HARPER tI. SHOPPELL.
and others v.
(Circuit Oourt, S. D. New York. February 6, 1886.)
CoPYRIGHT-lNFmNGEMENT-MAKING AND SELLING CUT FROM ILLUSTRATED NEWSPAPER.
One who makes a plate from which a copy of a picture in an illustrated paper, that is copyrighted, can be produced, and sells the plate to another, is not of of the copyright.
At Law. F. S. Bangs, for plaintiffs. WALLACE, J. The plaintiffs sue at law for an infringement of copyright, and the case has been tried by the court, a jury having been waived. The defendant ha.s not intentionally infringed the plaintiffs' rights, and therefore nominal damages only are claimed. The conceded facts are as follows: The plaintiffs are the proprietors of Harper's Weekly, a copyrighted illustrated newspaper, published weekly, and in March, 1873, they published in that newspaper an impression of a cut tmtitled "Getting Married; Keeping House," which formed a prominent and considerable part of the newspaper. The cut was made and designed by one Reinhart, a citizen and resident of the United States, who sold it to the plaintiffs. They have never parted with the original cut, or given permission to the defendant or any other person to reproduce it. The defendant purchased a copy of the cut from a third person, in ignorance of the plaintiffs' rights, from which an electrotype plate was made, and sold by him to the New York Illustrated Times, who published an improprietor of pression in the issue of that newspaper in September, 1882. It is assumed that Reinhart had not allowed this copy to be made before he sold the cut to the plaintiffs. The only question in the case is whether the nnauthorized reproduction and sale of a copy of the cut by the defendant was an infringement upon the plaintiffs' copyright. The copyright of the plaintiffs' newspaper was a copyright of a book, within the meaning of the copyright laws. A copyrighted song, printed upon a single sheet, was held to be protected as "a book," under the English statute of 8 Anne, in Clementi v. Golding, 2 Camp. 25. This decision was approved and followed in two cases arising under our copyright statutes, in which it was held that a book, within these statutes, is not necessarily a book in the ordinary and common acceptation of the word, but may consist of a single sheet, as well as of a number of sheets bound together. Clayton v. Stone, 2 Paine, 382; Drury v. Ewing, 1 Bond, 540. See, also, Folsom v. Marsh, 2 Story, 100. The plaintiffs might have copyrighted the cut as an independent subject of copyright. They did not choose to do so. So, also, they could have copyrighted each poem or song or editorial composition of
their newspaper. If they had done this, a reproduction of the copyrighted thing would have been piracy, however innocent the defendant might have been of intentional wrong. They preferred to copyright their newspaper, and secure protection for it as an entire work. The cut was a legitimate part of the protected propel'ty,-as much so as the poems or editorial articles. The pictorial illustrations are one form of language employed by an author to express his ideas, and, when embodied in a book, are as much a component part of it as the printed text. But they did not thereby copyright the cut as a cut. The. statute not only makes provisions for copyrighting cha.rts, prints, cuts, engravings, etc., but. makes a distinction between infringement of a book and of a cut, engraving, etc. A book is infringed by printing, publishing, importing, selling, or exposing for sale any copy of the book. Section 4964, Rev. St. A chart, print, cut, engraving, etc., is infringed by engraving, etching, working, copying, printing, pub· lishing, importing, selling, or exposing for sale a copy of the chart, cut, etc. Section 4965. It would not be infringement of a book, within these sections, to prepare and arrange the type in exact imitation of the original, so that a copy of the hook might be produced by printing; nor would it be to sell the means of making such a copy to another. The printing and publishing of a cut is an infringement of copyright as well as the printing and publishing a book; but the copying without printing or publishing is infringement only as to the cut, chart, print. engraving, etc. The qnestion here is not whether the defendant has infringed the plaintiffs' copyright in a cut; but whether he has infringed their copyright in their book by making a plate from which a copy of a portion of their book could be produced, and selling the plate to another. The copyright of a book is not always invaded by reproducing a part of the work. Where portions are extracted and published in a book or newspaper by another, the question whether there has been a piracy depends upon the extent and character of his use of them. Thus it is not piracy for a reviewer or commentator to make use of portions of a copyrighted work for the purposes of fair exposition or reasonable criticism. The question always is whetherthere is a substantial identity between the original book and the reproduction, or, as it is sometimes expressed, whether there has been an appropriation substantially of the labors of the original author. The law does not tolerate an appropriation which tends to supersede the original. A test frequently applied is whether the extracts, as used, are likely to injure the sale of the original work. See Black v. Mttrray, 9 Scotch Sess. Cas. (3d Ser.) 356. In the language of the court, in Story's Ex'rs v. Holcombe, 4 McLean, 308:
"The inquiry is, what effect must the extracts have upon the original work? If they render it less valuable by superseding its use in any degree, the right of the author is infringed, and it can be of no importance to know with what intent this was done."
HARPER V. SHaPPELL.
