Emil Werckmeister v. American Tobacco Company

• Decision Date: 16 December 1907
• Docket Number: No. 29,29
• Parties: EMIL WERCKMEISTER, Plff. in Err., v. AMERICAN TOBACCO COMPANY
• Court: U.S. Supreme Court

207 U.S. 375

28 S.Ct. 124

52 L.Ed. 254

EMIL WERCKMEISTER, Plff. in Err.,

v AMERICAN TOBACCO COMPANY.

No. 29.

Argued October 30, 1907.

Decided December 16, 1907.

Mr. Antonio Knauth for plaintiff in error.

[Argument of Counsel from pages 376-378 intentionally omitted] Mr. William A. Jenner for defendant in error.

Mr. Justice Day delivered the opinion of the court:

This case was argued and submitted with American Tobacco Co. v. Werckmeister, decided December 2, 1907, 207 U. S. 284, 52 L. ed. ——, 28 Sup. Ct. Rep. 72.

The present action was brought to recover, under § 4965 of the copyright act (U. S. Comp. Stat. 1901, p. 3414), the penalties of $10 each, for 1,196 sheets of the alleged infringing publications claimed to have been found in the defendant's possession and seized by the United States marshals, under the two writs of replevin described in that suit.

Plaintiff in error, Werckmeister, offered in evidence the judgment roll in the former suit, with the pleadings and judgment, and also offered in evidence the writs and returns of the marshals for the southern and western districts of New York, respectively, showing seizures of 203 copies and 993 copies; the court excluded these writs as immaterial. No other evidence being offered, the court instructed the jury to render a verdict for the defendant, and judgment was afterwards rendered accordingly upon the verdict. 138 Fed. 162. On writ of error to the circuit court of appeals the judgment below was affirmed (74 C. C. A. 682, 144 Fed. 1023), and this writ of error is prosecuted to reverse the judgment of the circuit court of appeals.

This action requires the construction of § 4965, Rev. Stat. as amended (U. S. Comp. Stat. 1901, p. 3414), which is as follows:

'Sec. 4965. If any person, after the recording of the title of any map, chart, dramatic, or musical composition, print, cut, engraving, or photograph, or chromo, or of the description of any painting, drawing, statue, statuary, or model or design intended to be perfected and executed as a work of the fine arts, as provided by this act, shall, within the term limited, contrary to the provisions of this act, and without the consent of the proprietor of the copyright first obtained in writing, signed in presence of two or more witnesses, engrave, etch work, copy, print, publish, dramatize, translate, or import, either in whole or in part, or by varying the main design, with intent to evade the law, or, knowing the same to be so printed, published, dramatized, translated, or imported, shall sell or expose to sale any copy of such map or other article, as aforesaid, he 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; and in case of a painting, statue, or statuary, he shall forfeit ten dollars for every copy of the same in his possession, or by him sold or exposed for sale: Provided, however, That in case of any such infringement of the copyright of a photograph made from any object not a work of fine arts, the sum to be recovered in any action brought under the provisions of this section shall be not less than one hundred dollars, nor more than five thousand dollars: And, provided further, that in case of any such infringement of the copyright of a painting, drawing, statue, engraving, etching, print, or model or design for a work of the fine arts or of a photograph of a work of the fine arts, the sum to be recovered in any action brought through the provisions of this section shall be not less than two hundred and fifty dollars, and not more than ten thousand dollars. One half of all the foregoing penalties shall go to the proprietors of the copyright and the other half to the use of the United States.'

As with the sections of the copyright act under consideration in American Tobacco Co. v. Werckmeister, supra, this section has been the subject of consideration in the Federal courts, with different conclusions as to its purport and meaning. While the statute provides for the forfeiture of the plates and sheets and for the sum of $10 in case of a painting, for every copy found in the offending person's possession or sold by him, it is silent as to the kind of action to be brought, and we are left to discover the meaning of the act in this respect from a consideration of the language used, read in the light of the objects and purposes to be effected.

Obviously the statute does not provide a proceeding in rem, as is sometimes done in the revenue laws, for the act is leveled against any person who shall, contrary to its provisions, without consent, etc., engrave, work, copy, print, etc., forfeit to the proprietor the plates and sheets and a sum of money for each sheet, etc., found in his possession. This section of the statute is penal, and there should be especial care to work no extension of its provisions by construction. Statutory provisions similar to those above cited have been the subject of consideration in a number of cases in this court. In Backus v. Gould, 7 How. 798, 12 L. ed. 919, it was held that there could be no recovery for publishing sheets, copyright matter, etc., unless the same were found in the possession of the defendant. In Stevens v. Cady, 2 Curt. 200, Fed. Cas. No. 13,395, Mr. Justice Curtis, sitting at the circuit, held there could be no accounting for the penalties in an action in equity, and that the proprietor of the copyright was left by the act to his remedy at law by trover or replevin. In Thornton v. Schreiber, 124 U. S. 612, 31 L. ed. 577, 8 Sup. Ct. Rep. 618, it was held that action would not lie against...