Falk v. Curtis Pub Co.
| Decision Date | 28 February 1900 |
| Citation | 100 F. 77 |
| Parties | FALK v. CURTIS PUB. CO. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Samuel M. Hyneman, for plaintiff.
J Martin Rommel and Hector T. Fenton, for defendant.
The demurrer to the plaintiff's original statement did not challenge the jurisdiction of this court. Upon the argument of that demurrer it was incidentally denied; but, as the learned counsel of the defendant then stated that he purposed to raise the question more formally thereafter, it was not fully discussed, and its consideration was deferred. 98 F 989. The case has since been heard upon a demurrer to the amended statement, by which it is, among other things averred that 'the pleading does not recite any cause of action or subject-matter cognizable by this court, or of which it is authorized by law to take jurisdiction'; and the question of jurisdiction, being thus distinctly presented, must now, of course, be immediately determined, inasmuch as the plaintiff still insists upon proceeding in this court, instead of in the district court, although the authority of the latter tribunal to take cognizance of such an action is in defendant's brief assumed to be unquestionable.
The suit is brought, under section 4965 of the Revised Statutes, to recover the penalty, thereby imposed, of one dollar for every sheet of an infringing copy of a certain copyrighted photograph found, as alleged, in the possession of the defendant. The asserted right to sue in this court is rested upon section 629 of the Revised Statutes, which vests in the circuit courts original jurisdiction 'of all suits at law or in equity arising under the patent or copyright laws of the United States. ' It must be conceded that 'the general jurisdiction over actions for penalties and forfeitures has been and is vested in the district court,' and the question now is whether the circuit court has, under section 629, jurisdiction of suits brought for the particular penalty sought to be recovered in this action. Lees v. U.S., 150 U.S. 476, 14 S.Ct. 163, 37 L.Ed. 1150.
What was the intent of congress in giving the circuit courts jurisdiction of 'all suits * * * arising under the patent or copyright laws'? The use of such broadly inclusive language precludes, I think, the implication of an intention to except from the jurisdiction conferred any suit, provided it be one arising under the patent or copyright laws; and, in my opinion this suit is such a one. The meaning of the terms of the statute is plain. They do not stand in need of interpretation. The only difficulty is in identifying the subject-matter to which they refer; and, if section 4965 can be identified as one of the 'copyright laws of the United States,' no difficulty will remain. That section is comprised in title 60 of the Revised Statutes, which relates exclusively to 'patents, trade-marks, and copyrights,' and is included in chapter 3 of that title, which contains the provisions especially applicable to 'copyrights'; and it seems to be reasonable, if, indeed, not necessary, to conclude that congress, in speaking, as in section 629, of 'the patent or copyright laws of the United States,' must have had in mind the laws which, in the same revision, were so classified and discriminated. Moreover, by an almost immediately following section (4969) it is quite clearly indicated that a case may be one of forfeiture or penalty, and yet be suit under the copyright laws; for the limitation which that section prescribes is that 'no action shall be maintained in any case of forfeiture or penalty under the copyright laws, unless, ' etc.
In Brady v. Daly, 20 Sup.Ct. 64, S.U.S. 64, 44 L.Ed.--, it was held that the section upon which the action in that case was founded was not a penal one, and therefore the question with which I am now dealing was left undecided. Holt v. Manufacturing Co., 20 Sup.Ct. 272, Adv. S.U.S. 272, 44 L.Ed.--, was a suit to enjoin the collection of certain taxes, and complaint was made that the assessment of these taxes was illegal, because, in effect, levied on patents or patent rights. But this, it was held, 'did not involve the construction or the validity or the infringement of the patents referred to, or any other question under the patent laws'; and for this reason it was decided that the suit was not one arising under those laws. This decision, though not directly in point, is, I think, instructively suggestive; for the language quoted manifestly implies that any case which does involve the validity or the infringement of a patent or of a copyright is to be regarded as arising under the patent or of a copyright laws, and that the present case involves both the validity and the infringement of the copyright upon which it is founded, is, I think, indubitable, and is not likely to be disputed. The existence of a valid copyright, and its infringement, are facts which are essential to the plaintiff's case, and which the defendant is at liberty to controvert, as, indeed, it has already done by its first demurrer.
In the absence of any direct and controlling authority upon the subject, some weight might be accorded to mere precedent. But no uniform practice has been established. Cases like this have been instituted in the district courts, but the greater number have been brought in the circuit courts, and in none of them has the jurisdiction of either tribunal been questioned, except in the two instances which I have mentioned, and in Taft v. Engraving Co., to which I will presently refer; and if any deduction can be drawn from this apparently conceded diversity of choice, it would seem to be that the bar and the judges have not doubted that the jurisdiction of these courts is, in such cases concurrent. It has been exercised by the circuit court in Lithographic Co. v. Sarony, 111 U.S. 53, 4 Sup.Ct. 279, 28 L.Ed. 349; Falk v. Heffron (C.C.) 56 F. 299; Lithographing Co. v. Falk, 20 U.S. App. 296, 8 C.C.A. 224, 59 F. 707; Wheeler v. Cobbey (C.C.) 70 F. 487; Bolles v. Outing Co., 45 U.S. App. 449, 23 C.C.A. 594, 77 F. 966; Morrison v. Pettibone (C.C.) 87 F. 330; Johnston v. Klopsch (C.C.) 88 F. 692; Howell v. Miller, 33 C.C.A. 407, 91 F. 129.
Taft v. Engraving Co. (C.C.) 37 F. 726, was a qui tam action, brought to recover the penalty imposed by section 4963 of the Revised Statutes upon every person inserting or impressing notice of copyright upon any article for which a copyright had not been obtained. The jurisdiction of the court was denied, but was sustained. The learned judge who delivered the opinion of the circuit court in that case said that he would have been disposed to hold that the suits referred to in section 629, cl. 9, were ordinary civil suits, at law or in equity, to recover damages for, or to restrain, infringements of patents or copyrights, and that that clause does not confer jurisdiction upon the circuit courts over suits of a penal character. While I do not partake of this disposition of the learned judge, I entirely concur in the conclusion which he reached, and which I think he sufficiently based upon the several statutory provisions which were referred to and considered by him.
By the judiciary act of 1789 (section 9) it was provided 'that the district courts shall have exclusive original cognizance of all suits for penalties and forfeitures incurred under the laws of the United States. ' But at the time this act was passed no copyright statute was in existence. The first copyright law (1790; 1 Stat. 125, Sec. 2), imposed a penalty of 'fifty cents a sheet * * * to be recovered by action of...
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