Stevens v. Gladding et al.

tion whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said circuit court in this cause be and the same is hereby affirmed, with costs.

JAMES STEVENS, APPELLANT, v. ROYAL GLADDING AND ISAAC T. PROUD.

Whether patent-rights and copyrights, held under the laws of the United States, are subject to seizure and sale on execution, is a question upon which the court does not express an opinion in the present case.

*The seizure and sale, under execution, of "one copperplate for the *448] map of the State of Rhode Island," did not carry with it the right to print and publish the map.

It is distinguishable from a voluntary sale of a plate by the owner thereof. The ownership of a plate and the ownership of the copyright are distinct species of property; and the plate may be used without infringing upon the copyright of printing and publishing the map.1

But the penalties imposed by the 7th section of the act of congress, passed on the 3d of February, 1831, namely, the forfeiture of the printed copies and the sum of one dollar for each sheet unlawfully printed, cannot be enforced in a court of equity.

Under a prayer for general relief, the court can decree for an account of profits. This right is incident to the right to an injunction in copy and patent-right cases.2

THIS was an appeal from the circuit court of the United States for the district of Rhode Island.

It was a branch of the case of Stevens v. Cady, reported in 14 How., 528, and the difference between the two cases is stated in the opinion of the court.

The decree of the circuit court was as follows:

Decree.

This cause came on to be heard on the bill, answer, replication, depositions, and other papers in the case, and after the hearing, it is ordered by the court that the following entry be made on the minutes in relation to the same:

"The court differ in opinion as to the effect of the sale of the copperplate, but agree that injunction cannot issue without a return of the money paid for the plate."

And afterwards, at the same term, Mr. Stevens having the

1 RE-AFFIRMED. Patterson v. Kentucky. 7 Otto, 506.

2 This case is also referred to in Gordon v. Anthony, 4 Bann. & A., 259; Atwood v. The Portland Co., 10 Fed. Rep., 284; Chapman v. Ferry, 12

Id.. 695; s. c., 8 Sawy., 193; Wilder v. Kent, 15 Id., 219; Silas Farmer v. Calvert Printing, &c. Co., 1 Flipp., 232; Murray v. Ager, 1 Mack., 89, 91; Carver v. Peck, 131 Mass., 292, 294; Tompkins v. Halleck, 133 Mass., 36.

Stevens v. Gladding et al.

election to return the price of the plate or not, elected not to return the same, upon which the respondents move that the bill be dismissed, which is dismissed as follows:

This cause having been heard on the bill, answer, and other pleadings therein, and the complainant having refused to return the price of the plate of the map in question as required by the court:

It is now, on motion of the respondents, and by the consideration of the court, ordered, adjudged, and decreed, that the said bill be and the same is hereby dismissed, with costs. November term, A. D. 1849.

From this decree, Stevens appealed to this court.

It was submitted on a printed argument by the appellant, and argued by Mr. Ames, for the appellees.

Mr. Ames made the following points:

1. The 7th section of the act of congress, approved February 3, 1831, entitled "An act to amend the several acts respecting copyrights," (4 Stat. at L., 438,) inflicting forfeiture and penalties upon those who shall sell any map, &c., "without the *consent of the proprietor or proprietors of the copy

right thereof, first obtained in writing, signed in the [*449

presence of two credible witnesses," applies only to persons claiming the right of sale by act of party, and not to those claiming and proving such right by act or operation of law. 4 Stat. at L., 435, § 1; Hesse v. Stevenson, 3 Bos. & P., 565, 578; Bloxam v. Elsee, 1 Carr. & P., 578; S. C. 11 Eng. Com. L., 468; S. C. in Error, 6 Barn. & C., 69; S. C. 13 Eng. Com. L., 133; Cartwright v. Amatt, 2 Bos. & Pul., 43; Sawin et al. v. Guild, 1 Gall., 485; Wilson v. Rousseau, 4 How., 646; Webster on Patents, 21-23, 82, n. n.; Godson on Patents and Copyright, (2d ed.,) 219, 221, 377, 430; 2 Renouard Traité des Droits d'Auteurs, ch. 3, § 4, arts. 204, 205, p. 348, and onwards.

2. Copyrights and patent-rights are, by the law of England, and in conformity to the principles of justice and policy prevailing there, as well as in countries of the civil law, liable, as goods and chattels, to the payment of the debts of the authors or inventors who may hold them. As goods and chattels they pass to assignees in bankruptcy, and to provisional assignees in insolvency, as "the assignees" or "representatives" of the bankrupt or insolvent author or inventor; and, both in England and in France, may be seized and sold on execution or decrees of seizure issued against him. Hesse v. Stevenson,

Stevens v. Gladding et al.

supra; Bloxam v. Elsee, supra; Cartwright v. Amatt, supra; Mary York v. Twine, Cro. Jac., 78; Sewall, Office of Sheriff, 225, 46 Law. Lib.; Webster on Patents, 21-23; Godson on Patents and Copyright, 219, 221, incl. 430; Renouard Traité des Droits d'Auteurs, 348, 349, &c., ch. 3, § 4, arts. 204, 205.

3. After an author has printed his book, or map, in performance of the contract of copyright with the public, and it has thus passed from the condition of a thought or conception still under deliberation, as well as after a patented machine has been completed and sold by the inventor, in fulfilment of the contract of his letters-patent, and he has, in any manifest form, clothed his incorporeal right with a valuable corporeal substance, and, abstracting other values for the purpose, has brought it into the condition of property, in the nature of a personal, tangible good or chattel, he thereby has made the right to use and sell the same, appurtenant thereto; and public policy, common honesty, attention to the true interests of the author or proprietor of the copyright, as well as of his creditors, and every legal analogy, require that the two should not be dissevered for the purpose of enabling him to defeat the rights of his creditors, sought through the remedies provided by law. Wilson v. Rousseau, 4 How., 682, 684; Bloomer v. McQuewan et al., 14 Id., 549, 550, 553, 554; *2 Re*450] nouard Traité des Droits d'Auteurs, 348, and onwards, ch. 3, § 4, arts. 204, 205.

