Black v. Henry G. Allen Co.

• Decision Date: 26 June 1890
• Citation: 42 F. 618
• Parties: BLACK et al. v. HENRY G. ALLEN CO., (NO. 4,718.) SAME v. SAME, (NO. 4,750.) SCRIBNER et al. v. SAME, (NO. 4,719.)
• Court: U.S. District Court — Southern District of New York

42 F. 618

BLACK et al. v. HENRY G. ALLEN CO., (NO. 4,718.) SAME v. SAME, (NO. 4,750.) SCRIBNER et al. v. SAME, (NO. 4,719.)

United States Circuit Court, S.D. New York.

June 26, 1890

Rowland Cox, for plaintiffs.

James A. Whitney, for defendants.

SHIPMAN J.

These are demurrers to the respective bills in equity for injunctions against alleged infringements of copyrights.

The important facts which are alleged in No. 4,718 are as follows: Four of the plaintiffs are members of the firm of Adam & Charles Black, of Edinburgh, Scotland; are aliens, and subjects of the queen of Great Britain. The fifth and remaining plaintiff is Francis A. Walker, a citizen of the state of Massachusetts and of the United States. The said firm, whose members I shall hereafter call the Messrs. Black for the sake of brevity, are the publishers of the well-known work entitled 'The Encyclopedia Britannica, Ninth Edition,' which is made up of articles or books, each of which is, in a large number of instances, an independent book or treatise. Three of the articles contained in the twenty-third volume of the encyclopaedia, hereinafter referred to, have been copyrighted in the United States. One of these articles, entitled: 'United States. Part III political geography and statistics,'-- was written by said Walker, who secured a copyright thereof, according to the provisions of the statutes of the United States, for the term of 28 years from February 13, 1888. In the several copies of every edition published the following words were inserted on the title page: 'Copyright, 1888, by Francis A. Walker. ' On or about April 1, 1888, said Walker assigned and transferred to the Messrs. Black an interest in said copyright; 'that is to say, the said Walker did assign and transfer to your orators, constituting the firm of Adam & Charles Black, the sole and exclusive right and liberty of printing, reprinting, publishing, copying, and vending, during the whole term of the said copyright, the said book, entitled: 'United States. Part III. Political Geography and Statistics,'-- in connection with, and as a part of, their said twenty-third volume of their said encyclopaedia, designated 'Encyclopaedia Britannica Ninth Edition,' and not otherwise; the said Walker retaining the right to print, publish, copy, and vend the said copyrighted book in every form and manner other than as a part of said Encyclopaedia Britannica. ' The bill alleges that if said Walker did not, by said agreement, assign to the Messrs. Black an interest in said copyright, the said agreement was an exclusive and irrevocable license to them to print and sell, during the term of the copyright, the said book or article in connection with, and as a part of, said twenty-third volume. The copyrighted book was printed and sold in connection with, and as a part of, said volume. The whole of the copyright, except the right to use the subject thereof in the encyclopaedia, has always remained in said Walker. The defendant has printed and sold, without the consent of the plaintiffs, said copyrighted article, in and as a part of its reprint of said encyclopaedia, except that it has omitted the copyright notice upon the title-page, and threatens to continue to print and sell the same as part of its twenty-third volume. The bill alleges that the acts of the defendant are a great and continuing injury to each of the plaintiffs, and prays for an injunction, and an account of the profits arising to the defendant from the sale of said volume.

In No. 4,750, the Messrs. Black and John McAlan, a citizen of the state of New York, and administrator of the estate of the late Alexander Johnston, who was, when in life, a citizen of the state of New Jersey and of the United States, are plaintiffs. Mr. McAlan was appointed administrator by the surrogate for the county of Mercer, in the state of New Jersey. Prof. Johnston was the author of a book entitled: 'United States. Part I. History and Constitution,'-- and secured a copyright of the same according to the provisions of the statutes of the United States relating to copyrights. The other facts which have been stated in regard to the assignment of Walker's copyright, his title, and the acts of the defendant, exist in regard to Prof. Johnston; and the two bills are substantially like each other, mutatis mutandis. The difference between the cases is that in No. 4,750 a foreign administrator is the plaintiff.

