Paige v. Banks

• Decision Date: 01 December 1871
• Citation: 20 L.Ed. 709,80 U.S. 608,13 Wall. 608
• Parties: PAIGE v. BANKS
• Court: U.S. Supreme Court

80 U.S. 608

20 L.Ed. 709

13 Wall. 608

PAIGE v. BANKS.

December Term, 1871

APPEAL from a decree of the Circuit Court for the Southern District of New York; the case being thus:

Congress by a copyright law of 31st May, 1790,¹ enacted that the author and authors of any book or books, 'and his or their executors, administrators, or assigns,' should have the sole right and liberty of printing, reprinting, publishing, and vending such book or books for the term of fourteen years. And if, at the expiration of the said term the said author or authors should be alive, that the same exclusive right should be continued to him or them, 'his or their executors, administrators, or assigns, for the further term of fourteen years.'

With this law in force as governing the subject of copyrights, the late Mr. Alonzo Paige, of New York, reporter of its Court of Chancery, entered, on the 7th of October, 1828, into an agreement with Gould & Banks, law publishers of that State, thus:

'That the said Alonzo during the term of five years from the 28th of April last, shall and will furnish the said Gound & Banks, in manuscript, the reports of the said court for publication, and that the said Gould & Banks shall have the copyright of said reports to them and their heirs and assigns forever.

'And the said Gould & Banks agree to and with the said Alonzo, that they will publish said reports in royal octavo volumes of between 600 and 700 pages, on paper and type suitable for such a work; that they will deliver to the said Alonzo twelve copies free of expense; that they will sell said reports to the members of the bar of New York at a sum not exceeding $6 per volume, bound in calf, for each volume they shall so sell within one year next subsequent to the publication of such volume.

'And the said Gould & Banks agree to pay to the said Alonzo $1000 per volume for every volume they shall publish, and at the same rate for less than a volume, within six months after the publication of each volume.

'It is understood that the said Alonzo is to read and correct the proof-sheets of said reports as the same are furnished him.'

Mr. Paige did accordingly furnish to Gould & Banks the manuscript of the volume known as 1st Paige's Chancery Reports; and on the 5th of January, 1830, Gould & Banks took out the copyright therefor in their own names.

On the 3d of February, 1831, that is to say, about two years and a half after the date of the agreement between the parties, Congress amended the copyright law,² enlarging the rights of copy. The new statute enacted:

'That whenever a copyright shall have been heretofore obtained by an author . . . of any book, &c., if such author . . . be living at the passage of this act, then such author . . . shall continue to have the same exclusive right to his book, . . . with the benefit of each and all the provisions of this act for the security thereof, for such additional period of time as will, together with the time which shall have elapsed from the first entry of said copyright, make up the term of twenty-eight years.

'That if at the expiration of the aforesaid term of years, such author . . . be still living, and a citizen . . . of the United States, or resident therein, or being dead, shall have left a widow, or child, or children, either or all then living, the same exclusive right shall be continued to such author; . . . or if dead, then to such widow and child or children for the further term of fourteen years.'

The twenty-eight years of right given by the act of 1790, expired on the 5th of January, 1858. Gould & Banks conceiving themselves to be entitled to renewal under the act of 1831, on the 3d of October, 1857, went through the usual process to secure a copyright for the extended term. Mr. Paige, on the 3d of January, 1858, conceiving that the extension enured to his benefit, did the same, and on the 13th following informed Gould & Banks that he had thus renewed his copyright, and calling their attention to the fact, that by this renewal 'all right on their part to print, publish, or vend volume first of his reports had ceased,' and calling on them 'henceforth to refrain from printing, publishing, or vending it.' To this Gould & Banks, referring to the contract of October 7th, 1828, reply:

'First. Your manuscripts were furnished to us for publication without limit as to time, and, therefore, whatever be your rights under the law of 1831, we have an unlimited license to publish and sell.

'In the second place, where the entire interest in the copyright has been assigned, we consider the provisions of the act of 1831 to have been intended to enure to the benefit of the assignee.'

They accordingly notify to Mr. Paige that they shall themselves take out all of the renewals of the copyright, 'and hold him liable for all damages consequent on any infringement of their rights.'

Things remained in this state till March 31st, 1868, when Mr. Paige died; and in about ten months afterwards, and after some correspondence with a view to amicable adjustment, his executors filed a bill for injunction against further printing and vending, and for an account of profits after January, 1858.

The court below (Blatchford, J.) dismissed the bill,³ and the executors of Mr. Paige appealed to this court.

Messrs. Clarkson Nott Potter and W. W. Campbell, for the appellants:

The intention of the parties, to be collected from the whole agreement, was simply to convey the copyright, though it may be admitted for the sake of argument that the agreement contains provisions sufficient to create a license if the copyright had not been specifically conveyed. Now, this thing called 'copyright' is, so far as the law recognizes it, or so far as it is a matter of practical value and of sale, a creature of statute. A man has no more 'copyright' than what the statute gives him. When this agreement was made Mr. Paige had the exclusive right in himself and in his assigns to print, publish, and sell, at the longest for a term of twenty-eight years; and no greater or additional right. That assuredly is what he meant to sell, and all that he meant to sell. Now a new statute—one not dreamt of by any one in 1828—gives to Mr. Paige subsequently a new and different sort of right. How can it be said that Mr. Paige meant to assign that when he assigned the other? There are no words in his agreement such as 'whatever copyright he may hereafter have granted to him;' by which it might be inferred that he meant to part with more property than he had; an inference not to be made easily in any case. Questions have arisen often in the kindred case of patents, how far a grant of a patent right carried a subsequent extension of it. In Wilson v. Rousseau,⁴ a covenant by the patentee prior to the patent act of 1836, which authorized extensions, that the covenantee should have the benefit of any improvement in the machinery, or alteration or renewal of the patent, was held not to exclude an extension by an administrator under that act; and this court was not unanimous in holding that an extension passed even in such a case as Railroad Company v. Trimble,⁵ where a patentee conveyed all the right, title, and interest which he had in the 'same invention,' as secured to him by letters-patent, and also all 'the right, title, and interest which may be secured to him from time to time, the same to be held by the assignee for his own use and for that of his legal representatives, 'to the full end of the term for which said letters are or may be granted.'

2. The copyright act of 1790 gives the right to the author and to his assigns. The act of 1831 which created this new term, gives it specifically to the author if living, to his family if he is dead. Assignees are not mentioned in it, nor provided for. It looks much as if Congress in this case had meant specially to take care of men of...