4. That the engraving of a map upon copperplate brings it fairly within the principle and policy, that the proprietor having made the right to use the plate appurtenant to the same, and to the right of property therein, such right will pass with the right of property in the plate, whenever that right passes by act or operation of law in forms appropriate to such act or operation.

5. That, at least, the condition of relief annexed by the court below was, under the circumstances of this case, a perfectly equitable one, and, upon non-compliance therewith by the complainant, the bill ought to have been, as it was, dismissed with costs. Origin of rule imposing terms of relief on complainant. 1 Spence, Equitable Jurisdiction of Chancery, 216, 422, 423, and notes. Though equity cannot relieve against common law or statute penalties and forfeitures, (Peacy v. Duke of Somerset, 1 Str., 447; Keating v. Sparrow, 1 Ball & B., 372, 373, 374,) yet it does, in the case of usurious bonds and instruments, grant relief against them only on condition of payment of the principal and legal interest of the amount borrowed; in other words, only upon waiver of the statute forfeitures. 1 Story Eq. Jur., 64 c. and cases cited;

Stevens v. Gladding et al.

Rogers v. Rathbone, 1 Johns. (N. Y.) Ch., 365; Tupper v. Powell, Id., 439; Morgan v. Schermerhorn, 1 Paige (N. Y.), 544; Livingston v. Harris, 3 Id., 528; Campbell v. Morrison, 7 Id., 158; Judd v. Seaver, 8 Id., 548; Cole v. Savage, 10 Id., 588.

Mr. Justice CURTIS delivered the opinion of the court. The appellant filed his bill in the circuit court of the United States for the district of Rhode Island, to restrain the defendants from printing and publishing a map of that state, whereof he claimed to be the exclusive proprietor, under the act of congress of February 3, 1831, concerning copyrights of maps, &c. The defendants admit that they have sold such maps, but allege that a copperplate, owned by the plaintiff, was duly sold on an execution which issued on a judgment recovered against the plaintiff, in the court of common pleas for the county of Bristol, in the state of Massachusetts, and that one Isaac H. Cady was the purchaser of the plate under that sale; that Cady has used the plate to print the said maps, and the defendants have sold them; and they insist that, by the purchase of the copperplate, Cady acquired the right to print maps therewith, and to publish and sell them; and that, therefore, the defendants have not infringed on any exclusive right of the complainants.

By reference to the case of Stevens v. Cady, reported in 14 How., 528, it will be seen that the same title, now asserted by these defendants, was tried on that case, between the [*451 complainant and Cady. But, as is stated in the report of that case, no counsel then appeared or was heard in support of Cady's title; and Mr. Justice Woodbury, who sat in the cause in the circuit court, having deceased, this court was not apprised of the grounds and reasons on which the decree of that court dismissing the bill rested; and when this cause was called, counsel having appeared and desired to be heard, though he frankly avowed that the question passed on in the former case was the only one which could be raised, the court readily assented, and, having now considered the argument of the respondent's counsel, the court directs me to state its opinion in the cause.

The positions assumed by the respondent's counsel are, that copy and patent-rights are subject to seizure and sale on execution; and that, whenever the owner of a copyright of a map causes a plate to be made which is capable of no beneficial use except to print his map, he thereby annexes to the plate the right to use it for printing that map, and also the right to publish and sell the copies when printed; and that when the plate

Stevens v. Gladding et al.

is sold on execution, these rights pass with the plate, and as incidents or accessories thereto, though no mention is made of them in the sale.

There would certainly be great difficulty in assenting to the proposition that patent and copyrights, held under the laws of the United States, are subject to seizure and sale on execution. Not to repeat what is said on this subject, in 14 How, 531, it may be added that these incorporeal rights do not exist in any particular state or district; they are coextensive with the United States. There is nothing in any act of congress, or in the nature of the rights themselves, to give them locality any where, so as to subject them to the process of courts having jurisdiction limited by the lines of states and districts. That an execution out of the court of common pleas for the county of Bristol, in the state of Massachusetts can be levied on an incorporeal right subsisting in Rhode Island, or New York, will hardly be pretended. That by the levy of such an execution, the entire right could be divided, and so much of it as might be exercised within the county of Bristol, sold, would be a position subject to much difficulty.

These are important questions, on which we do not find it necessary to express an opinion, because, in this case, neither the copyright, as such, nor any part of it, was attempted to be sold. The return of the officer on the execution is, that he seized and sold "one copperplate for the map of the state of Rhode Island." The defendants must, therefore, stand upon the second position assumed by their counsel, that the right to *452] with the plate. *print and publish the map passed by the execution sale

There are no special facts in this case to distinguish it from any case of a sale on execution of copper or stereotype plates. It appears that the plaintiff owned the plate; whether he made it, or caused it to be made, or purchased it after it had been made, does not appear.

Nor should the case be confounded with one where the owner of copper or stereotype plates sells them. What rights would pass by such a sale would depend on the intentions of its parties, to be gathered from their contract and its attendant circumstances. In this case, the owner of the copyright made no contract of sale, and necessarily had no intention respecting its subject-matter.

The sole question is, whether the mere fact that the plaintiff owned the plate, attached to it the right to print and publish

1 QUOTED. Ager v. Murray, 15 Otto, 129, 130.