Houghton Mifflin Co. v. Stackpole Sons, Inc.

• Decision Date: 09 June 1939
• Docket Number: No. 358.,358.
• Citation: 104 F.2d 306
• Parties: HOUGHTON MIFFLIN CO. v. STACKPOLE SONS, Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

104 F.2d 306 (1939)

HOUGHTON MIFFLIN CO. v. STACKPOLE SONS, Inc., et al.

No. 358.

Circuit Court of Appeals, Second Circuit.

June 9, 1939.

Archie O. Dawson, of New York City (John D. Mooney and Hines, Rearick, Dorr & Hammond, all of New York City, of counsel), for appellant.

Philip Wittenberg, of New York City, for appellees.

Before L. HAND, AUGUSTUS N. HAND, and CLARK, Circuit Judges.

CLARK, Circuit Judge.

This is an appeal from the order of the District Court denying a preliminary injunction in an action to restrain infringement of the copyrights claimed by the plaintiff in Adolf Hitler's famous autobiographical and political treatise, "Mein Kampf." Two rival American editions of this work, in translation, are now being actively sold and distributed in this country. The one published by the defendants appears without claim of copyright authority, on the theory that the work is in the public domain and not protected by copyright. The one authorized by the plaintiff, and actually published by Reynal & Hitchcock, Inc., through arrangement with the plaintiff, appears under claim of copyright assignment from the German publishers of the book. The court denied the preliminary injunction sought by the plaintiff on the grounds that the defendants had raised questions of title and validity as to plaintiff's copyrights which were not free from doubt, and that the issues could not properly be determined on affidavits. The plaintiff appeals, asserting that on the admitted facts its legal right is sufficiently clear and its prospective loss is sufficiently great to entitle it to the injunction at this time.

In a case such as this, where two editions of a book of great popular interest are being actively promoted in competition with each other, it is obvious that much of the damage to a rightful owner of copyright, if any there be, will have been done by the time the action may be tried and final decree entered upon an accounting. Such owner needs protection now when the book is at the height of its sales, or else he may never be able to realize the fruits of ownership. Consequently it is settled in copyright cases that, if the plaintiff makes a prima facie showing of his right, a preliminary injunction should issue. American Code Co. v. Bensinger, 2 Cir., 282 F. 829, 835; L. C. Page & Co. v. Fox Film Corp., 2 Cir., 83 F.2d 196; Drone on Copyright, 516, 517. In our view, on such of the facts as are not in dispute, the plaintiff has so far established its right that it would be a denial of equity to allow the defendants under the circumstances to sell their book with impunity until the final outcome of the action.

The defendants do not dispute the fact that at the time of the hearing below they were about to publish and sell their edition of "Mein Kampf"; indeed, they admit this in their answer. They justify their conduct on two grounds: first, that the American copyrights issued in this case were invalid, because the author, Adolf Hitler, was "stateless" at the times they were issued, and second, that the plaintiff never acquired title to the copyrights. We shall discuss these claims in order.

First. A certificate of copyright registration of Volume 1 of "Mein Kampf" was issued by the United States Copyright Office in 1925 to Franz Eher Nachfolger G.m.b.H., of Munich, Germany, claimant of the copyright and publisher of the German edition of the book. In the application for the copyright, dated February 15, 1925, this publisher, in answer to the question on the application which read, "Country of which the author or translator is a citizen or subject," replied, "Staatenloser Deutscher." A certificate of copyright registration of Volume 2 of "Mein Kampf" was issued early in 1927 to the same concern. In its application dated December 24, 1926, the publisher answered this same question as to the author's country with the word "Osterreich." Defendants by extensive affidavits have produced evidence from German newspapers and other publications to the effect that on both occasions Adolf Hitler was a stateless person, a citizen or subject of no country, since, being born a citizen of Austria, he had served in the German army in the World War and had refused to respond to a call for service in the Austrian army. Plaintiff asserts its intent to offer proof at the trial that Hitler did not lose his Austrian citizenship, but, admitting for this motion that the author was stateless, nevertheless argues that the copyrights are valid, on the ground that a stateless person is entitled to the benefits of the American copyright laws.

