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IV. Extended argument to show that the fourth proposition of the respondents cannot be sustained, is unnecessary, as it finds no support in the evidence. Founded as the proposition is upon the theory that the foreign publisher was willing to pay the money for antecedent obligations, or as a gratuity to the family of the author, it is sufficient answer to it to refer to what is said in response to the preceding proposition without entering into details.

V. Next proposition of the respondents is, that the copyrights of the editions of 1855 and 1863 are void, and consequently that the agreement expressed in the memorandum is inoperative, inasmuch as the parties entered into the same through mutual mistake. They insist that the copyrights are void for several reasons, which will be separately considered : First, because no written assignment of copyright, or of the inchoate right of the complainant thereto, as the author, was ever made to Mrs. Wheaton.” Second, because the “notice of copyright inserted in the several copies published of said editions” is defective, “ in the omission to give notice in said editions of the copyright secured in the ” original edition of the work. Third, because, upon the facts alleged and proved by the complainant, the copyrights of the editions in question were not taken out by the proper person, nor in the proper district.

Copyright may be granted under the copyright act to the author of any book falling within the classes described in the first section of the act, if the author is a citizen of the United States or permanently resident therein ; and the first section also provides that such author shall have “ the sole right and liberty of printing, reprinting, publishing, and vending such book," for the term of twenty-eight years from the time of recording the title of the same as therein required. Executors, administrators, and legal assigns of the author are also included in the purview of the section ; but the fourth section provides that no person shall be entitled to the benefit of the act unless he shall, before publication, deposit a printed copy of the title of such book in the clerk's office of the district court of the district where the author or proprietor shall reside; and the provision is that the clerk of such court shall record such printed copy forthwith in a book to be kept for that purpose, and in the form therein prescribed. 4 Stat. at Large, 437. Where the author continues to be the owner he is entitled to a copy of the title ; but if he has parted with the ownership, the requirement is that the clerk of such district shall give a copy of the title under the seal of the court to the proprietor. Ib. 437. Proprietors of any such book, though not authors, are also recognized as entitled to the benefits of the act in another provision of the fourth section, in which they are required within three months from the publication of said book to deliver, or cause to be delivered, a copy of the same to the clerk of said district. Legal proprietors, though not authors, may also recover of persons who print or publish any manuscript, the property of which is in them, without their consent, all damages occasioned by such injury. Stevens v. Gladding, 17 How. 447. See also 4 Stat. at Large, 437, 439, $$ 6, 15.

Left in moderate circumstances, Mrs. Wheaton very properly desired to obtain something from the literary publications of her late husband, and with that view she sought the advice of the complainant, as the inti

cover of personsma without their consenow. 447. See

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would if the combook, as the complainant became services we

mate friend of the author and of his family. Consultations accordingly took place between them upon the subject. Suggestion was first made that his reports of the decisions of the supreme court might be republished; but their attention was soon directed to a new edition of the Elements of International Law, as affording more promise of profit beyond mere remuneration. Editorial labors were necessary to such an undertaking, and the complainant tendered his services, and the same were gladly accepted by Mrs. Wheaton and her children,

Pursuant to that arrangement, the complainant edited in succession the two editions in question that is, he made some additions to and emendations of the text, prepared the notes, composed the memoir, and made the indices. Alterations were made in the arrangement as first concluded ; but it is unnecessary to enter into details, as the proofs are clear that the complainant acted throughout that entire period with the distinct understanding that his services in editing those editions were to be gratuitous and without any charge. Speaking of the first annotated edition, the agreement was distinct that the contributions were to be furnished without charge, and the edition of 1863 was prepared with the same explicit understanding between the parties. Although the services were gratuitous, the contributions of the complainant became the property of the proprietor of the book, as the work was done just as effectually as they would if the complainant had been paid daily an agreed price for his labor. He gave the contributions to the proprietor for those two editions of the work, and the title to the same vested in the proprietor, as the work was done, to the extent of the gift, and subject to the trust in favor of the donor, as necessarily implied by the terms of the arrangement. Sweet v. Benning, 16 C. B. 480 ; Mayhew v. Maxwell, 1 Johns. & H. 315. Delivery was made as the work was done, and the proprietor of the book needed no other muniment of title than what was acquired when the agreement was executed. Sweet v. Cater, 11 Sim. 572; Simms v. Marryat, 7 Eng. L. & Eq. 337 ; Woods v. Russell, 5 Barn. & Ald. 942; Atkinson v. Bell, 8 Barn. & Cress. 277. Vested as the title and property of the contributions were in Mrs. Wheaton, she would not acquire anything by an assignment from the contributor, as he had neither the immediate title to the contributions nor any inchoate right of copyright in those editions. He could not assign anything, because he owned nothing in prosenti, as the title to his contributions and the inchoate right of copyright for those editions had become vested in Mrs. Wheaton as proprietor of the book. · Clarke v. Spence, 4 Ad. & Ell. 483; Laidler v. Burlinson, 2 Mees. & Wels. 602. Guided by these views, the court is of the opinion that none of the authorities cited by the respondents to show that a written assignment from the complainant to Mrs. Wheaton was necessary to have any proper application to the question under consideration, because the complainant never acquired any right to demand a copyright in his contributions to those two editions, but the contributions as they were made and composed, or put in form, became vested in the proprietor. Shepherd et al. v. Conquest, 17 C. B. 443, 444; Chitty on Con. (10th Am. ed.) 401 ; Tonson v. Walker, 3 Swanst. 672. Certain remarks are found in the opinion of the court in the case of Pierpont v. Fowle, 2 W. & M. 46, apparently inconsistent with the views here expressed; but the deciVol. II.]


