Paige v. Banks

1. Where in consideration of an agreement by publishers to pay him a certain sum of money, nnd the performance of specified duties in connection with the publication, a reporter of judicial decisions agreed in 1828 “ to furnish in manuscript the reports of his court for publication,” with an additional clause that the “ publishers shall have the copyright of said reports, to them nnd their assigns forever,” held, on bill filed by the reporter’s executrix for injunction, and account of profits after the expiration of twenty-eight years from the entry of copyright (A.D. 1830), that the publishers had a full right of property in the manuscript; and accordingly that they could publish not only for the twenty-eight yenrs during which the act of May 81st, 1790 (the only copyright act in force when the agreement was made), gave an author and his assigns the exclusive right to print, reprint, publish, and vend, but also during the fourteen years granted by an act of 8d February, 1831, subsequently passed, by which the exclusive right was continued to the author if alive, or if dcud to his widow, child, or children; the reporter not having died till 1868. 2. Held, further, that this view was confirmed by the fact that a notice had been given in 1858, by the reporter to his publishers, that he himself claimed the right to publish on the expiration of the first twenty-eight years, and forbid them to publish further, and that they in reply denied his right and asserted their own, nnd that though the reporter lived, as already said, till 1868, ten years after this correspondence, no further notice was taken of this subject, and no attempt by the reporter, by act or protest, to interfere with the exercise of the right of the publishers to publish and sell.

Appeal from a decree of the Circuit Court for the Southern District of New York; the case being thus: Congress by a copyright law of 81st May, 1790,* enacted that the author and authors of any book or books, “ and his or their executors, administrators, or assigns,” should have the sole right and liberty of printing, reprinting, publishing, and vending such book or books for the term of fourteen years. And if, at the expiration of the said term the said author or authors should be alive, that the same exclusive right should be continued to him or them, “ his or their executors, administrators, or assigns, for the further term of fourteen years.” With this law in force as governing the subject of copyrights, the late Mr. Alonzo Paige, of New York, reporter of its Court of Chancery, entered, on the 7th of October, 1828, into an agreement with Gould & Banks, law publishers of that State, thus: “ That the said Alonzo during the term of five years from the 28th of April last, shall and will furnish the said Gould & Banks, in manuscript, the reports of the said court for publication, and that the said Gould & Banks shall have the copyright of said reports to them and their heirs and assigns forever. “ And the said Gould & Banks agree to and with the said Alonzo, that they will publish said reports in royal octavo volumes of between 600 and 700 pages, on paper and type suitable for such a work; that they will deliver to the said Alonzo twelve copies free of expense; that they will sell said reports to the members of the bar of New York at a sum not exceeding $6 per volume, bound in calf, for each volume they shall so sell within one year next subsequent to the publication of such volume. “ And the said Gould & Banks agree to pay to the said Alonzo $1000 per volume for every volume they shall publish, and at the same rate for less than a volume, within six months after the publication of each volume. “It is understood that the said Alonzo is to read and correct the proof-sheets of said reports as the same are furnished him.” Mr. Paige did accordingly furnish to Gould & Banks the manuscript of the volume known as 1st Paige’s Chancery Reports; and on the 5th of January, 1830, Gould & Banks took out the copyright therefor in their own names. On the 3d of February, 1831, that is to say, about two years and a half after the date of the agreement between the parties, Congress amended the copyright law,* enlarging the rights of copy. The new statute enacted: “That Whenever a copyright shall have been heretofore obtained by an author ... of any book, &c., if such author ... be living at the passage of this act, then such author . .. shall continue to have the same exclusive right to his book,. .. with the benefit of each and all the provisions of this act for the security thereof, for such additional period of time as will, together with the time which shall have elapsed from the first entry of said copyright, make up the term of twenty-eight years. “ That if at the expiration of the aforesaid term of years, such author... be still living, and a citizen ... of the United States, or resident therein, or being dead, shall have left a widow, or child, or children, either or all then living, the same exclusive right shall be continued to such author; ... or if dead, then to such widow and child or children for the further term of fourteen years.” The twenty-eight years of right given by the act of 1790, expired on the 5th of January, 1858. Gould & Banks conceiving themselves to be entitled to renewal under the act of 1831, on the 3d of October, 1857, went through the usual process to secure a copyright for the extended term. Mr. Paige, on the 3d of January, 1858, conceiving that the extension enured to his benefit, did the same, and on the 13th following informed Gould & Banks that he had thus renewed his copyright, and calling their attention to the fact, that by this renewal “ all right on their part to print, publish, or vend volume first of his reports had ceased,” and calling on them “henceforth to refrain from .printing, publishing, or vending it.” ' To this Gould & Banks, referring to the contract of October 7th, 1828, reply: “ First. Your manuscripts were furnished to us for publication without limit as to time, and, therefore, whatever be your rights under the law of 1831, we have an unlimited license to publish