Little v. Hall

THIS was an appeal from the circuit court of the United States, for the northern district of New York.

The case is stated in the opinion of the court.

It was argued by Mr. Seward, for the plaintiffs in error, and Mr. Haven, for the defendants.

Mr. Seward made the following points:--

1. Comstock, by accepting the office of state reporter, and acting under it, and by uniting with the secretary of state and comptroller in the contract with the appellants of April 20, 1850, must be deemed to have accepted the terms and conditions of the act of April 11, 1848, and of April 9, 1850. And those statutes operated, by reason of such acquiescence on his part, to vest in the State of New York, all the interest and right which he might have, as author, in any reports of decisions of the court of appeals, which should be prepared by him as reporter; and the State became the absolute owner thereof.

2. By the contract made by the state reporter, the secretary of state, and the comptroller, on behalf of the State, with the appellants, the interest of the State in all matter constituting the reports to be made by Comstock, as reporter, was equitably and legally vested in the appellants, for the purpose of being published exclusively by them during the term specified in the contract.

3. The appellants, by the operation of the contract, and of the laws of the State in pursuance of which it was made, became the legal assignees and proprietors of the manuscript matter prepared by Comstock as state reporter, under the ninth section of the law of congress of 1831, which right was exclusive of all others during the continuance of the contract. The exclusive copyright was the exclusive right to publish the manuscripts.

This proposition is a legal deduction from the two former propositions already established.

4. Volume 4 of Comstock's Reports, was covered by the contract, as to all the matter that it contained, and so was subject to the exclusive right of the appellants to the manuscript matter prepared by the reporter, and incorporated into the work.

The expiration of Comstock's term of office did not alter his liability in this respect. True, he could not be required to prepare the decisions for publication, and to furnish notes and references; but,

1. If he did not do this, he must hold the materials subject to the order of his successor, who must do the labor; or, if he did use them, and prepare them for publication with notes and references, then the materials and additional matter, being incorporated together, and so prepared according to the contract, must pass, under the contract, to the appellants.

Had Comstock died during his term of office, the trust and bailment would have remained attached to the materials in the hands of his executors. A trust would have resulted to the State a right of action, legal or equitable, to the appellants, when the purpose for which he received the materials failed to take effect. (2 Fonblanque, 118.)

It is wholly unimportant that Comstock might, either while in office, or after going out of office, have acquired similar materials by other means.

1st. As he would in that case have used similar materials, as the basis for labor to be performed for the appellants under the contract, and as he had received an equivalent in advance for that labor, either the labor must be done for their benefit or not at all.

2d. But in point of fact, he received these specified materials as a trustee and bailee, and he must be held to the obligations they created.

These are principles so familiar, and they so fully pervade every branch of jurisprudence, equally the law and equity, that references to authorities would seem superfluous. But for convenience, refer to Hill on Trustees, 172, 282, 509, 2 Vesey, 498; Taylor v. Plumer, 3 Maule & Selwyn, 562, 567, 574; Adair v. Shew, 1 Schoale & Lefroy, 262; Story on Equity Jurisprudence, § 533, &c., 1,257, 1,258, 1,261; Kane v. Bloodgood, 7 Johnson's Ch. Reports. 110, where it is held that every deposit is a trust, and that every person who receives money to be paid to another, or to be applied to a particular purpose to which he does not apply it, is a trustee. So the principle adopted in the case of a tenant, that he cannot deny the title of his landlord so long as he retains possession, but must surrender the premises, and place himself in hostility to his landlord, before he can set up a title in himself, is founded on the very contract of tenancy itself. (Nelson, Ch. J.; Phelan and wife v. Kelly, 25 Wend. 392. See also Massey v. Davis, 2 Vesey, Jr., 318, 320; East India Co. v. Hinchman, 1 Vesey, Jr., 289.)

