Richard Ferris v. Charles Frohman

• Decision Date: 19 February 1912
• Docket Number: No. 44,44
• Citation: 32 S.Ct. 263,56 L.Ed. 492,223 U.S. 424
• Parties: RICHARD FERRIS, Plff. in Err., v. CHARLES FROHMAN, Charles Haddon Chambers, and Stephano Gatti
• Court: U.S. Supreme Court

223 U.S. 424

32 S.Ct. 263

56 L.Ed. 492

RICHARD FERRIS, Plff. in Err.,

v CHARLES FROHMAN, Charles Haddon Chambers, and Stephano Gatti.

No. 44.

Submitted November 7, 1911.

Decided February 19, 1912.

Messrs. Charles H. Aldrich, Charles R. Aldrich, Charles G. McRoberts, and L. E. Chipman for plaintiff in error.

[Argument of Counsel from Pages 425-428 intentionally omitted] Mr. Levy Mayer for defendants in error.

[Argument of Counsel from Page 428 intentionally omitted] Mr. Justice Hughes delivered the opinion of the court:

This is a writ of error to the supreme court of Illinois.

The suit was brought by Charles Frohman, Charles Haddon Chambers, and Stephano Gatti (defendants in error), to restrain the production of what was alleged to be a piratical copy of a play known as 'The Fatal Card.' Its authors were Charles Haddon Chambers and B. C. Stephenson, British subjects, resident in London, who composed it there in 1894. The firm of A. & S. Gatti, theatrical managers of London, of which the complainant Gatti is the surviving partner, became interested with the authors and on Septermber 6, 1894, the play was first performed in London. It was registered under the British statutes on October 31, 1894, and again on November 8, 1894. Charles Frohman of New York, by agreement of June 13, 1894, obtained the right of production in this country for five years. On March 25, 1895, Frohman acquired all the interest of Stephenson in the play in and for the United States, and it was extensively represented under his supervision. It was not copyrighted here.

George E. McFarlane made an adaptation of this play, called it by the same name, and transferred it to the plaintiff in error, Richard Ferris, of Illinois, who copyrighted it in August, 1900, under the laws of the United States, and later caused it to be performed in various places in this country. The adapted play differed from the original in various details, but not in its essential features.

The superior court of Cook county found that the complainants were the sole owners of the original play; that it had never been published or otherwise dedicated to the public in the United States or elsewhere; and that the Ferris play was substantilly identical with it. Ferris was directed to account, and was perpetually restrained from producing the adaptation which he had copyrighted. The appellate court for the first district reversed the decree (131 Ill. App. 307), but on appeal to the supreme court of Illinois this decision was reversed and the decree of the superior court was affirmed. 238 Ill. 430, ——L.R.A.(N.S.) Am. St. Rep. 135, 87 N. E. 327.

The defendants in error contest the jurisdiction of this court upon the ground that the bill was based entirely upon a commonlaw right of property, and insist that the upholding of this right by the state court raises no Federal question. But the complainants sued not simply to maintain their commom-law right in the original play but, by virtue of it, to prevent the defendant from producing the adapted play which he had copyrighted under the laws of the United States. They challenged a right which the copyright, if sustainable, secured. Rev. Stat. § 4592, U. S. Comp. Stat. 1901, p. 3406. It was necessary for them to make the challenge, for they could not succeed unless this right were denied. Ferris stood upon the copyright. That it had been obtained was alleged in the bill, was averred in the answer, and was found by the court. The fact that the court reached its conclusion in favor of the complainants by a consideration, on common-law principles, of their property in the original play, does not alter the effect of the decision. By the decree Ferris was permanently enjoined 'from in any manner using, . . . selling, producing, or performing . . . the said defendant's copyrighted play hereinbefore referred to for any purpose.' The decision thus denied to him a Federal right specially set up and claimed, within the meaning of § 709 of the Revised Statutes of the United States (U. S. Comp. Stat. 1901, p. 575). This court, therefore, has jurisdiction. Chicago, B. & Q. R. Co. v. Illinois, 200 U. S. 561, 580, 581, 50 L. ed. 596, 604, 605, 26 Sup. Ct. Rep. 341, 4 A. & E. Ann. Cas. 1175; McGuire v. Massachusetts, 3 Wall. 382, 385, 18 L. ed. 164, 165; Anderson v. Carkins, 135 U. S. 483, 486, 34 L. ed. 272, 274, 10 Sup. Ct. Rep. 905; Shively v. Bowlby, 152 U. S. 1, 9, 38 L. ed. 331, 335, 14 Sup. Ct. Rep. 548; Northern P. R. Co. v. Colburn, 164 U. S. 383, 385, 386, 41 L. ed. 479, 480, 17 Sup. Ct. Rep. 98; Green Bay & M. Canal Co. v. Patten Paper Co. 172 U. S. 58, 67, 68, 43 L. ed. 364, 368, 369, 19 Sup. Ct. Rep. 97.

