Dam v. Kirk La Shelle Co.

• Decision Date: 11 January 1910
• Docket Number: 70.
• Parties: DAM v. KIRK LA SHELLE CO.
• Court: U.S. Court of Appeals — Second Circuit

175 F. 902

DAM v. KIRK LA SHELLE CO.

No. 70.

United States Court of Appeals, Second Circuit.

January 11, 1910

This was a suit in equity brought in February, 1906, by Henry J W. Dam to restrain an alleged infringement of a copyright. The original complainant died in April, 1906, and the suit was subsequently revived in the name of the administratrix of his estate, the present complainant. The Circuit Court held that the defendant had infringed the copyright in question and rendered a decree for an injunction and an accounting. The defendant has appealed.

The following are material facts:

During the year 1898 said Dam, who was an author and dramatist wrote a story entitled 'The Transmogrification of Dan.' In 1901 Dam sent the manuscript of this story to the Ess Ess Publishing Company, a New York corporation and the proprietor and publisher of a monthly magazine called the Smart Set. The editors of the magazine accepted the story and fixed the price to be therefor at $85. The business office of the publishing company then sent a check to Dam for that amount with a receipt for his signature, which was duly signed and returned. The receipt reads as follows: 'July 12th, 1901. Received of Ess Ess Publishing Company $85, in full payment for story entitled 'The Transmogrification of Dan.' H. J. W. dam. ' Dam had no personal interview with any of the officers or employes of the publishing company, and the entire transaction with respect to the acquisition of the story is described in the foregoing statement.

The story was published in the number of the Smart Set for September, 1901. This number as a whole was duly copyrighted in the name of the Ess Ess Publishing Company and bore a notice in the front part thereof, 'Copyright 1901 by Ess Ess Publishing Company. ' The magazine contained no other notice of copyright, and no steps were taken either by the publishing company or by Dam to copyright the story separately. On October 27, 1905, the Ess Ess Publishing Company, without any monetary consideration, assigned to said Dam its copyright of said number of the Smart Set magazine so far as it applied to, covered, or protected said story, all its interest in said story under said copyright, and its claims and demands then existing for the infringement of said copyright.

The defendant is a New York corporation engaged in the general theatrical business. At various times between September 4 1905, and the commencement of this suit the defendant caused a play entitled 'The Heir to the Hoorah' to be publicly performed in various theatres in the United States. This play was written and copyrighted by Paul Armstrong, a dramatist, and was presented by the defendant through an arrangement with him. On November 15, 1905, said Dam, by his attorney, notified the defendant that said play was an unlawful dramatization of said story and forbade its future production. The defendant, however, continued to produce said play and this suit was brought.

In his original bill of complaint, Dam alleged, in substance, that he assigned to the publishing company the right to publish and print said story as a part of said magazine, and not otherwise, and that the right to dramatize said story was held by the publishing company as trustee for his benefit.

In an affidavit made for the purpose of obtaining a preliminary injunction Dam swore as follows: 'I have not at any time parted with any right or interest in said literary work entitled 'The Transmogrification of Dan' except the right for publication thereof in said number of 'The Smart Set' for September, 1901.'

The amended bill of complaint alleged simply that Dam sold and assigned said story to the Ess Ess Publishing Company.

Stover, Hall & Freeman (John W. Griggs, Martin L. Stover, and George W. Betts, Jr., of counsel), for appellant.

Andrew Gilhooly, for appellee.

Before COXE, WARD, and NOYES, Circuit Judges.

NOYES Circuit Judge (after stating the facts as above).

The first question of law arising upon the foregoing facts is whether the Ess Ess Publishing Company by virtue of its transaction with Dam became the absolute proprietor of the story in question or acquired merely the right to publish it in the Smart Set magazine. If the statement made by Dam in his original bill and his affidavit could be accepted as correctly defining the rights of the parties, the publishing company acquired only a qualified right to the story. But the entire transaction with respect to the acquisition of the story by the publishing company has been stated. Even if Dam's statements as to his interpretation of the transaction were contrary to his later claims or against his interest, they could not change what actually took place nor the legal conclusion to be drawn therefrom. This conclusion must be drawn by the court. No principle of estoppel is present.