5. It is in evidence, that Mr. Comstock has commenced, and still has pending, an action to establish his right to the office of state reporter, at this time. This claim of continuance in office is utterly inconsistent with the position of individual and private right, action, and interest, in regard to volume 4, set up by the respondents, and is conclusive against him and them, that volume 4 was prepared by him as state reporter, and subject to the operation of the contract, Exhibit A.-(Lord Chancellor, in 2 Vesey, Jr., 696; 1 Swanston, Note (a) to p. 381; Comyn's Digest, Election, C. I.)

Comstock has made his election to claim and hold the office of state reporter, with full knowledge of his rights, and he is bound by it.

6. There is no proof of any acquiescence by the appellants in the claim of Mr. Comstock, by which he was misled or induced to incur expense.

Mr. Haven, for defendants in error, made the following points:--

1. There is no question of copyright or of property in manuscripts involved in the case, and the plaintiffs' claim does not fall within the provisions of any of the acts of congress, and this is fatal to the plaintiffs' case.

I. The laws of the United States afford remedies, and the federal courts have jurisdiction only in favor of the 'author' of a book or 'his legal assigns,' or the 'author or legal proprietor' of a manuscript. Of course, a book or manuscript belongs primarily under the copyright laws to the author. The plaintiffs not being the 'author,' must therefore deduce from him a 'legal' right and title to the book or manuscript, or else they cannot sustain their bill in the federal courts. If they can allege any other rights which have been violated, these must be asserted in the state courts, and on some general principle of equity or of law. See the opinion of the circuit court, which proceeds very much on this ground. See also laws of the United States, 2 sess. 21 Cong. 1831, p. 11, §§ 1, 9; 2 Kent, Comm. (6th ed.) 379. Clark v. Price, 2 Wilson, Ch. R. 157. Jollie v. Jaques, 1 Blatch. 618, 627.

II. But the strongest manner in which the plaintiffs can state their case is to allege that the notes, references, and manuscript matter composed by Mr. Comstock, and contained in the book in question, fall within the purview of their contract for the publication of the State Reports to be composed by the state reporter. We say the strongest, because this assumes the precise fact controverted, to wit, that Mr. Comstock's labors upon this book were official and not private. It is not pretended of course that the plaintiffs, under their contract with the state officers, could have any interest in the labors of Mr. C., or any one else as a private reporter.

III. Assuming then this, the best statement of the plaintiffs' case, to be true, it only follows that the contract with the plaintiffs has been violated, affording perhaps a just ground of action or claim against the State of New York, or its agents who made the contract. But it by no means follows that the plaintiffs have the 'legal' title to, or are 'the legal proprietors' of the book or of the manuscript in question. At the time of the contract, no part of the work was composed. The agreement, therefore, was simply executory, and could vest no title or actual property in that which had no existence.

2. But the case is not such as has been thus far assumed. In fact, Mr. Comstock was not in the service of the State. He was a private citizen, and another person held the office of state reporter, and received the salary annexed thereto. In fact, also, Mr. Comstock, at no period of his labors on this book, pretended to be acting for the State, or the plaintiffs. Being a private citizen, in fact, before he began, he distinctly announced that he should not prepare the work for the State or the plaintiffs, but should do it in his private character, and would sell it as his own property. After he began, he employed the stereotype printer on his private account. Still later, he invited proposals to buy the work as his own, and, among others, invited the plaintiffs; and finally he sold it as his own, thus maintaining from the beginning to the end an open consistency of conduct, a course of conduct at the time called in question by no one, not even the plaintiffs, who now seek to appropriate the result of his labors as their property.

3. What has been thus far said, it is believed, shows that the plaintiffs, in the most favorable views which can be taken of their case, have no such title as will sustain their bill, nor indeed any title at all, whatever may be said of the defendants, their position, and that of their vendor, Mr. Comstock. We shall now speak of them and of him, especially of his position and relations to the subject, placing the facts and circumstances of the case in the light in which we regard them, and demonstrating, if we can, that, upon every principle of law and justice, the copyright of the book in question is with the defendants.

4. The complainants are equitably estopped from claiming the relief asked for in their bill.

Mr. Justice McLEAN delivered the opinion of the court.