The substantial identity of the two plays was not disputed in the appellate courts of Illinois, and must be deemed to be established. The contention was, and is, that after the public performance of the original play in London, in 1894, the owners had no common-law right, but only the rights conferred by the British statutes; and that Frohman's interest (save the license which expired in 1899) was subsequently acquired. Hence, it is said the play, not being copyrighted in the United States, was publici juris here, and the adapter was entitled to use it as common material.

Performing right was not within the provisions of 8 Anne, chap. 19, which gave to authors the sole liberty of printing their books. Coleman v. Wathen, 5 T. R. 245. The act of 1833, known as 'Bulwer-Lytton's act,' conferred statutory playright in perpetuity throughout the British dominions, in the case of dramatic pieces not printed and published; and for a stated term, if printed and published. 3 & 4 Will. IV. chap. 15. By § 20 of the copyright act of 1842, 5 & 6 Vict. chap. 45, it was provided that the sole liberty of representing any dramatic piece should be the property of the author and his assigns for the term therein specified for the duration of copyright in books. The section continued: 'And the provisions hereinbefore enacted in respect of the property of such copyright, and of registering the same, shall apply to the liberty of representing or performing any dramatic piece or musical composition, as if the same were herein expressly re-enacted and applied thereto, save and except that the first public representation or performance of any dramatic piece or musical composition shall be deemed equivalent, in the construction of this act, to the first publication of any book.' Mr. Scrutton, in his work on Copyright, 4th ed. p. 77, states that it is 'probable, though there is no express decision to that effect, that the court, following Donaldson v. Beckett, 2 Bro. P. C. 129, would hold the common-law right destroyed by the statutory provisions after first performance in public.' Compare MacGillivray, on Copyright, pp. 122, 127, 128. And it may be assumed, in this case, that after the play had been performed, the right of the owners to protection against its unauthorized production in England was only that given by the statutes.

Further, in the absence of a copyright convention, there is no playright in England in the case of a play not printed and published, where the first public performance has taken place outside the British dominions. This results from § 19 of the act of 7 & 8 Vict. chap. 12, known as the international copyright act, which provides: 'Neither the author of any book, nor the author or composer of any dramatic piece or musical composition, . . . which shall, after the passing of this act, be first published out of her Majesty's dominions, shall have any copyright therein respectively, or any exclusive right to the public representation or performance thereof, otherwise than such (if any) as he may become entitled to under this act.' The provision applies to British subjects as well as to foreigners, and the words 'first published' include the first performance of a play. In Boucicault v. Delafield, 1 Hem. & M. 597, 33 L. J. Ch. N. S. 38, 9 Jur. N. S. 1282, 9 L. T. N. S. 709, 12 Week. Rep. 101, the author of the play known as 'The Colleen Bawn' filed a bill to restrain a piratical production. It appeared that the play had first been represented in New York, and by reason of that fact, there being no copyright convention with the United States,—it was held that, under the statute above quoted, there was no playright in England. To the same effect is Boucicault v. Chatterton, L. R. 5 Ch. Div. 267, 46 L. J. Ch. N. S. 305, 35 L. T. N. S. 745, 25 Week. Rep. 287, where the author unsuccessfully sought to restrain an unauthorized performance of 'The Shaughraun,' an unprinted play which had first been represented here.

The British Parliament, in thus fixing the limits and conditions of performing rights, was dealing with rights to be exercised within British territory. It is argued that the English authors in this case, by the law of their domicil, were without common-law right and in its stead secured the protection of the British statutes, which cannot avail them here. But the British statutes did not purport to curtail any right of such authors with respect to the representation of plays outside the British dominions. They disclose no intention to destroy rights for which they provided no substitute. There is no indication of a purpose to incapacitate British citizens from holding their intellectual productions secure from interference in other jurisdictions according to the principles of the common law. Their right was not gone simpliciter, but only in a qualified sense for the purposes of the...