Westermann Co v. Dispatch Printing Co

• Decision Date: 03 March 1919
• Docket Number: No. 50,50
• Citation: 63 L.Ed. 499,39 S.Ct. 194,249 U.S. 100
• Parties: L. A. WESTERMANN CO. v. DISPATCH PRINTING CO
• Court: U.S. Supreme Court

249 U.S. 100

39 S.Ct. 194

63 L.Ed. 499

L. A. WESTERMANN CO.

v DISPATCH PRINTING CO.

No. 50.

Submitted Nov. 15, 1918.

Decided March 3, 1919.

Mr. Curtis C. Williams, of Columbus, Ohio, for petitioner.

Messrs. Smith W. Bennett, of Columbus, Ohio, and Luther Day, of Cleveland, Ohio, for respondent.

[Argument of Counsel from page 101-102 intentionally omitted] Mr. Justice VAN DEVANTER delivered the opinion of the Court.

This was a bill for an injunction against future infringement of certain copyrights and to recover damages for past infringement. The injunction was granted and in this both parties acquiesced. In addition, the District Court found that there were seven cases of infringement and awarded $10 as nominal damages for each case—$70 in all. The plaintiff appealed, insisting that for each case it was entitled under the copyright law to an award of not less than $250. The Circuit Court of Appeals sustained that contention, but held that what the District Court regarded as seven cases was only one, and directed that the decree be modified by awarding $250, instead of $70, as damages. 233 Fed. 609, 147 C. C. A. 417. A writ of certiorari granted on the plaintiff's petition brings the matter here.

Whether there were seven cases of infringement or only one, and whether the damages should have been assessed at not less than $250 for each case, are the questions to be considered. The facts bearing on the solution of these questions are as follows:

The plaintiff designs and produces pictorial illustrations of styles in women's apparel and supplies the same to dealers in such apparel for use in advertising their goods. All the illustrations are separately copyrighted and all authorized copies carry the required copyright notice. The plaintiff grants exclusive licenses to use the illustrations for limited periods, each license being restricted to a particular locality. The dealer obtaining the license pays a fixed charge for it. Ordinarily the fact that the license is exclusive makes it attractive, serves as an incentive for paying the charge and is a helpful feature of the plaintiff's business. But when infringers use the illustrations the strength of that feature diminishes and the plaintiff's business suffers accordingly.

At the time of the infringing acts in question the Moorehouse-Martens Company, a dealer at Columbus, Ohio, had an exclusive license from the plaintiff covering the use of the illustrations in that locality.

The defendant publishes at Columbus a daily newspaper, each issue comprising as many as 30,000 copies widely circulated. Without the consent or authority of the plaintiff or its licensee the defendant reproduced and published in its newspaper six of the plaintiff's copyrighted illustrations. They were published separately, each in a distinct issue and in all the copies. Five were published once and the other one twice, the illustrations being used in each instance as part of an advertisement by some competitor in trade of the plaintiff's licensee. These two advertisements having the same illustration were by different advertisers and were separated by an interval of 26 days.

The record, while showing that the plaintiff was damaged by the infringing publications, does not show the amount of the damages, a matter which is explained by undisputed testimony to the effect that the damages could not be estimated or stated 'in dollars and cents, or in money.' On this point the Circuit Court of Appeals aptly said:

'The plaintiff's damages rested in the injury to his Moorehouse contract, and in the discouragement of and the tendency to destroy his system of business. To make any accurate proof of actual damages was obviously impossible.'

Whether the defendant made any profit from the publications does not appear. In its bill the plaintiff asked for what are termed statutory damages in lieu of actual damages and profits.

The copyright statute, Act March 4, 1909, c. 320, 35 Stat. 1075 (Comp. St. §§ 9517-9524, 9530-9584), gives to one who copyrights a pictorial illustration the exclusive right to print, reprint, publish, copy and vend the same (sections 1 and 5), and provides (section 25¹) that one who infringes 'the copyright in any work' so protected shall be liable, among other things——

'(b) To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement, * * * or in lieu of actual damages and profits such damages as to the court shall appear to be just, and in assessing such damages the court may, in its discretion, allow the amounts as hereinafter stated, but in the case of a newspaper reproduction of a copyrighted photograph such damages shall not exceed the sum of two hundred dollars nor be less than the sum of fifty dollars, * * * and such damages shall in no other case exceed the sum of five thousand dollars nor be less than the sum of two hundred and fifty dollars, and shall not be regarded as a penalty. * * *

'First. In the case of a painting, statue, or sculpture, ten dollars, for every infringing copy made or sold by or found in the possession of the infringer or his agents or employes;

'Second. In the case of any work enumerated in section five of this act² except a painting, statute, or sculp ture one dollar for every infringing copy made or sold by or found in the possession of the infringer or his agents or employees;

'Third. In the case of a lecture, sermon, or address, fifty dollars for every infringing delivery;

'Fourth. In the case of a dramatic or dramatico-musical or choral or orchestral composition, one hundred dollars for the first and fifty dollars for every subsequent infringing performance; in the case of other musical compositions, ten dollars for every infringing performance.'

The statute says that the liability thus defined is imposed for infringing 'the copyright in any' copyrighted 'work.' The words are in the singular, not the plural. Each copyright is treated as a distinct entity, and the infringement of it as a distinct wrong to be redressed through the enforcement of this liability. Infringement of several copyrights is not put on the same level with infringement of one. One the contrary, the plain import of the statute is that this liability attaches in respect of each copyright that is infringed. Here six were infringed, each covering a different illustration. Thus there were at least six cases of infringment in the sense of the statute. Was there also another? The illustration covered by one of the copyrights was published on two separate occasions, each time in a different advertisement. There was no connection between the two advertisements other than the inclusion of the same illustration in both. Each was by a different advertiser and was published at his instance and for his benefit. The advertisers were not joint, but independent, infringers, neither having any connection with what was done by the other. By publishing their advertisements, the defendant participated in their independent infringements. In these circumstances, we...