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sion of the court in that case is a sufficient answer to those remarks. Contrary views, it is sometimes supposed, are also expressed in the case of Atwill v. Ferrett, 2 Blatch. 46 ; but the learned judge admits that an equitable title may vest in one person to the labors of another where the relations of the parties are such that the former is entitled to an assignment of the production, which is the precise point involved in the case before the court; and many other authorities than those cited in that case sustain the same principle. Sweet v. Shaw, 3 Jurist, 217; Colburn v. Duncomb, 9 Sim. 155 ; Little v. Gould, 2 Blatch. 362; Sweet v. Cater, 11 Sim. 572; Mawman v. Tegg, 2 Russ. 385; Nicol v. Stockdale, 3 Swanst. 687; Cary v. Longman, 3 Esp. 273.

Second defect in the copyright, as alleged in argument by the respondent, “ consists in the omission to give notice in said editions of the copyright secured in the original edition.” Persons desirous of securing a copyright must comply with the conditions of the copyright act, and if they fail to do so they are not entitled to the benefit of its provisions. Authorities to support that proposition are not necessary, as those conditions are prescribed by an act of Congress. Deposit must be made before publication, if the subject-matter is a book, of a copy of such book in the clerk's office of the district court, as before explained ; and the applicant must give information of coyright being secured, by causing to be inserted, in the several copies of each and every edition published during the term secured, on the title-page or the page succeeding, the following words, viz. : “ Entered according to act of Congress in the year by A. B., in the clerk's office of the district court of

” (as the case may be). Beyond doubt, the omission to comply with those requirements renders the copyright invalid, as the act provides that no person shall be entitled to the benefit of the act unless he fulfils those conditions ; but the important inquiry arises, what are those conditions ? Wheaton v. Peters, 8 Pet. 591 ; Ewer v. Coxe, 4 Wash. 487. Full compliance with the conditions prescribed in the fourth section of the act is conceded ; but the theory of the respondents is that the fifth section of the act requires that the same notice, in totidem verbis, must be inserted in the several copies of each and every edition published during the term secured, so that the second and every subsequent edition shall correctly specify the date of the original entry. They cite no authorities which support the proposition, and they assign no reasons in support of it, except that the act makes no provision for a change of the date in the successive notices to be given, and that the omission to give notice of the original copyright in subsequent editions tends to mislead the public. Acts of Congress are to be construed by the rules of the common law, and the construction should be such as will carry into effect the true intent and meaning of the legislature; but the province of construction can never extend beyond the language employed as applied to the subject matter and the surrounding circumstances. Rice v. Railroad, 1 Black, 359; Binney v. Canal Co. 7 Pet. 201. Change of date in the notice required in case of successive editions of the same book, it may be conceded, is not contemplated by the fifth section of the copyright act; but the meaning of the provision is that a new notice in the same prescribed form shall be given in every improved edition published during the term. Compliance with that requireVol. II.]


