Werckmeister v. Pierce & Bushnell Mfg. Co.

• Decision Date: 07 August 1894
• Docket Number: 3,149.
• Citation: 63 F. 445
• Parties: WERCKMEISTER v. PIERCE & BUSHNELL MANUF'G CO.
• Court: U.S. District Court — District of Massachusetts

63 F. 445

WERCKMEISTER v. PIERCE & BUSHNELL MANUF'G CO.

No. 3,149.

United States Circuit Court, D. Massachusetts.

August 7, 1894

Goepel & Raegener, for complainant.

Alex P Browne, for defendant.

PUTNAM Circuit Judge.

On or about October 1, 1891, G. Naujok, a German subject, and a resident of Germany, painted in oils a picture, called by him, and in this case, 'Die Heilige Cacilie,' an undoubtedly meritorious work of art. On the 5th of the succeeding March he executed, in behalf of the complainant in this case, who describes himself in his bill as a citizen of the empire of Germany, and who transacts his business under the name of the 'Photographische Gesellschaft,' an instrument of which the following is a copy:

'I transfer hereby to the Photographische Gesellschaft, in Berlin, for my work 'Die Heilige Cacilie,' the right of publication,-- by which I wish to have understood the exclusive right of reproduction,-- against a payment of 500 marks, and nine gratuitous copies thereof.

'Konigsburg in Prussia, March 5, 1892.

Gustav Naujok.'

The artist never painted a replica. In the summer of 1892 he sent the picture to Munich, to the Grosse Internationale Kunstausstellung, where it was sole to some person unknown to the artist, and not shown in this case; and neither the artist nor either of the parties in this case know where the picture is, or where is has been since the sale. From January, 1892, until March, 1892, the picture was publicly exhibited at Berlin in the Kunsthandlung von Schulte, a public art gallery, the rules of which as to suffering copies to be taken are not shown. No other publications are proven, except the photographs of the parties to this case. On the 16th of May, 1892, complainant delivered at the office of the librarian of congress a copy of the title of the painting, and a description of it, and obtained the following certificate:

'Library of Congress, Copyright Office, Washington.

'To wit: Be it remembered, that on the 16th day of May, anno domini 1892, Photographische Gesellschaft, of Berlin, Ger., have deposited in this Office the title of a Painting, the title or description of which is the following words, to wit:

DIE HEILIGE CACILIE.

G. Naujok.

Photo. & Descrip. on file;

the right whereof they claim as proprietors in conformity with the laws of the United States respecting Copyrights.

'A. R. Spofford, Librarian of Congress.'

Afterwards, on or about the 15th of September, 1892, complainant put on the market in Germany a photograph of the painting, and subsequently imported, or caused to be imported, the same photograph, and has sold it, or caused it to be sold, in the United States. Subsequently the defendant sold in the United States a photograph, which is an undoubted infringement, if, under the law, there can be an infringement; and the bill is brought to restrain the defendant, touching its photograph, and for other relief.

