Hills & Co. v. Hoover

• Decision Date: 04 March 1914
• Docket Number: 1713.
• Citation: 211 F. 241
• Parties: HILLS & CO., Limited, v. HOOVER et al.
• Court: U.S. Court of Appeals — Third Circuit

211 F. 241

HILLS & CO., Limited, v. HOOVER et al.

No. 1713.

United States Court of Appeals, Third Circuit.

March 4, 1914

Hector T. Fenton, of Philadelphia, Pa., for Hills & Co.

Wm. A Carr and W. Horace Hepburn, both of Philadelphia, Pa., for Hoover and others.

Before GRAY and BUFFINGTON, Circuit Judges, and ORR, District Judge.

BUFFINGTON Circuit Judge.

The present is one of a number of cases growing out of the alleged violation by Joseph Hoover et al., the defendants, of the copyright of Hills & Co., Limited, the plaintiff, to certain engravings. The original case in this circuit-- for one phase of the controversy was involved in Hills v Austrich (C.C.) 120 F. 862 (1903), a case in the Second circuit-- was an action of replevin brought by the plaintiff against the defendant in the Circuit Court to recover 20,000 copies of the offending copyright engravings. The marshal found and seized 4,673 copies in defendants' possession and delivered them to the plaintiff and made return of his writ on January 2, 1903. No further steps were taken in said case until June 19, 1912. The pleadings were the usual ones under the Pennsylvania action of replevin, averred title to the engravings in the plaintiff, and invoked the aid of the court to recover them. Subsequently the plaintiff brought a bill in equity in the Circuit Court to enjoin the sale of unseized copies. This bill resulted in a decree for an injunction and an accounting and a final decree on such accounting for the profits of the defendants on the unseized copies. That proceeding-- the record of which is in evidence in the present case-- is described at length in Hills v Hoover (C.C.) 142 F. 904. The opinion at 142 F. 904, and the one at 220 U.S. 329, 31 Sup.Ct. 402, 55 L.Ed. 485, Ann. Cas. 1912C, 562, were delivered in an action of assumpsit which the present plaintiffs in 1903 brought against the present defendants to recover the statutory penalty on the 4,763 sheets seized on the replevin by virtue of section 4965 (U.S. comp. St. 1901, p. 3414), which provides that defendant shall 'forfeit one dollar for every sheet of the same found in his possession. ' The Circuit Court having eventually held that the plaintiff could not, in accordance with the case of Falk v. Curtis Publishing Co., 107 F. 126, 46 C.C.A. 201, maintain such action of assumpsit, it having been brought at the same time the action of replevin was, its decision was brought to this court for review. Pending its disposition, the case of Werckmeister v. American Company, 207 U.S. 382, 28 Sup.Ct. 124, 52 L.Ed. 254, holding a party aggrieved by a violation of his copyright, was confined to a single action in the nature of replevin in which he could recover both the forfeited sheets and the forfeited penalty, was decided by the Supreme Court. Thereupon, in view of the well-understood limitations of the Pennsylvania action of replevin, this court certified the questions to the Supreme Court in reference to that action, which are recited in Hills v. Hoover, 220 U.S. 329, 31 Sup.Ct. 402, 55 L.Ed. 485, Ann. Cas. 1912C, 562. In that decision, as we interpret it, it is held that the federal court may devise a writ in the nature of replevin, by virtue of which the marshal can seize the offending prints and in which a recovery of the penalty can be effected. In that regard the court said:

'There is no difficulty in issuing a writ in the nature of a writ of replevin in an action such as is authorized by section 4965, requiring the marshal to seize the alleged forfeited plates and copies, and asking in the same suit to recover the penalties for those found in the defendant's possession. The alleged infringing matter will be brought into court to abide its order and judgment, and at the same time, in the same action, a recovery may be had for the penalty awarded.'

The court further stated:

'Holding that the remedy under the copyright statute embraces but one action, as was held in the Werckmeister Case, and that the local statutes of the state as to replevin, or other remedies, will not prevent the federal court from framing its process and writs, so as to give full relief in one action, we answer both of the questions certified in the affirmative.'

Subsequent thereto, on June 12, 1912, the plaintiff moved the court, in the original replevin case of 1902, to amend its statement of claim by adding thereto the statutory cause of action arising under the provision that the defendant 'shall further forfeit one dollar for every sheet of the same found in his possession,' viz., a 'statutory pecuniary penalty of one dollar per copy for each of said 4,763 piratical copies, in the aggregate, so found in the possession of said defendants and seized as aforesaid. ' To such amendment the defendant objected on the ground that this claim was barred by R.S. § 4968 (U.S. Comp. St. 1901, p. 3416), which provides that:

'No action shall be maintained in any case of forfeiture or penalty under the copyright laws, unless the same is commenced within two years after the cause of action has arisen.' This objection the court, without deciding, overruled, and allowed the amendment, but 'without prejudice to the right of the defendants to interpose at the trial any defense which they might have made upon this motion. ' On the trial, the defendant having raised the question of the right of the plaintiff to amend in view of the

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