Myers v. Callaghan

• Decision Date: 05 February 1881
• Citation: 5 F. 726
• Parties: MYERS v. CALLAGHAN and others.
• Court: U.S. District Court — Northern District of Illinois

5 F. 726

MYERS v. CALLAGHAN and others.

United States Circuit Court, N.D. Illinois.

February 5, 1881

J. V Le Moyne, for complainant.

J. L High and Thomas Moran, for defendants.

DRUMMOND C. J.

This is a bill filed by the plaintiff against the defendants for an infringement of the rights of the plaintiff under the copyright laws of the United States. The bill alleges substantially the following facts: From 1865 to 1868 the plaintiff and Horace P. Chandler constituted a business firm for publishing law books, and as such firm they became the proprietors of volumes 32, 33, 34, 35, 36, 37, and 38 of the Illinois Reports. Norman L. Freeman was the reporter, under the law and by the appointment of the court, of the volumes of reports; and the firm purchased all the proprietary rights of Freeman, and paid him a valuable consideration therefor he agreeing that the firm should have the copyright of all said volumes. In 1868 Chandler sold out all his interest to the plaintiff. The plaintiff was also the proprietor of, and entitled to the copyright in, volumes 39, 40, 41, 42, 43, 44 45, and 46 of the Illinois Reports, of which Freeman was also the reporter, and from him the plaintiff purchased all his interest in those volumes. The plaintiff has published a large number of copies of each of these last-named volumes, and still has the copyright to all his volumes of reports from 32 to 46, inclusive. In 1877 the plaintiff reprinted volumes 37 and 38, and, as some changes were made in the arrangement of paging the books, a copy of the printed title of each volume, and afterwards copies of the books themselves, were deposited in the office of the librarian of congress. The defendants had full knowledge of the exclusive rights of the plaintiff, and attempted to buy the same from him, but refused to pay the price demanded, and there-upon reprinted and published the volumes 32 to 38, inclusive, using the material contained in the volumes of the plaintiff, thereby violating the law of congress upon the subject of copyright; not confining themselves to the use of the opinions of the court, but using the head-notes and statements of cases prepared by Mr. Freeman, making colorable changes, thus trying to avoid the plaintiff's rights under the law. The defendants threaten also to republish other volumes copyrighted by the plaintiff, viz., volumes 39 to 46, inclusive, of said reports. These acts, done and threatened by the defendants, have caused and will cause damage to the plaintiff, and therefore he asks that the defendants may be enjoined from publishing or selling any of the said books, and that the same so published may be forfeited to him, and that the defendants be required to deliver them up, and that an account may be rendered by the defendants of all the books published or sold, and that the defendants may pay the damage and costs which the plaintiff has sustained by their wrongful acts.

To this bill various defences have been set up. It is claimed that these being volumes of reports by a reporter, acting under the authority of law as a public officer, are not the subject of a copyright under the act of congress. It is also claimed, if they are the subject of copyright, the plaintiff had not complied with the act of congress in the procurement of the copyright, and therefore none exists. It is insisted, too, by the defendants, that the volumes which are charged to be an infringement of the plaintiff's copyright, are themselves independent productions of different editors and annotators, Messrs. Ewell and Denslow, who were employed by the principal defendants, Messrs. Callaghan & Co., to edit those volumes. It is also said that the plaintiff has acquiesced in the publication of the volumes of the defendants, and that he has lost the right to maintain a suit by his own laches; and, lastly, that the plaintiff has been adjudicated a bankrupt, and therefore cannot maintain this action. It will be observed that the plaintiff claims through a purchase from the reporter. He was an officer of the state, and prepared the volumes under the authority of law, and it is insisted, because he was a public officer and acted in an official capacity, that he had no copyright in these volumes. In one aspect of the case there would seem to be great force in this objection. For example, if an adequate compensation was paid by the state to the reporter for the work done by him in preparing volumes of reports, then whatever property there was in the volumes arising from the labors of the reporter ought to belong to the state and not to him; but I cannot find that view was taken of the case by the state and the court in the appointment of the reporter at that time. On the contrary, it seems to have been considered that the reporter was entitled to any profits which might arise from the sale of these volumes, and that they constituted a part of the perquisites of his office. He was appointed under the authority conferred by section 20 of chapter 29 of the Revised Statutes of 1845, which required the court to appoint a reporter. Mr. Freeman was appointed under the act of 1863, and re-appointed in 1869, and then there appears to have been no regular salary. The office seems to have been different then from what it is now, when, it is said, adequate compensation is given by the state to the reporter for the services performed by him.

The case of Wheaton v. Peters, 8 Peters, 591, as construed by the courts and the profession, has always been supposed to decide that Mr. Wheaton had a copyright in his reports, provided he had complied with the law then in force upon the subject. It is true that a majority of the court does not distinctly assert that he had that right, but it appears to be necessarily implied from the whole reasoning in the opinion of the majority of the court, because the court remanded the case for the purpose of ascertaining whether the reporter had complied with the acts of congress; something which clearly ought not to have been done, provided the court was of the opinion that in no event was the reporter entitled to a copyright in his reports. Every reporter of the supreme court since has claimed copyright,-- Peters, Howard, Black, Wallace, and Otto-- and so, it is believed, has every reporter in this country, state and federal. It seems to me, therefore, that we must assume, in the absence of any express legislation by the state indicating a contrary principle, that the reporter is entitled to a copyright in his volumes of reports for what is the work of his own mind and hand,-- the head-notes, the statements which he has made in each case of the facts, and of the arguments of counsel,--notwithstanding it may be true that he can have no copyright in the opinions of the court.

The copyright of these volumes of reports existed, if at all, under the act of congress of 1831, which provided that any one, in order to be entitled to the benefit of the act, must deposit before publication a printed copy of the title of the book in the clerk's office of the district court of the district where the author or proprietor should reside; and, within three months from the publication of the book, a copy of the same must be delivered to the clerk of said district. Section 4. He must cause to be inserted in each copy of the book, on the title-page or the page immediately following, the following words: 'Entered according to Act of Congress, in the year--, by A.B., in the Clerk's Office of the District Court of-- .' Section 5.

Various objections are made by the defendants to the copyright because of non-compliance by the plaintiff with the provisions of the act of congress. It appears that 553 copies of volume 32 were delivered by Mr. Freeman, the reporter, to the state on October 2, 1865; while the proper certificate of that volume was not delivered to the clerk of the district court until January 17, 1866; and it is insisted that the delivery of these volumes to the state constituted a publication. There seems to be no further evidence on the subject than what arises from the fact of the delivery to the state. Whether they were distributed by the state, or retained until after the proper certificate was entered in the clerk's office of the district court, does not appear. It is argued that the delivery to the state constituted per se a publication within the meaning of the statute; and, as the certificate was filed after the delivery to the state, there was no copyright to the volume for that reason. These were copies for the use of the state, and subject to distribution under the provisions of law. Sections 23, 24, c. 29, Re. St. 1845. Can we assume, in the absence of any evidence upon the subject, that a distribution was made? Mere printing of a book is not necessarily publication, and I am inclined to think it was incumbent upon the defendants to show something more than a mere delivery of the copies to the state.

The title-page of volume 34, together with the printed volume itself, seems to have been filed in the clerk's office of the district court on the twenty-third of October, 1866, and it is claimed that this does not show that a proper certificate was filed in the clerk's office, as required by the statute, before publication. It will be observed that the statute does not specify how long before publication the certificate should be filed. Here both acts seem to have occurred on the same day, and the presumption, I think, is in the absence of any...