Applying this test here, it is not altogether clear that the proprietors of the Illustrated Times infringed the plaintiffs' rights, although they published the cut in a competing newspaper. In Bradbury v. Hotten, L. R. 8 Exch. 1, the piracy complained of was the publication of nine caricatures of Napoleon IlL, originally printed separately in numbers of Punch, issued within the period of 1849 to 1867. The court found that the defendant had republished them "for the same purpose as they were originally published, namely, to excite the amusement of bis readers," and therefore that piracy was made out. It was doubted in that case whether the publication of a single picture would have been piracy. KELLY, C. B., said:
" It is said that the copying of a single picture, at all events, would not be an infringement of the plaintiffs' copyright; but it is impossible to layihat down as a general rule."
It is not necessary to determine the question here. Assuming that the publishing of a single poem or article onilustration from the copyrighted newspaper may be piracy, the defendant has not done this. The reproduction of the cut and the sale of the stereotype plate, without more, treating those acts as using an extract from the plaintiffs' newspaper, could not injure the plaintiffs, or interfere to any appreciable extent with the profits they could derive from the sale of their copyrighted publication. The cut was capable of use innocently in various ways, having no relation to the publication and sale qf a newspaper. If the defendant had sold the electrotype plate, intending or even expecting the purchasers to use it in competition with the plaintiff, he might be regarded as having sanctioned that use in advance, and consequently as occupying the position of a party acting , in concert with them and responsible with them as joint tort-feasors. Wallace v. Holmes, 9 Blatchf. 65. Thus it was held in De Kuyper v. Witteman, 23 Fed. Rep. 871, that a defendant who had printed and sold labels in imitation of a trade-mark, with the purpose of enabling the parties to whom he sold them to palm off their goods upon the public as those of the owner of the trade-mark, was an infringer. There is noevidence, however, in this case that the defendant contemplated that the purchasers would make any illegitimate use of the plate. They could have used it, as he could, to print a trade-mark or an advertising cut, or in other ways which could not interfere with the sale of the plaintiffs' newspaper. The law will not assume without evidence, or simply upon proof that the defendant sold the plate to the proprietors of a newspaper,. that he intended to authorize a violation of the plaintiffs'rights. Averill v. Williams, 1 Denio, 50l. The defendant has copied the cut, but he has not printed or pub. lished it, nor has he exposed for sale any printed or published copy of any part of the plaintiffs' newspaper. Judgment is therefore ordered for the defendant.
RAILWAY REGISTER MANUF'G CO.
V. CENTRAL PARK,
N. & E. R. E.
(OVrcuit Oourt, S. D. New York.
L PATENTS FOR INVENTIONS-DEVICES SHOWN BUT NOT CLAIMED IN PRIOR PATENT TO SAME INVENTOR. Ransom filed an application for a patent for fare-registers, July 12, 1879, which was subsequently divided into divisions A and B. A patent was issued on division A, April 20, 1880. The claims sued on in this case were added to division B, by amendment, September 27, 1881. never having been made before. The subjects-matter of these claims arose upon. belonged with, and were not separable from, the things which remained in division A. Defendants' devices. which were alleged to infringe these claims, were made under a patent to Reuben M. Rose. the application for which was filed nine or ten months after Ransom's patent on dIvision A was issued. and more than seven months before the claims in controversy were inserted in division B. Hetd, that the question whether Ransom could have a valid patent for the claims sued on is not like that as to inventions of distinct parts of machines described, but not claimed, in applications for inventions of other parts, as in Graham v. McOormick, 11 Fed. Rep. 859, and Vermont Farm Machine 00. v. Marble, 19 Fed. Rep. 807. I. SAME-REISSUE-ABANDONMENT OF InVENTION. One reason why a patentee cannot have a valid reissue to cover parts of his invention described and not claimed, when the omission to make claim is not eaused by inadvertence, accident, or mistake, is because the parts of the invention not claimed are by this course abandoned to the pUblic, and the right to claim them is gone. S. SAME-SECTION 4920, REV. ST. The defense of abandonment to the public is not confined to reissued patents, but is given generally by the statute to all patents. 4. SAME-INTERVENING RIGHTS OF THE PUBLIC. Where a patentee shows and describes, but does not claim, in his patent cer· tain features of his invention, he cannot have valid claims for these features in a subsequent patent, if the rights of the public have intervened. Ii. SAME-BENTON PATENT, No. 260.526, JULY 4, 1882-FARE-REGISTER. This 1?atent sustained on reargument, (former decision 22 Fed. Rep. 656;) and the mventor being shown to have made the invention at least before September 22, 1877, he is not anticipated by the English patent to William Robert Lake, sealed November 14. 1877, as the date of sealing is understood to be the time when it became patented under the laws. 8. SAME-'-ExPERIMENTAL USE IN PUBLIC. A public use, for the purpose of ascertaining the completeness of a device, for more than two years prior to the application, will not defeat a patent. 7. SAME-CONSTRUCTION OF CLAIMS-INFRINGEMENT. A patented invention is to be construed in view of what existed at the time it was made: and all things are infringements that are brought out afterwards, and come within its scope.
In Equity. Edward N. Dickerson, Jr., for orator. John Dane, Jr., and John F. Dillon, for defendants. WHEELER, J. These causes have been once before heard ana decided. 22 Fed. Rep. 656. They have been opened for further proof,
'Reported bv Charles C. Linthicum, Esq., of the Chicago bar.