The photograph of the complainant bears the inscription, 'Copyright, 1892, by Photographische Gesellschaft,' and reproduces from the picture the signature of the artist; but it contains no notice, unless implied in the foregoing words, that the painting itself was ever copyrighted, nor has there been inscribed on the painting, or its mounting, the notice pointed out by section 4962 of the Revised Statutes. By the proclamation of the president of April 15, 1892 (27 Stat. 1021), the benefit of the international copyright act of March 3, 1891, c. 595 (26 Stat. 1106), was extended to German subjects. The act of 1891 (section 3) provides that the two copies of a copyrighted photograph required to be delivered at the office of the librarian of congress shall be printed from negatives made within the limits of the United States, or from transfers made therefrom; and that during the existence of the copyright the importation into the United States of the photographs copyrighted, or any edition or editions thereof, or any negatives, shall be prohibited. Consequently the complainant's imported photographs cannot be directly protected by statute. As they are not copyrighted, and are, therefore, perhaps, not prohibited from importation, it is claimed that, if his positions in this case are sound, the policy of the provisions of the third section, to which we have referred, may be partially defeated. These provisions, however, are apparently precise, in that they are limited to the cases of 'book, chromo, lithograph, or photograph.' Littleton v. Oliver Ditson Co. (decided by this court August 1, 1894) 62 F. 597. They do not assume to reach any reproduction which does not involve depositing with the librarian of congress two copies; and the case at bar does not fall within the latter class, but within the class requiring one photograph of the subject-matter of copyright. Therefore we are apparently not met by any broad policy, such as would trouble us in reaching a result not fairly excluded by the letter of the statute. But, as the right of the complainant to enjoin the defendant does not depend on the right of the former to import photographs, we need not particularly investigate the effect of these statute provisions. At the common law, the artist or the owner of the painting can prohibit reproductions of it until he in some way publishes it; but, after publishing it, either by photographs or otherwise, it becomes subject to the same rules as other published matter, and the public becomes entitled to it. This principle is so fundamental that it need not be elaborated, or fortified by any citation of authorities, and we will only refer on this point to Parton v. Prang, 3 Cliff. 537, 548, 549, Fed. Cas. No. 10,784. Moreover, a mere exhibition of a picture in a public gallery, like that at Berlin, does not, at common law, forfeit the control of it by the artist or the owner, unless the rules of the gallery provide for copying, of which there is no evidence in this case. But if, by proper authority, which it does not lie in the month of the complainant in this case to deny, photographs of this painting have been put on the market in the United States, under such circumstances that they are not protected by the copyright statutes, the public is free to copy it, and to sell copies of it in the legitimate course of trade, and the bill cannot be maintained.

The propositions of the complainant necessary to maintain his case are that, by virtue of the agreement given him by the artist, which we have already set out, he was entitled to copyright the painting itself, and that he has lawfully done so; and that, the painting being copyrighted, all reproductions of it in every form are infringements. While he admits that he is neither the author nor the proprietor of the painting, yet he claims, by virtue of the instrument given him by Naujok, to come in under the words 'assigns of any such person,' found in section 4952 of the Revised Statutes. In response to the complainant's claim, the defendant, among other things, refers to section 4962 of the Revised Statutes, and asserts that, even if the complainant's position was correct in other respects, he could maintain no action for any infringement of his copyright, because the words specified in the section last referred to have not been inscribed on any visible portion of the original painting, or on the substance on which the painting is or may have been mounted.

Neither party has cited to the court any decided cases nor referred us to any other authorities, bearing directly on the principal questions involved. Yuengling v. Schile, 12 F. 97, has been brought to our attention, as leading up to the proposition that the proprietor of a painting, merely as such, has no right to a copyright thereon. We do not understand that such is a proper inference from that case, or that the statute law is to that effect. We have no occasion to make any issue touching any questions which were actually decided in that case. Our attention is also called to Schumacher v. Schwencke, 30 F. 690; but this case, so far as it applies to the case at bar, is only in harmony with Gambart v. Ball, 14 C.B. (N.S.) 306; Rossiter v. Hall, 5 Blatchf. 362, Fed. Cas. No. 12,082; and Ex parte Beal, L.R. 3 Q.B. 387, 394,-- to the effect that the person holding the copyright of an original painting is protected against any reproduction of it, whether by a photograph of it, by a reproduction of an authorized photograph, or in any other manner. The decisions of the English courts are of but little assistance, because their statute touching copyrights of original paintings (25 & 26 Vict. c. 68) makes special provisions with reference to the right to a copyright impliedly passing with the picture itself; and also the general.copyright act now in force (5 & 6 Vict. c. 45) contains, in section 2, a definition of the word 'assigns,' and, in section 25, provisions about the nature of the estate in copyrights, not found in the statutes which govern us. Some English cases will, however, be referred to, which relate incidentally to the determination of this case.

Returning to the principal propositions at issue, they divide themselves into three: First, whether the complainant had a lawful right to copyright the original picture; second whether, if the copyright is valid, it carries with it protection against all reproductions of it, including the photographs of the defendant; and, third, whether the omission to inscribe on the original painting, or its mounting, either of the expressions required by the copyright statutes, and already referred to, bars this.action. If either of these propositions is determined against the complainant, we, of course, need go no further. We have no doubt that the law is correctly laid down in the cases to which we have...