Hills Company v. Joseph Hoover

• Decision Date: 03 April 1911
• Docket Number: No. 101,101
• Citation: 220 U.S. 329,31 S.Ct. 402,55 L.Ed. 485
• Parties: HILLS & COMPANY, Limited, v. JOSEPH HOOVER et al
• Court: U.S. Supreme Court

220 U.S. 329

31 S.Ct. 402

55 L.Ed. 485

HILLS & COMPANY, Limited,

v JOSEPH HOOVER et al.

No. 101.

Argued March 15 and 16, 1911.

Decided April 3, 1911.

Messrs. Hector T. Fenton and Benno Loewy for Hills & Company.

Mr. William A. Carr for Hoover et al.

Mr. Justice Day delivered the opinion of the court:

This case comes here upon certificate from the circuit court of appeals for the third circuit. Hills & Company, Limited, a corporation of Great Britain, brought an action of assumpsit for its own use and that of the United States against Joseph and Henry L. Hoover, citizens of Pennsylvania, partners as Joseph Hoover & Son, to recover under § 4965 of the Revised Statutes of the United States (U. S. Comp. Stat. 1901, p. 3414) for a forfeiture of money to the amount of $4,763, alleged to be due the plaintiff as the owner of the copyright of certain engravings, 4,763 of which were found in the defendant's possession, which, at the statutory sum of $1 each, make up the amount sued for.

In the circuit court a verdict for that amount was rendered for the plaintiff, subject to the reserved question whether there was any evidence to go to the jury in support of the plaintiff's claim. Upon this question the circuit court subsequently entered judgment in favor of the defendants, and the plaintiff took the case to the circuit court of appeals.

The certificate states the following facts:

'The plaintiff owned copyrights of certain engravings which the defendants wrongfully reproduced, sold some of the reproduced copies, and on December 10, 1902, still had a number thereof remaining in their possession when the plaintiff's agent went to the defendants' printing establishment with a deputy marshal who was serving a writ of replevin the plaintiff had had issued in the circuit court against the defendants for infringing copies. The agent there found in the possession of the defendants forty-seven hundred and sixty-three infringing copies. These the deputy marshall then and there took and delivered to the plaintiff's agent, who still retains them. Subsequently, on June 18, 1903, the plaintiff brought the present action of assumpsit against the defendant infringers fringers to recover the $1 forfeit to the plaintiff or each of the forty-seven hundred and sixty-three in- fringing sheets of the copyrighted engravings which, on December 10, 1902, its agent had found in and taken from the defendants' possession. To this action the defendants appeared and pleaded nonassumpsit, and in it a verdict was had for the plaintiff, as above noted. The action of replevin was no further proceeded in.'

The questions propounded by the circuit court of appeals under the act of March 3, 1891 [26 Stat. at L. 826, chap. 517, U. S. Comp. Stat. 1901, p. 488], are as follows:

'1. In a circuit court of the United States within the state of Pennsylvania is the owner of a copyright for engravings restricted to a single action to find and seize the copies alleged to infringe and likewise to recover the money penalty therefor?

2. In a circuit court of the United States within the state of Pennsylvania does the institution by the owner of a copyright for engravings of an action of replevin for recovery of the copies alleged to infringe, not prosecuted to judgment, preclude such copyright owner from subsequently bringing and maintaining an action of assumpsit to recover the pecuniary penalty for the copies found and seized under the writ of replevin?'

As a question of this character must be answered in reference to the actual case (Columbus Watch Co. v. Robbins, 148 U. S. 266, 37 L. ed. 445, 13 Sup. Ct. Rep. 594), the second question must be answered in view of the facts stated, having in mind that the copies had been seized in the replevin suit and delivered to the plaintiff's agent.

An answer to these questions requires the construction of § 4965 of the Revised Statutes of the United States. That section declares that any person offending against its provisions 'shall forfeit to the proprietor all the plates on which the same shall be copied and every sheet thereof, either copied or printed, and shall further forfeit one dollar for every sheet of the same found in his possession, either printing, printed, copied, published, imported, or exposed for sale, . . . one half thereof to the proprietor and the other half to the use of the United States.'

This section has been, in varying forms, a part of the copyright law of the United States for many years prior to the enactment, since this suit, of the present law of July, 1909, which has superseded former statutes upon the subject of copyright. It has been the subject of frequent and not always harmonious construction in the Federal courts. See Bolles v. Outing Co. 175 U. S. 262, 267, 44 L. ed. 156, 158, 20 Sup. Ct. Rep. 94.

It was before this court in the case of Thornton v. Schreiber, 124 U. S. 612, 31 L. ed. 577, 8 Sup. Ct. Rep. 618. In that case an action was brought by Schreiber against Thornton to recover the penalties for the unlawful reproduction of a certain copyrighted photograph. The infringing copies were found in the store of Sharpless & Sons in Philadelphia, where they were being used as labels on parcels of goods. Thornton was a manager in the employ of Sharpless & Sons, and had ordered 1,500 of the photographs, which were delivered to the firm, who paid for them. It was held that Thornton was not liable, as he had not the possession of the infringing prints within the meaning of the act, and that the proper parties defendant, against whom an action of replevin might have been sustained, was the firm of Sharpless & Sons, and not their agent. All that was necessary for the decision of the case was the holding that the prints were not found in the possession of Thornton within the meaning of the act. In the course of the opinion Mr. Justice Miller said:

'Counsel for defendants in error, Schreiber & Sons, insist that the words 'found in his possession' are to be construed as referring to the finding of the jury; that the expression means simply that where the sheets are ascertained by the finding of the jury to have been at any time in the possession of the person who committed the wrongful act, such person shall forfeit $1 for each sheet so ascertained to have been in his possession. We, how- ever, think that the word 'found' means that there must be a time before the cause of action accrues at which they are found in the possession of the defendant.'

The question whether more than one suit could be maintained under § 4965, or whether it was necessary to find the infringing sheets by means of some action or process before beginning an action for the penalty, was not before the court in that case, and was in no way decided. The expression of Mr. Justice Miller, that the word 'found' meant that there must be a time before the cause of action accrues at which the infringing matter is found in the possession of the defendant, has been differently interpreted in the courts of the United States.

In Falk v. Curtis Pub. Co. 46 C. C. A. 201, 107 Fed. 126, Thornton v. Schreiber was interpreted to mean that before the action for the penalty would lie there must be a finding of articles in the possession of the defendant by means of a proceeding instituted for the express purpose of seizure, and that consequently an action of assumpsit, brought prior to the seizure, as an independent proceeding, was premature, and could not be maintained.

In Bolles v. Outing Co. 46 L.R.A. 712, 23 C. C. A. 594, 45 U. S. App. 449, 77 Fed. 966, the case of Thornton v. Schreiber was held to mean only that the infringing articles must be found in the possession of the defendant before the penalty could be imposed, and that the section contemplated a single suit to enforce both remedies,—the money recovery and the forfeiture of the offending sheets, etc. That case was a suit by Bolles against the Outing Company, seeking to recover not only the penalty for one copy of Outing which was found in the defendant's possession, but also for all the copies which had been within the defendant's possession within any time two years previous to the commencement of the suit. The circuit court limited the recovery to $1 as penalty for the copy purchased by an agent of the plaintiff from the company, and the court refused to permit recovery for the copies printed and delivered to the Outing Company within two years of the commencement of the suit, but not found in the defendant's possession. The case came here, and...