Bentley v. Tibbals

• Decision Date: 09 March 1915
• Docket Number: 186.
• Citation: 223 F. 247
• Parties: BENTLEY v. TIBBALS.
• Court: U.S. Court of Appeals — Second Circuit

223 F. 247

BENTLEY v. TIBBALS.

No. 186.

United States Court of Appeals, Second Circuit.

March 9, 1915

George H. Gilman, of New York City, for appellant.

Henry M. Wise, of New York City, for appellee.

Before LACOMBE, COXE, and ROGERS, Circuit Judges.

ROGERS Circuit Judge.

The bill of complaint is filed by an alien and subject of the king of Great Britain. The complainant resides and has his principal place of business in London, England. The defendant is a citizen of the United States, residing in the city of New York, state of New York, and does business under the name of the American Code Company. Complainant alleges that he secured in 1906 a copyright under the laws of the United States for a book entitled 'Bentley's Telegraph Cyphers,' and that he is the sole and exclusive owner of the copyright in that work. He states that the defendant without his license, and against his will, and in violation of his rights, and in infringement of his copyright, has unlawfully, wrongfully, and injuriously printed, published and sold books containing telegraph cyphers which are exact fac simile copies of complainant's cyphers as contained in the copyrighted book. He seeks an injunction, an accounting of the profits, and damages.

The English House of Lords, in Donaldson v. Becket, 4 Burr. 2408 (1774), decided that the exclusive right of multiplying and vending copies of an intellectual work is of purely statutory origin. And the Supreme Court of the United States rendered a similar decision in Wheaton v. Peters 8 Pet. 591, 8 L.Ed. 1055 (1834). The earliest statute on the subject was passed in England in 1710. St. 8 Anne, c. 19. Connecticut passed a copyright act in 1783, which was entitled 'An act for the encouragement of literature and genius. ' It recited in its preamble that:

'It is perfectly agreeable to the Principles of Natural Equity and Justice that every Author should be secured in receiving the Profits that may arise from the Sale of His works, and such Security may encourage Men of Learning and Genius to publish their Writings; which may do Honor to their Country and Service to Mankind. ' Acts and Laws of Conn. Jan. Sess. 1783.

By that act copyrights were to be granted for 14 years, with the benefit of a second term of the same length. The act was passed in January and Massachusetts passed a like act in March and New Jersey in May of the same year. St. 1782, c. 58. Virginia followed in 1785 (12 Henning's St. at Large, p. 30), and New York in 1786 (Laws 1786, c. 54). These acts were all passed prior to the adoption of the Constitution of the United States. But Congress, in the exercise of the power conferred upon it by the Constitution 'to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,' passed the first federal statute on the subject on May 31, 1790. 1 Stat.p. 124, c. 15.

The act of 1790 granted copyright to such author only as may be 'a citizen of the United States or resident therein,' and this continued to be the policy of Congress in the subsequent acts passed upon the subject until 1891. Prior to that time, and beginning as early as 1837, Congress was asked many times to grant protection to foreign authors and it repeatedly refused to do so. In this respect the United States pursued for years a policy less liberal than Great Britain and other foreign nations.

By the act of Congress of March 3, 1891, the provisions of the copyright laws of the United States were extended to citizens and subjects of a foreign state or nation only when such state or nation permits to citizens of the United States of America the benefit of copyright on substantially the same basis as to its own citizens, or when such foreign state or nation is a party to an international agreement which provides for reciprocity in the granting of copyright, by the terms of which agreement the United States of America may at its pleasure become a party to such agreement. 26 Stat.p. 1106, c. 565. And the President of the United States, acting under the provisions of the act, issued a proclamation on July 1, 1891, in which he declared that, as citizens of the United States had the benefit of copyright in Great Britain on substantially the same basis as the subjects of that country, those subjects were entitled to the benefits given under the Copyright Act of Congress of 1891. 27 Stat.pp. 981, 982. And under the Copyright Act of 1909 the subjects of Great Britain are still entitled to the benefit of the privileges of copyright in the United States.

