American Press Ass'n v. Daily Story Pub. Co.

• Decision Date: 31 October 1902
• Docket Number: 864.
• Citation: 120 F. 766
• Parties: AMERICAN PRESS ASS'N v. DAILY STORY PUB. CO. [1]
• Court: U.S. Court of Appeals — Seventh Circuit

120 F. 766

AMERICAN PRESS ASS'N v. DAILY STORY PUB. CO. ^[1]

No. 864.

United States Court of Appeals, Seventh Circuit.

October 31, 1902

Grosscup Circuit Judge, dissenting.

Louis C. Ehle, for appellant.

Jacob Newman, for appellee.

The American Press Association, a citizen of the state of New York, is engaged in the business of securing original and selected matter for publication, which it prepares in the form of electrotype plates, and leases for publication to its subscribers for an agreed consideration. The matter thus distributed is sometimes copyrighted matter, and sometimes not; the former being published with the requisite copyright notice, and the latter credited to the source from which it is obtained. The appellee, the Daily Story Publishing Company, a citizen of the state of Illinois, is engaged in supplying newspapers and periodicals throughout the United States with short, copyrighted stories, under a form of contract which gives to such newspapers the exclusive right to publish the stories furnished, within a limited territory but upon the express condition that they shall, at the time of such publication, print with each story a full copyright notice, as required by the copyright laws of the United States. January 8, 1900, the St. Louis Globe-Democrat, a patron of appellee, published a copyrighted story, entitled 'And After'; omitting, through mere inadvertence, any notice that the same was copyrighted. Soon after, the story thus published was appropriated by the appellant and distributed to its patrons by means of its customary plates proper credit being given to the Globe-Democrat for the story. As a matter of fact, the story belonged to the appellee, and had by it been copyrighted and furnished to the Globe-Democrat under a contract giving that paper the exclusive right to publish the story within the territory covered by the city of St. Louis, upon the express condition that that paper should and would print with the story, in compliance with the statutes of the United States, the copyright notice, as follows: 'Copyrighted 1899 by Daily Story Publishing Company;' and the St. Louis Globe-Democrat expressly agreed so to do. The Daily Story Publishing Company sold to other newspapers the exclusive right of publication of the story in their respective territories; being other than the territory granted to the St. Louis Globe-Democrat, and under like contract and condition as that with the St. Louis Globe-Democrat. The appellant had no knowledge that the story had been copyrighted. Both associations acted in good faith; the Daily Story Publishing Company believing that the Globe-Democrat had protected its copyright, and the American Press Association believing that the story was not copyrighted. Upon learning that newspapers were publishing the story without license, the appellee presented to the various papers publishing the story bills for damages, threatening suit for their recovery. The appellant promptly informed the appellee of the manner in which the story was obtained, and assumed responsibility for its use by its patrons, and announced that the publication would be immediately discontinued, which was done. The appellant filed its bill in the Circuit Court to restrain appellee from collecting in any manner from its patrons any damages or compensation, or from instituting any suit therefor; insisting that the appellee had lost its right of copyright by such publication by the St. Louis Globe-Democrat. Upon hearing, a decree was entered dismissing the bill for want of equity, from which decree this appeal is taken.

Before JENKINS, GROSSCUP, and BAKER, Circuit Judges.

JENKINS Circuit Judge.

It is doubtful if this bill can be sustained under any head of equitable jurisdiction. It might be entertained to prevent a multiplicity of suits, if any legal duty is imposed upon the appellant to protect its customers from the demands of the appellee. It is questionable if any such duty is averred or exists. Wolfe v. Burke, 56 N.Y. 115.

The copyright of the appellee was property, of which it could not be legally deprived without its consent. Title to copyright is no more lost by the theft of the manuscript, or piratical publication of it, than is one's title to a horse lost by the stealing of it, or by the unlawful sale of it to a stranger. Indeed, the statute with scrupulous care has sought to protect the owner from unauthorized use of the subject of the copyright. It has hedged about the publication of a copyrighted article by a stranger with restrictions seldom applied to other kinds of property. It forbids the printing publication, or importing, selling or exposing for sale, of a copyrighted book, without the consent of the proprietor of the copyright first obtained in writing, signed in the presence of two or more witnesses (Rev. St. Sec. 5964 (U. S. Comp. St. p. 3413)), and forbids the printing or publication of any manuscript whatever, without the consent of the author or proprietor first obtained (Rev. St. Sec. 4967 (U. S. Comp. St. p. 3416)). It is clear, therefore, as Mr. Drone observes, that 'when piracy is charged two defenses are open to the alleged wrongdoer: He may show either that he is the author or the assignee (that is, the owner) of the copyright, or that he has a license in writing from the owner to publish. ' Drone on Copyright, 305. So the question arises whether the publication by the appellant was in any sense with the consent of the appellee; and that in turn depends upon the question whether the St. Louis Globe-Democrat, wrongfully publishing the story without notice of copyright attached, was, in so doing, the agent of the appellee or its licensee. If the former, the appellant is justified; and, if the latter, it is without justification. 'The distinction between an assignment and a license in that by the former the ownership of the copyright is vested in the assignee, while by the latter the licensee acquires the privilege of publishing, but no proprietary rights in the copyright. ' Drone on Copyright, 305. The contract between the St. Louis Globe-Democrat the the appellee gave to the former the exclusive right to publish the copyrighted story in its newspaper within the city of St. Louis. This right was upon the express condition that the St. Louis Globe-Democrat should print with the story the usual copyright notice. This did not constitute the Globe-Democrat the agent of the appellee, but it conferred a license, and the wrongful act of omitting the publication of the copyright should not, we think, be visited upon the appellee. In Saxlehner v. Eisner & Mendelsohn, 179 U.S. 19, 21 Sup.Ct. 7, 45 L.Ed. 60, Saxlehner contracted with the Apollinaris Company, Limited, of London, to sell them a certain quantity yearly of Hunyadi Janos water in Great Britain and other countries, and agreed not to fill any orders coming from the territory granted to the company, but to make them over to the company. It was contended that the conduct of the Apollinaris Company was such as to show an abandonment of the name and label, and that Saxlehner was estopped by their act in further asserting title to them. The court, speaking by Mr. Justice Brown, observed at page 33, 179 U.S., and page 13, 21 Sup.Ct., 45 L.Ed. 60: 'This defense presupposes that the Apollinaris Company had power to bind Saxlehner by its admission and contract. Certainly the contract gave it no such power in express terms. Saxlehner did not purport to make the company his agent. He agreed to sell the company a certain number of cases of his water at a certain price, and also agreed to sell to no one else during the...