The case stated in No. 4,719 is as follows: The two plaintiffs are citizens of the state of New York, and partners by the name of Charles Scribner's Sons. Two other persons, Hewes and Gannett, both citizens of the United States, were the authors of a book entitled 'Scribner's Statistical Atlas of the United States,' and, before depositing a printed title thereof with the librarian of congress, and before publication, assigned and transferred to the plaintiffs all their right in said book, and the right to copyright it; and the plaintiffs became the proprietors of said book. The plaintiffs printed and published the book, and on December 29, 1883, secured a copyright thereof in accordance with the provisions of the Revised Statutes, and gave notice of such copyright by inserting on the page following the title-page, in the several copies of every edition, the words, 'Copyright 1883, by Charles Scribner's Sons. ' Afterwards the plaintiffs printed and published, and licensed others to print and publish, certain maps and charts which constituted a part of said book, but gave notice of the copyright by causing to be inscribed upon the face of each copy of every map or chart thus printed by themselves or others the words, 'Copyright, 1883, by Charles Scribner's Sons. ' The defendant, since May 1, 1889, and without the plaintiffs' consent, published and sold a volume entitled the 'Encyclopaedia Britannica, Ninth Edition. Popular Reprint. Vol. 23,'-- in which it printed eight maps which were copied from said copyrighted book. The bill prays for an injunction against selling copies of the book which shall contain in part said infringing maps, and for an accounting of profits.

The cause of demurrer in the two Black cases, which goes to the substance of the bills, is that they show no substantial right or equity in or on behalf of the plaintiffs, and that the acts of the defendant are not contrary to law. The point is this: Does the fact that the proprietor of a book copyrighted in this country has permitted an alien publisher of an encyclopaedia to publish his book as a part of such encyclopaedia enable another person, without other authority, to publish in this country the copyrighted article as a part of his reprint of such encyclopaedia, the remainder of which is publici juris? It will not, probably, be seriously denied that a citizen of the United States who is the owner of a copyright can assign the whole of such copyright to a foreigner. 'A non-resident foreigner is not within our copyright law, but he may take and hold by assignment a copyright granted to one of our own citizens. ' Carte v. Evans, 27 F. 861. It is, however, contended that, while a copyright may be assigned as a whole by a written instrument, it cannot be subdivided, but is an entire thing, indivisible, and incapable of apportionment. The statute simply provides that the copyrights are assignable at law by an instrument in writing, and, obviously, the whole or an undivided part thereof may be assigned so that the copyright may become 'the undivided property of joint owners. ' Drone, Copyr. 334. To what greater extent copyrights may be subdivided at law the statute does not declare, and in this case it is not necessary to inquire. Under section 4964, a license in writing, by instrument duly witnessed, may be given by the proprietor to any other person to the extent described in such license; and there is no restriction upon the power of the proprietor to assign or transfer, in equity, an exclusive right to use the copyrighted book in a particular manner or for particular purposes upon such terms and conditions as may be agreed upon. In such case the legal title remains in the proprietor; and a beneficial interest, to the extent which is agreed upon, vests in the other party, who has acquired an equitable right in the copyright, and who will be properly styled an 'assignee of an equitable interest.' Curt. Copyr. 225. In these two cases, as the Messrs. Black and the proprietors of the legal title are all made parties, and properly so, whether the Blacks are licensees, or are owners of an equitable interest in the copyrights, (Goodyear v. Railroad Co., 1 Fish.Pat.Cas. 626; Goodyear v. Allyn, 3 Fish.Pat.Cas. 374,) I do not conceive it necessary to determine at this time by what name the publishers' interest in the copyright may be the more properly called.

The question is reduced to this: Does the fact that the copyrighted books were inserted by permission in an encyclopaedia, as a part thereof, permit an unauthorized use of them in a reprint of such work? If a poem or an essay for which a copyright had been secured in this country by the author, a citizen of the United States, should be permitted to be inserted in a volume of poems or essays, a part of which was publici juris, it could not reasonably be claimed that the author had thereby abandoned his copyright, and that his book could be reprinted, by itself, without his consent in this country. It cannot be contended that the defendant would have a right to reprint Walker's or Johnston's treatises in separate volumes without the consent of the respective proprietors. Can, then, the poem or essay be printed, without the consent of the author, as a part of an unauthorized reprint of the entire volume? The defendant takes the affirmative in these cases...