Now, as a matter of law, it seems possible to draw only one conclusion from the facts surrounding the acquisition of the story by the Ess Ess Publishing Company, and that is that it became the purchaser, and, consequently, the proprietor, of the work with all the rights accompanying ownership. The author offered the story. The publisher accepted and paid for it, and the author transferred it without any reservations whatever.

While it is probable that an author in assigning the right to publish and vend his work may retain and reserve the rights of translation or dramatization (Ford v. Blaney Amusement Co. (C.C.) 148 F. 642), a sale or assignment without reservation would seem necessarily to carry all the rights incidental to ownership. And a transaction in which an author delivers his manuscript and accepts a sum of money 'in full payment for story' cannot be regarded as a sale with reservations. The courts cannot read words of limitation into a transfer which the parties do not choose to use.

The copyright statute in force at the time of this transaction (Rev. St. Sec. 4952, as amended in 1891 (U.S. Comp. St. 1901, p. 3406)) provided that the 'proprietor of any book * * * shall upon complying with the provisions of this chapter have the sole liberty of * * * publishing * * * and vending the same. ' It further provided that:

'Authors or their assigns shall have the exclusive right to dramatize of translate any of their works for which copyright shall have been obtained under the laws of the United States.' We think it the better view that the Ess Ess Publishing Company by virtue of its transaction with Dam became the absolute proprietor of the story 'The Transmogrification of Dan' and was entitled to the exclusive right to dramatize it.

The next question is whether the publishing company as proprietor of the story duly complied with the statute and obtained a valid copyright protecting the dramatic rights. No question is raised but that the publishing company took all the steps required by the statute to enter for copyright in its own name the number of the Smart Set magazine containing the story under the title of the magazine. It is claimed, however, that such steps accomplished no more than to obtain such protection as the publishing company needed as publishers of the magazine.

Assuming that Dam retained the dramatic rights to the story, there would be much force in this contention. In such a case we doubt very much whether the steps which the publishing company took to copyright its magazine, especially in view of the form of the copyright notice, would have been sufficient to protect the dramatic rights.

It is true that Mifflin v. White, 190 U.S. 260, 263, 23 Sup.Ct. 769, 770, 47 L.Ed. 1040 (decided in 1903), the Supreme Court said that:

'Without further explanation it might perhaps be inferred that the author of a book who places it in the hands of publishers for publication, might be presumed to intend to authorize them to obtain a copyright in their own names.'

And it is said in Drone on Copyright, p. 260:

'A person who is not the author or owner of a work may take out the copyright in his own name, and hold it in trust for the rightful owner. Thus when an article has first been published in a cyclopaedia, magazine, or any other publication, the legal title to the copyright, if taken out in the name of the publishers, will vest in him. But it may be the property of the author, and held in trust for him. And the same is true while the copyright of a book which belongs to the author is entered in the name of the publisher. In such case a court of equity, if called upon, may decree a transfer of the copyright to be made to the owner.'

The difficulty is that the Supreme Court in the Mifflin Case, supra, after holding that in certain cases there may be a presumption of intention to authorize the copyright of a work by the publishers, said that, assuming the existence of such authority, there was an additional question, viz.: Whether the entry of a magazine by its title in the name of its publisher is equivalent to entering a book by its title in the name of its author. And the Supreme Court said:

'The object of the notice being to warn the public against the republication of a certain book by a certain author or proprietor, it is difficult to see how a person reading these notices would understand that they were intended for the protection of the same work. On their face they would seem to be designed for entirely different purposes. While owing to the great reputation of the work and the fame of its author, we might infer in this particular case that no publisher was actually led to believe that the book copyrighted by Dr. Holmes was not the same work which had appeared in the Atlantic Monthly, that would be an unsafe criterion to apply to a work of less celebrity. It might well be that a book not copyrighted or

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