Werckmeister v. American Lithographic Co.

• Decision Date: 16 December 1905
• Citation: 142 F. 827
• Parties: WERCKMEISTER v. AMERICAN LITHOGRAPHIC CO. et al.
• Court: U.S. District Court — Southern District of New York

142 F. 827

WERCKMEISTER v. AMERICAN LITHOGRAPHIC CO. et al.

United States Circuit Court, S.D. New York.

December 16, 1905

Briesen & Knauth (Antonio Knauth, of counsel), for complainant.

Wetmore & Jenner (William A. Jenner and Oscar W. Jeffery, of counsel), for defendants.

HOLT District Judge.

This suit is brought to restrain the infringement of a copyright. Emil Werckmeister, the complainant, is an art dealer, doing business in Berlin, Germany, under the style of 'Photographische Gesellschaft,' and in New York under the style of the 'Berlin Photographic Company.' W Dendy Sadler, a British subject, is an artist, who, prior to April 2, 1894, painted a picture named 'Chorus,' representing a convivial group of gentlemen gathered about a punch bowl, holding pipes and filled glasses in their hands and singing a chorus. In January, 1894, Mr. Werckmeister called upon Mr. Sadler at his studio in London. The picture was then nearly, but not entirely, finished. It was thereupon agreed between them that Mr. Sadler would sell to Mr Werckmeister the copyright of the painting for 200; that the painting should be sent to Mr. Werckmeister at Berlin to be photographed, and returned to Mr. Sadler in time for him to exhibit it at the annual exhibition of the Royal Academy in 1894. This agreement was thereafter confirmed by the execution and delivery of the following instrument:

'I hereby transfer the copyright in my picture 'Chorus' to the Photographische Gesellschaft, Berlin (the Berlin Photographic Company) for the sum of f200.

'London, April 2, 1894.

'(Signed)

W. Dendy Sadler.'

The painting was sent to the Photographische Gesellschaft, at Berlin, where it was received March 8, 1894. Photographic reproductions of it were made at Berlin, and the painting was returned to Mr. Sadler in London on March 22, 1894. Mr. Sadler exhibited the picture at the exhibition of the Royal Academy in 1894, and it remained on exhibition from the first Monday of May until the first Monday of October. While the painting was on exhibition at the Royal Academy an entry was made by Mr. Sadler, in a book kept at the Academy for the purpose, stating that the picture was for sale, but with the copyright reserved. Mr. Sadler continued to be the owner of the picture until 1899, when he sold it, reserving the copyright, to Mr. Cotterell, residing in London, who still owns it. A by-law of the Royal Academy provides that no permission to copy the works, during the terms of the exhibition, shall on any account be granted. There has never been inscribed upon the painting, or upon the substance upon which it is mounted, any statement showing that the painting was copyrighted. On March 31, 1894, the complainant sent to his New York house, to be transmitted to the Librarian of Congress, an application for copyright of the painting, in due form, accompanied by a description and photograph of it. This application was received at the copyright office, at the Congressional Library in Washington, on April 16, 1894. Subsequently the complainant published and sold copies of the painting made by the photogravure process, each of which marked, 'Copyright, 1894, by Photographische Gesellschaft.' It is stipulated that the defendant the American Tobacco Company a large number of chromo-lithographs, which are substantial copies of Mr. Sadler's picture, upon the background of which, however, is added an advertisement of a certain kind of tobacco, and that the defendant the American Tobacco Company caused said chromo to be publicly exhibited as advertisements, within one year before the commencement of this suit, and within the jurisdiction of this court, and without the permission of the complainant.