The act in section 8 declares that the author of any work made the subject of copyright by the act shall have copyright for such work under the conditions and for the terms specified in the act:

'Provided, however, that the copyright secured by this act shall extend to the work of an author or proprietor who is a citizen or subject of a foreign state or nation, only:

'(a) When an alien author or proprietor shall be domiciled within the United States at the time of the first publication of his work; or

'(b) When the foreign state or nation of which such author or proprietor is a citizen or subject grants, either by treaty, convention, agreement or law, to citizens of the United States the benefit of copyright on substantially the same basis as to its own citizens, or copyright protection substantially equal to the protection secured to such foreign author under this act or by treaty; or when such foreign state or nation is a party to an international agreement which provides for reciprocity in the granting of copyright, by the terms of

which agreement the United States may, at its pleasure, become a party thereto.

'The existence of the reciprocal conditions aforesaid shall be determined by the President of the United States, by proclamation made from time to time, as the purposes of this act may require. ' Act March 4, 1909, c. 320, 35 Stat. 1077 (Comp. St. 1913, Sec. 9524).

In accordance with the provisions of the act the President of the United States on April 9, 1910, issued his proclamation declaring that under the conditions of the act the subjects of Great Britain were entitled to the benefits of the act. 36 Stat.pt. 2, p. 2685.

The complainant alleges in his bill that at the time he took out his copyright in the United States and subsequent thereto the kingdom of Great Britain and Ireland-- 'grants by treaty, convention, agreement, and law to citizens of the United States the benefit of copyright on substantially the same basis as to its subjects, and copyright protection substantially equal to the protection secured to plaintiff under the provisions of the laws of the United States relating to copyrights.'

The defendant does not deny the complainant's right to take out his copyright, or that he failed in doing so to comply in all respects with the requirements of the statute. It appears, however, that complainant, after having secured his copyright in the United States of 'Bentley's Telegraph Cyphers,' published in London in 1907 a larger book entitled 'Bentley's Complete Phrase Code,' which contained a substantial amount of the 'Cyphers,' together with additional matter, and secured for that work a British copyright, on the title page of which appeared the following statement:

'This Code includes the Telegraph Cyphers entered according to act of Congress in the year 1906, by E. I. Bentley in the office of the Librarian of Congress at Washington, D.C. All rights reserved. Entered at Stationer's Hall.'

Copies of this work, both prior to and subsequent to 1910, he sold, not only throughout the United Kingdom, but in the United States and other foreign countries; and it is claimed that 'Bentley's Complete Phrase Code' has acquired a recognized and enviable reputation both in England and the United States for reliability, usefulness, and economy in telegraphing or cabling. And it further appears that defendant is selling in the city of New York a book of the same size and color of binding as the complainant's work, and on the cover of which he has placed the words 'Bentley's Complete Phrase Code' in gilt letters of the same size as are used in the English publication, and that it contains an exact and complete phrase code published by plaintiff, as to subject-matter, preface, specimens, and title page, with certain unimportant exceptions. It is this work which it is claimed infringes the copyright which complainant secured in this country in 1906 upon 'Bentley's Telegraph Cyphers'; the essential features of the 'Cyphers' being embodied in the work.

The defendant bases his defense upon the fact that complainant had never taken out a copyright in this country of 'Bentley's Complete Phrase Code,' and that complainant lost his United States copyright in the 'Cyphers,' so far as he had published them in 'Bentley's Complete Phrase Code.' In other words, his claim is that he had a perfect right to copy an uncopyrighted book, and that complainant, by importing into this country 'Bntley's Complete Phrase Code' and by selling it here, lost his right to be protected in this country on anything which it contained; that the publication of parts of a copyrighted book as parts of an uncopyrighted book involves an abandonment of the copyright.

The act of Congress provides that, during the existence of the American copyright in any book, the importation into the United States of any copies thereof, although authorized by the author or proprietor, is prohibited unless they have been printed from type set within the limits of the United States or if the text be produced by lithographic process or photo-engraving process that has been wholly performed within...