and sell. “ In the second place, where the entire interest in the copyright has been assigned, we consider the provisions of the act of 1831 to have been intended to enure to the benefit of the assignee.” They accordingly notify to Mr. Paige that they shall themselves take out all of the renewals of the copyright., “and hold him liable for all damages consequent on any infringement of their rights.” Things remained in this state till March 81st, 1868, when Mr. Paige died; and in about ten months afterwards, and after some correspondence with a view to amicable adjustment, his executors filed a bill for injunction against further printing and vending, and for an account of profits after January, 1858. The court below (Blatchford, J.) dismissed the bill,* and the executors of Mr. Paige appealed to this court. The intention of the parties, to be collected from the whole agreement, was simply to convey the copyright, though it may be admitted for the sake of argument that the agreement contains provisions sufficient to create a license if the copyright had not been specifically conveyed. Now, this thing called “ copyright” is, so far as the law recognizes it, or so far as it is a matter of practical value and of sale, a creature of statute. A man has no more “copyright” than what the statute gives him. When this agreement was made Mr. Paige had the exclusive right in himself and in his assigns to print, publish, and sell, at the longest for a term of tweuty-eight years; aud no greater or additional right. That assuredly is what he meant to sell, and all that he meant to sell. Now a new statute—one not dreamt of by any one in 1828—gives to Mr. Paige subsequently a new and different sort of right. How can it be said that Mr. Paige meant to assign that when he assigned the'other? There are no words in his agreement such as “ whatever copyright he may hereafter have granted to him;” by which it might be inferred that he meant to part with more property than he had; an inference not to be made easily in any case. Questions have arisen often in the kindred case of patents, how far a grant of a patent right carried a subsequent extension of it. In Wilson v. Rousseau* a covenant by the patentee prior to the patent act of 1836, which authorized extensions, that the covenantee should have the benefit of any improvement in the machinery, or alteration or renewal of the patent, was held not to exclude an extension by an administrator under that act; and this court was not unanimous in holding that au extension passed even in such a case as Railroad Company v. Trimble,† where a patentee conveyed all the right, title, and interest which he had iu the “same invention,” as secured to him by letters-patent, and also all “ the right, title, and interest which may be secured to him from time to time, the same to be held by the assignee for his own use and for that of his legal representatives, “to the full end of the term for which said letters are ou may be granted.” 2. The copyright act of 1790 gives the right to the author and to his assigns. The act of 1831 which created this new term, gives it specifically to the author if living, to his family if he is dead. Assignees are not mentioned in it, nor provided for. It looks much as if Congress in this case had meant specially to take care of men. of literary genius; often as we know not men of business, and, therefore, subject to be hardly dealt with by the trade. A book is rarely much demanded after it has been published twenty-eight years. Some books, the works of men of high genius, are as much so or more than ever. The provision seems specially to have been for the authors of them; and for their families; just as Congress by various acts provides for our soldiers, our occupants of bounty lands, making very liberal provision for them and for their families, but declaring that their vendees shall take nothing. Mr. Gr. T. Curtis, in his work on Copyright,‡ questions whether the author by any assignment could dispose of the contingent interest, given by the act f 1831, so as to deprive his widow and children of the right in case of his death. A similar provision in the patent law has been construed by this court against the right.* "We have the benefit of the views on the circuit by Mr. Justice Nelson, in the case of Cowen v. Banks,† in support of the position which we take. There the reporter Cowen had assigned in 1823 to this same house of Gould & Banks, the copyright of his reports by an instrument like the present one.‡ He lived till 1844, that is to say, three years after the expiration of his first term of copyright. The executrix of the reporter after his death claiming the fourteen years of the extended term of twenty-eight years, given by statute of 1790, to authors or their assigns, filed a bill for injunction and account. His honor, Judge Nelson, aftercareful considera tioft, decided in her favor. It is true indeed that he decreed ultimately in favor of the publishers, on a cross action brought by them to amend the agreement, so as to convey all the interest of Mr. Cowen in the extended term. On the hearing of that cross-bill a deposition of Mr. Cowen given in a prior suit brought by the publishers against one Hastings, as a violator of the copyright, was read in evidence. In this deposition Mr. Cowen testified “that it was Ms intention, by the agreement, to convey Ms whole interest in the copyright of the work,” and he added: “I supposed the book to belong to my assignees, as soon as made, including all that was in it. I would not have taken the office of reporter, with its salaries and duties, unless I was to have a proprietary right which I could use or dispose of.” The present case is much stronger than that of Mr. Cowen, for the term claimed by his representatives, was the second term granted by the statute of 1790, in case the author lived through the first fourteen years; a term gran table under the statute to assigns; while what we have claimed is the extension granted by the statute of 1831, an extension conferred on tbe author and his family, and where the rights of assigns seem to have been carefully excluded.