An application was made in this case for a preliminary injunction, which was denied by Judge Thomas ((C.C.) 117 F. 360), on the ground that the public exhibition of the picture at the Royal Academy between May and October, 1894, without any notice of copyright being placed on or about the painting, was a publication. A plea was afterwards filed to the bill, alleging the said exhibition as a bar to the suit. It was so held by Judge Wheeler ((C.C.) 126 F. 244); but upon appeal the Circuit Court of Appeals reversed this decision, on the ground, in substance, that the by-law of the Royal Academy, prohibiting any copying of the pictures there exhibited, prevented the exhibition of the picture from being such a general publication has barred the right to copyright. 134 F. 321, 68 L.R.A. 591. The defendants subsequently interposed an answer, proofs have been taken, and the case if now comes before the court for final hearing upon the answer. No claim is made by the defendants' counsel that, if Mr. Werckmeister had the right to take out the copyright, any formal proceeding necessary for that purpose have been omitted, or that, if he had a copyright, the defendants have not infringed. The defense relied on is that Mr. Werckmeister could not take out a copyright under the United States statute, because he did not own the painting, and that the copyright is invalid, because the painting never had affixed to it any notice that it was copyrighted.

The opinions of Judge Thomas, Judge Wheeler, and Judge Townsend which have been delivered in this case contain so full a discussion of the principles and authorities applicable to the law of copyright that any further general discussion of them here is unnecessary. The question whether the exhibition of this painting in the Royal Academy was a publication which invalidated the copyright was concluded in this case by the decision of the Circuit Court of Appeals. The only questions now open in this case are whether a person not the owner of a painting can obtain a copyright on it, and whether the omission to affix to the painting a notice of the copyright invalidated it.

The question whether the United States statutes permit a statutory copyright upon a painting is one upon which there is little direct authority. It is certainly a question of importance. I concur with the defendants' counsel that it is to be determined by the language of the statute. The thing transferred by Mr. Sadler to Mr. Werckmeister was the copyright, by which he meant whatever common-law copyright Mr. Sadler had and whatever statutory copyright Mr. Werckmeister might be enabled to obtain in any of the countries in the world. It might well be that the laws of some countries would enable him to obtain a copyright, and of others not. The simple question in this case is whether the laws of the United States permitted him to do so. The statute upon which the question depends is as follows: 'The author, inventor, designer, or proprietor of any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statute, statuary, and of and of models or designs intended to be perfected as works of the fine arts, and the executors, administrators, or assigns of any such person, shall, upon complying with the provisions of this chapter, have the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the same; and, in the case of a dramatic composition, of publicly performing or representing it, or causing it to be performed or represented by others; and authors or their assigns shall have exclusive right to dramatize or translate any of their works, for which copyright shall have been obtained under the laws of the United States. ' U.S. Rev. St. Sec. 4952, as amended by Act March 3, 1891, c. 565, 26 Stat. 1106 (U.S. Comp. St. 1901, p. 3406).

The substantial question, in construing this statute, is whether Mr. Werckmeister is included in the term 'assigns.' The author of a painting, when it is finished, before publication, owns a material piece of personal property consisting of the canvas and the paint upon it. He also owns an incorporeal right connected with it; that is, the right to make a copy of it. These two kinds of property, although growing out of the same intellectual production, are in their nature essentially and inherently distinct. The law has always recognized that they are distinct. The defendants' counsel admitted on the argument that, after a copyright has been once taken out, the two kinds of property are distinct, and that the owner of a painting may then sell the painting to one person, and the copyright to another. The claim is that that cannot be done before the statutory copyright is taken out. But the law has always recognized that a common-law copyright, before a general publication, is a distinct property from the thing to which the copyright applies. One man may be the owner of the thing, and another of the copyright in the thing. For instance, a person who has received a letter, voluntarily sent him by the writer, owns the piece of paper upon which the letter is written; but the writer of the letter continues to be the owner of the copyright, and can, by injunction, prevent the person who has received the letter from publishing it. Pope v. Curl, 2 Atk. 342; Thompson v. Stanhope, Ambl. 737; Folsom v. March, 2 Story, 113 Fed.Cas.No. 4,901; Woolsey v. Judd, 4 Duer, 379, Drone on Copyright, p. 133. A teacher delivering lectures orally to students remains the owner of the copyright, although he has permitted the particular persons hearing the lectures for their own instruction to take copies of them. Abernethy v. Hutchinson, 1 Hall & Tw. 40; Caird v. Sime, 12 App.Cases, 326; Bartlett v. Crittenden, 5 McLean, 32 Fed.Cas.No. 1,076. A person who has transferred the ownership of a copy of a book to another, under an agreement that it shall be transferred only for a particular and restricted purpose, does not thereby part with the copyright. Duke...