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ment, when the original edition is published, is a full protection for that edition throughout the term ; but it is no protection to a second edition with notes, nor to any succeeding edition with improvements, because the requirement is that the “ information of copyright secured ” shall be “ inserted in the several copies of each and every edition.” Neglect to comply with that condition in a second edition will not vitiate the copyright of the original edition if it was regularly secured, nor will a valid copyright of a second edition cure material defects in the copyright of the original edition. Copyrights of the editions of a work other than the original edition are granted for additions to, emendations of, or improvements in the work, and every copyright should bear date of the day when it was secured. Authors or proprietors of a book for which a copyright is secured are required by the second section of the Act of the 3d of March, 1865, “ within one month of the date of publication ” to transmit, free of postage or other expense, a printed copy of the book to the library of Congress at Washington, for the use of said library; and the fourth section provides that, in the construction of that act, the word “book” shall be construed to mean every volume and part of a volume, together with all maps, prints, or other engravings belonging thereto, and shall include a copy of any second or subsequent edition which shall be published with any additions; but the proviso enacts that the author or proprietor shall not be required to deliver to the said library any copy of the second or any subsequent edition of any book, unless the same shall contain additions as aforesaid, nor of any book not the subject of copyright. 13 Statutes at Large, 540. Prior to the passage of that act, the courts had decided that the “ information of copyright being secured,” if duly entered in the first volume of a work of several volumes, was sufficient; but all the residue of the provision is merely in affirmance of the true intent and meaning of the copyright act. Dwight v. Appleton, 1 N. Y. Leg. Obs. 198. Subsequent editions without alterations or additions should have the same entry, because they find their only protection in the original copyright; but second or subsequent editions with notes or other improvements are new books within the meaning of the copyright acts, and the authors or proprietors of the same are required to “ deposit a printed copy of such book," and “ give information of copyright being secured," as if no prior edition of the work had ever been published; and the term of the copyright as to the notes or improvements is computed from the time of recording the title thereof, and not from the time of recording the title of the original work. Copyrights, like letters patent, afford no protection to what was not in existence at the time when they were granted. Improvements in an invention not made when the original letters patent were issued are not protected by the letters patent, nor are the improvements in a book not made or composed when the printed copy of the book was deposited and the title thereof recorded as required in the fourth section of the copyright act. Protection is afforded by virtue of a copyright of a book, if duly granted, to all the matter which the book contained when the printed copy of the same was deposited in the office of the clerk of the district court, as required by the fourth section of the copyright act; but new matter made or composed afterward requires a new copyright, and if none is taken out, the matter becomes public property, just


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e proper distverted that, proper p

as the original book would have become if a copyright for it had never been secured. Publishers may be in the habit of inserting more than one notice in new editions, but there is no act of Congress prescribing any such condition. Whenever a renewal is obtained under the second section of the copyright act, the requirement is that the title of the work so secured shall be a second time recorded, and that the applicant must comply with all the other regulations in regard to original copyrights ; but there is nothing in any act of Congress to show that each successive edition must specify the date of the original copyright, as contended by the respondents. Tendency to mislead the public cannot be successfully predicated of a copyright in due form of law, where it appears that the party who secured it complied with all the conditions prescribed in the copyright act, which is all that need be remarked in reply to the suggestion of the respondents upon that subject.

Special examination of the third objection made by the respondents to the copyrights in question is unnecessary, as it is clear that if the property and title of the matter contributed by the complainant vested in Mrs. Wheaton as the work was done, she was the proper person to take out the copyright; and it is not controverted that, if she was the proper person, she took it out in the proper district.

Based as the objections to the validity of the copyrights are, upon an assumed construction of the fifth section of the copyright act, the court thought it right to examine the several questions presented upon their merits ; but it would be a sufficient answer to the entire proposition to say that no such defence is set up in the answer. Foster v. Goddard, 1 Black, 518. Other answers are made by the complainant to the proposition ; but the court having come to the conclusion that it is founded in a misconstruction of the copyright act, do not find it necessary to give the other suggestions much consideration. Stated in brief words, the conclusions of the court are that the copyrights are valid, and that the agreement set forth in the memorandum is binding.

VI. Unexecuted, however, as the agreement is, it does not transfer nor assign the copyrights in question to the complainant. Both parties agree to that proposition ; but the respondents err in supposing that the agreement does not provide for nor contemplate any such transfer or assignment, as is plainly shown by the very terms of the memorandum. Copyright of a book, when taken out in due form, secures to the author or proprietor the sole right and liberty of printing, reprinting, publishing, and vending such book during the term for which it is granted ; but it secures nothing more ; and the agreement was that Mrs. Wheaton, who held the legal title of the copyrights, should make no use of the notes in a new edition without the written consent of the complainant, and that she would give him the right to make any use of the same he might see fit, which was in all respects equivalent to a contract to transfer and assign to him the legal title to the copyrights. Equity would have compelled the execution of the formal instrument therein stipulated if the right to demand it had not been waived by the complainant. His claim as now presented is twofold, and in the judgment of the court it may be sustained upon both grounds. Curtis on Copyrights, 315; Mawman v. Tegg, 2 Russ. 385 ; Sweet v. Shaw, 3 Jurist, 217; Colburn v. Duncombe, 9 Sim. 155. VOL. II.


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