Argument for Plaintiff in Error.

215 U.S.

CALIGA v. INTER OCEAN NEWSPAPER COMPANY.

ERROR TO THE UNITED STATES CIRCUIT COURT OF APPEALS FOR THE SEVENTH CIRCUIT.

No. 22. Argued November 5, 1909.-Decided November 29, 1909.

Statutory copyright is not to be confounded with the exclusive property of the author in his manuscript at common law.

In enacting the copyright statute Congress did not sanction an existing right but created a new one dependent on compliance with the statute.

Under existing copyright law of the United States there is no provision for filing amendments to the first application; and, the matter being wholly subject to statutory regulation, copyright on a second application cannot be sustained.

The statutory limit of copyright cannot be extended by new applications.

157 Fed. Rep. 186, affirmed.

THE facts are stated in the opinion.

Mr. Otto Raymond Barnett, with whom Mr. Clarence T. Morse was on the brief, for plaintiff in error:

Copyright exists at common law as an incident to ownership. It may be lost by publication. The copyright statutes specify what steps must be taken to avoid such loss upon publication. Myers v. Callaghan, 5 Fed. Rep. 726; Wheaton v. Peters, 8 Peters, 591; Board of Trade v. Commission Co., 103 Fed. Rep. 902; Millar v. Taylor, 4 Burr. 2303; Donaldson v. Becket, 4 Burr. 2408.

Copyright law is to be construed liberally and beneficially. Nothing but a general publication or an express surrender of his rights will affect a proprietor's common-law copyright property. Allan v. Black, 56 Fed. Rep. 754; Myers v. Callaghan, 128 U. S. 617.

A general publication is one which gives an express or implied right to copy the thing published.

An exhibition of a painting under conditions which do not

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Argument for Plaintiff in Error.

give to the public a right to copy does not amount to a general publication. Ladd v. Oxnard, 75 Fed. Rep. 730; Werckmeister v. American Lithographic Co., 134 Fed. Rep. 321.

A deposit of a photograph in the Library of Congress in compliance with the copyright statutes merely serves to identify the thing to be copyrighted and, not giving any express or implied right to copy, does not amount to a publication.

Under the statute the only condition which will prevent obtaining a copyright is prior publication. Rev. Stat., §§ 4952, 4956. A copyright registration may be abandoned by failure to publish within a reasonable time after such registration. In such event the common-law right never ceases. Boucicault v. Hart, Fed. Cas. No. 1,692; Carillo v. Shook, Fed. Cas. No. 2,407.

If, therefore, a registration may be abandoned by failure to publish within a reasonable time, it may also be abandoned by a subsequent re-registration in the absence of any intermediate publication. Osgood v. Aloe Inst. Co., 69 Fed. Rep. 291.

Common law copyright and statutory copyright cannot coexist, the first only terminates upon a general publication, the second only begins upon a general publication. Prior to such publication, common-law copyright remains unimpaired notwithstanding any registration which may have been made with the Librarian of Congress for the purpose of obtaining the protection of statutory copyright. Bobbs-Merrill Co. v. Straus, 210 U. S. 339, 347; Press Publishing Co. v. Monroe, 164 U. S. 105; Boucicault v. Hart, Fed. Cas. No. 1,692; Carillo v. Shook, Fed. Cas. No. 2,407.

The title of a copyrighted publication must correspond with the title filed for purpose of copyright with the Librarian of Congress. Mifflin v. White, 190 U. S. 260.

The copyright statute providing a penalty for infringement is in form penal, but is remedial in intent. Dwight v. Appleton, Fed. Cas. No. 4215.

Plaintiff's only legal remedy for copyright infringement is

Argument for Defendant in Error.

215 U.S.

under Rev. Stat., § 4965, for the penalty there provided. Walker v. Globe Newspaper Co., 130 Fed. Rep. 594.

Publication by a licensee of a copyrighted work without marking such reproduction "copyrighted," etc., does not invalidate the copyright. Press Assn. v. Daily Story Co., 120 Fed. Rep. 766.

Any unauthorized reproduction of a copyrighted painting, or of the substance thereof, whether by a newspaper cut or otherwise, is an infringement of the copyright. Werckmeister v. P. & B. Mfg. Co., 63 Fed. Rep. 445, 449; Schumacher v. Schroenke, 30 Fed. Rep. 690; Falk v. Donaldson, 57 Fed. Rep. 32; Springer Co. v. Falk, 59 Fed. Rep. 707; Sanborn Co. v. Dakin Co., 39 Fed. Rep. 266.

The variance between the date of copyright registration pleaded under a videlicet, and the dates proven was not fatal, even if the registration of November, 1901, were a nullity. Greenleaf on Evidence, § 61; Stephen on Pleading, 292; Rawle's Bouvier, 1195; 1 Chitty Pl. 257; Allen v. Black, 56 Fed. Rep. 754; Myers v. Callaghan, 128 U. S. 617; Salt Lake City v. Smith, 104 Fed. Rep. 467; Wheeler v. Read, 36 Illinois, 85; Beaver v. Slanker, 94 Illinois, 175, 185; Reinback v. Crabtree, 77 Illinois, 188; Long v. Conklin, 75 Illinois, 33; United States v. Le Baron, 4 Wall. 648; Taylor v. Bank of Alexandria, 5 Leigh (Va.), 512; Martin v. Miller, 3 Missouri, 99; Henry v. Tilson, 17 Vermont, 479.

