printed copy of the title-page of the book first published was delivered at the office of the librarian of congress at Washington May 26, 1871; that on the same day Charles Scribner & Co., within 10 days from the publication of the book, delivered two printed copies of it at the office of the librarian of congress; that section 4956 of the Revised Statutes required that the two copies should be delivered at the office of said librarian, or deposited in the mail addressed to him, 'within ten days from the publication' of the book; that the testimony shows that the book was published May 27, 1871; and that, therefore, the two printed copies of it were deposited one day before the publication, and the law was not complied with.

But we are of opinion that the statute was substantially complied with. The two copies were deposited before the expiration of 10 days after the publication, and that was all that was necessary. Ten days were allowed after the publication within which the two copies were required to be deposited; and, within the meaning of the statute, they were so deposited, although the deposit took place one day before the publication. The case is analogous to the ruling of this court as to the protest or notice of dissatisfaction to be given to the collector in a customs case, where the statute required it to be given within 10 days after the liquidation of the duties, and it was given after the collector's decision and before the final liquidation, and it was held that, as the notice was given before 10 days after the final liquidation had expired, it was a sufficient notice. Davies v. Miller, 130 U.S. 284, 9 Sup. Ct. Rep. 560.

5. It is also contended that the copyright of 1880 was invalid because no sufficient proof appeared that two copies of that book were duly deposited. We are of opinion that the certificate of the librarian of congress, set forth in the margin as printed in the record, that two copies of the new edition of the plaintiff's copyrighted book were received by him November 15, 1880, which was within 10 days after the publication, was competent evidence, although the certificate was not under seal.

6. It is also contended that the circuit court erred in granting on February 23, 1888, the motion of the plaintiff 'to file a certified copy of copyright in place of such proof heretofore filed and lost,' and in refusing on April 6, 1888, to grant the motion of the defendants to strike from the record the certificates of the librarian of congress, which had been filed in pursuance of the order of February 23, 1888. The ground of making the order of February 23, 1888, was stated in it to be that proof by a certified copy of copyright had been theretofore filed and lost, and that the new certified copy was to be in place of such proof; and, in the motion made by the defendants to strike the new certificates from the record, it was stated that 'no other certificate having the like purport or effect had been ever offered in evidence, nor lost from the files in said cause.' But the court, by over ruling such motion, must necessarily have found that the fact was otherwise, and that such former certificates had been filed as proof and had been lost. There is nothing in the record to control this finding of fact.

7. It is urged that the decree ought to have been entered for the sum of $1,092 against the defendant corporation alone, and that it was error to decree the other two defendants to pay any part of that amount; that those two defendants manufactured the books complained of, and did not sell them or offer them for sale; that the corporation defendant published and sold the books, and was the only defendant which received any part of the profits arising from their sale; and that it was from the books of account of the corporation defendant that the account of profits was stated on which the decree for damages in the case was based. To support this view the case of Elizabeth v. Pavement Co., 97 U.S. 126, 139, 140, is cited to show that unless all of the defendants realize a profit from the infringement a joint decree for the payment of such profits ought not to be entered against them, and that the defendants who did not participate in the profits realized ought not to be charged with any part of those profits. It is contended that, while the defendants Donohue & Henneberry might have been called upon to account for the profits realized by them from manufacturing or printing and binding the books complained of, no proof of such profits was offered, and therefore no decree for the payment of any profits could lawfully be entered against them. The decree sets forth that the $1,092 is the amount of the profit shown by the proof to have been made by the defendants from the defendants' infringement.

To this view it is replied by the plaintiff that, as the defendants Donohue & Henneberry printed the books by contract with the corporation defendant, and as, under the copyright law, (Rev. St. § 4964,) both the printer and the publisher are equally liable to the owner of the copyright for an infringement, and as it is to be inferred that Donohue & Henneberry made a profit from printing the piratical books, they were therefore sharers in the profits realized from the sale of the books, and were participes criminis with the defendant corporation in the infringement; that the two sets of defendants together printed and published the books, and were practically partners in doing it,-the corporation doing one part, and the other defendants the other part, of the printing and publishing, and that all the parties concerned ought to be held to an account to the owner of the copyright in respect to the profits derived from the printing, publishing, and selling, without all of which combined there could have been no infringement. We think these views are sound.

8. It is contended by the defendants that the decree ought to have been only for that proportion of the profits realized from the sale of the books which was derived from the use of the matter which had been copied from the copyrighted books. But the report of the master, filed February 27, 1884, speaking of the books printed and published by the defendants, said that he found 'that said works, though purporting to be edited and compiled by different persons, whose names appear therein, in one instance the title being partially changed and in others entirely so, are largely compilations of the recipes of the complainant, and that the matter and language of said books is the same as the complainant's in every substantial sense, but so distributed through said books of defendants as to become incorporated into those works, making it almost impossible to separate the one from the other.'

The rule is well settled, that, although the entire copyrighted work be not copied in an infringement, but only portions thereof, if such portions are so intermingled with the rest of the piratical work that they cannot well be distinguished from it, the entire profits realized by the defendants will be given to the plaintiff. This was the rule laid down by this court in Callaghan v. Myers, 128 U.S. 617, 665, 9 Sup. Ct. Rep. 177, following Mawman v. Tegg, 2 Russ. 385, 391, and Elizabeth v. Pavement Co., 97 U.S. 126, 139.

We have thus reviewed the points urged in the brief of the appellants, and do not deem it necessary to consider any others.

Decree affirmed.