This question must turn, therefore, upon our copyright statute. The statute particularly involved is Section 8 of Title 17, U.S.C.A., "Authors or proprietors, entitled; aliens."¹ Plaintiff relies on the broad grant of protection which it finds in the first sentence of this section, that "The author or proprietor of any work made the subject of copyright by this title, or his executors, administrators, or assigns, shall have copyright for such work under the conditions and for the terms specified in this title." It is asserted that this grant contains no exception of any kind, and therefore accords the protection of the other provisions of the copyright law to stateless persons.

Defendants, however, assert that the only source of authority for the issuance of copyrights to aliens is found in the remainder of the statute, which continues: "The copyright secured by this title 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 the alien author is domiciled within the United States at the time of the first publication of his work; or (b) when the foreign state affords reciprocity in the granting of copyright to American citizens. These claims of the parties are mutually exclusive. If the first sentence is a broad grant of authority, the plaintiff's position is sound; if the only grant of copyright protection to aliens is that of the second sentence, to those who are citizens or subjects of other nations, defendants have their justification for treating this work as in the public domain.

It is well settled that a "proprietor," not the author, stands in no better status in acquiring a copyright than does the author, and hence the Eher firm could not claim the benefits of the statute if Hitler was not in a position to do so. Bong v. Campbell Art Co., 214 U.S. 236, 29 S.Ct. 628, 53 L.Ed. 979, 16 Ann.Cas. 1126; cf. Copyright Office, Rules and Regulations, 2(2), 17 U.S.C.A. following section 53.

We think, however, that the statute does not deny protection to the literary property of a stateless person. No limitation upon the broad grant of the first sentence is expressed, and there is no reason why one should be read into it. It appears to be a general grant of protection to all authors, with the second sentence excepting a particular class for special treatment. And the history of the legislation tends to confirm this view.

Prior to 1891, copyright privileges in the United States were limited to an author who was "a citizen of the United States or resident therein." From the time when in 1837 Henry Clay made his report to the United States Senate (reprinted in G. H. Putnam, The Question of Copyright, 2d Ed. 32-39) urging copyright protection to citizens of Great Britain and France, there had been continuous and determined pressure, under the leadership of some of the greatest names in American literature, to secure protection of foreign writings in this country. This was put not merely on grounds of ethics and morality — as in the Rev. Henry Van Dyke's address on "The National Sin of Piracy" — but on grounds of protection of American authors from the underselling of foreign books. Thus in 1886, a memorial to Congress was presented by 144 American authors in the following terms: "The undersigned American citizens, who earn their living in whole or in part by their pen, and who are put at disadvantage in their own country by the publication of foreign books without payment to the author, so that American books are undersold in the American market, to the detriment of American literature, urge the passage by Congress of an International Copyright Law, which will protect the rights of authors, and will enable American writers to ask from foreign nations the justice we shall then no longer deny on our own part." Putnam, op. cit. p. 107; Bowker, Copyright; Its History and Its Law (1912), p. 359.

By 1886, as Mr. Putnam says (op. cit. p. 46), it had become "not so much a question whether there should or should not be an International Copyright, but simply what form the law should take." The first bill reported by the Judiciary Committee merely omitted the previous limitation restricting copyright to citizens or residents of the United States. In the report of the Committee on Patents of the House of Representatives, accompanying the bill which later became the Act of March 3, 1891, 26 Stat. 1106 — known as the International Copyright Act — it was said that "substantially all the world, except Great Britain and the United States, treat foreigners and citizens alike in the matter of copyright," and that the Queen was empowered by law "to establish reciprocity with us if we will permit it, and we stand alone in rejecting and refusing overtures." H.R.Report to accompany H.R.10881, June 10, 1890, quoted in full in Putnam, op. cit. pp. 76-130. Here we see the reason for the reciprocity provision which had long been advocated by many, as by President Arthur in his message of December, 1884, and which was added to the Act. It was to put the United States in a position where it could bargain with other nations, especially with Great Britain, to obtain equal treatment in those countries for American citizens.

Indeed, the form in which the Act of 1891 was passed suggests the intent to make an all-inclusive grant of copyright protection, perhaps...