Mr. James J. Barbour, with whom Mr. Clarence A. Knight was on the brief for defendant in error:

Where two copyrights of the same painting are procured by the painter thereof, the second copyright is void. Mifflin v. Dutton, 112 Fed. Rep. 1004; Lawrence v. Dana, 15 Fed. Cas. No. 8,136; Black v. Murray, 9 Sc. Sess. Cas., 3d Ser., 341; Thomas v. Turner, 33 Ch. Div. 292; Scrutton, Law of Copyright, 119; Drone on Copyright, 146; Macgillivray on Copyrights, 27.

A patentee cannot have two patents for the same inven

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Argument for Defendant in Error.

tion. 22 Am. & Eng. Ency. 314; Miller v. Eagle Mfg. Co., 151 U. S. 186; Suffolk Co. v. Hayden, 3 Wall. 315; James v. Campbell, 104 U. S. 356; Mosler Safe Co. v. Mosler, 127 U. S. 354; McCreary v. Pa. Canal Co., 141 U. S. 459; Underwood v. Gerber, 149 U. S. 224.

The reasons are that the power to create a monopoly is exhausted by the first grant, and a new patent for the same invention would operate to extend the monopoly beyond the period allowed by law. Odiorne v. Amesbury Nail Factory, 2 Mason, 28; Miller v. Eagle Mfg. Co., 151 U. S. 186.

Whatever rights are possessed by the proprietor of a copyright are derived from the copyright act and not from the common law. White-Smith Music Co. v. Apollo Co., 209 U. S. 1; S. C., 147 Fed. Rep. 226; Bobbs-Merrill Co. v. Straus, 210 U. S. 339; S. C., 147 Fed. Rep. 15; Globe Newspaper Co. v. Walker, 210 U. S. 356; Wheaton v. Peters, 8 Pet. 591; Stevens v. Glading, 17 How. 447; Banks v. Manchester, 128 U. S. 244; Thomas v. Hubbard, 131 U. S. 123; Holmes v. Hurst, 174 U. S. 82; Palmer v. DeWitt, 47 N. Y. 532.

The painting was published prior to the date of the application for the copyright of November 7. The procurement of a copyright is a publication within the meaning of the statute, and vitiates a later copyright. Jewelers' Agency v. Jewelers Pub. Co., 155 N. Y. 241; Bobbs-Merrill Co. v. Straus, 147 Fed. Rep. 15.

The selling or offering for sale of photographs of a painting is a publication of the painting. Am. Tobacco Co. v. Werckmeister, 146 Fed. Rep. 375.

Compliance with the statutory requirement that the notice of copyright shall be placed upon all copies sold must be pleaded and proved as a prerequisite to an action for recovery of penalties for an infringement of the copyright. Ford v. Blaney Amusement Co., 148 Fed. Rep. 642; Falk v. Gast Lith. & Eng. Co., 40 Fed. Rep. 168; Mifflin v. Dutton, 190 U. S. 265; Higgins v. Keuffel, 140 U. S. 428; Thompson v. Hubbard, 131 U. S. 123.

Where a painter by repainting a copyrighted picture effects a substantial change, the original copyright does not protect the picture as repainted. Rev. Stat., § 4959, and see Fed. Stat. Ann.; Lawrence v. Dana, 15 Fed. Cas. No. 8,136; Drone on Copyrights, 146; 9 Cyc. 924.

In an action to recover for an infringement of a copyright it must be shown that the publication complained of is a copy of or copied from the copyrighted painting. Reproduction of a copyrighted photograph of a painting is not an infringement of the copyright on the painting. Champney v. Haag, 121 Fed. Rep. 944.

The insertion or impression of a copyright notice upon a painting before applying for a copyright is prohibited. Rev. Stat., § 4963, and see Fed. Stat. Ann.

A variance can only be where there is a clear discrepancy between averment and proof. 29 Am. & Eng. Ency. 580; Walford v. Anthony, 21 E. C. L. 75.

A brief by Mr. E. L. Coburn and Mr. Josiah M. McRoberts was filed by leave of the court for the Tribune Company as amicus curia to which a reply brief was filed by the counsel for plaintiff in error.

MR. JUSTICE DAY delivered the opinion of the court.

The plaintiff in error, also plaintiff below, brought an action in the Circuit Court of the United States for the Northern District of Illinois to recover damages under § 4965 of the Revised Statutes of the United States, because of the publication by the defendant of more than one thousand copies of a newspaper containing a picture of a painting, copyrighted by the plaintiff. The plaintiff alleged that he had in all respects complied with the Revised Statutes of the United States by causing to be deposited, on or about the fifth day of November, 1901, a photograph and a description of the painting for the purpose of having it copyrighted, which deposit was before