Thompson v. Hubbard

Mr. Justice Blatchford, after stating the case, delivered the opinion of the court. We are unable to concur in the conclusion of the Circuit Court on the question of the sale by Thompson to Hubbard of the copyright of the Manning book. The price of the book and its copyright, including originals of cuts, circulars, plates and book stamps, having been fixed by agreement at $4000, the disputed point in the negotiations of March 30,1880, was as to the extent of territory to be allowed to Thompson for the- sale of the Manning book, he insisting upon being allowed more territory than was specified in the draft agreements produced by Hubbard. The two drafts, one of which was retained by each party, differ practically only as to the amount of territory in which Thompson was to be allowed to sell the Manning book. The two instruments agree as to the territory in which Thompson was to have an exclusive right to sell the other publications of Hubbard. The two parties differ in their testimony as to what was *144 agreed upon in regard to the clause which is substantially the same in both of the instruments, namely: “ The field on stock book to be the same as on H. Bros.’ books except the six counties in Missouri adjacent to Kansas City,” Hubbard testifying that his copy represented exactly what had been settled upon, and that the concluding paragraph was added to make everything certain, while Thompson testifies that he supposed the concluding sentence was added to express the understanding about the plates being collateral security for the notes which were to be given, although the special provision about the collateral security was inserted in the paper retained by him, as well as in that which he signed. The two papers agree in providing for the sale to Hubbard of the plates of the Manning' book, including copyright, the originals' of cuts, the stamps for binding, and the plates for circulars, for $4000, the same to be delivered, well boxed, at the depot in St. Louis, free of charge for boxing or drayage, as soon as'the first edition, then printing, should be off the press. They also agree in stating that Thompson should pay for all books 'which should be manufactured from the plates upon his order, with his exclusive imprint and copyright mark, if ordered in lots of not less than 500 at a time, payable in cash in 60 days, the price to be 10 per cent in advance of the cost to Hubbard Bros, of their manufacture, and also the further cost of boxing and drayage. • The two papers also agree in providing that, for the period of two years, Thompson would publish no books except those he then had'in course of publication, namely; Texas History, Almanac and the Tice Almanac, and would devote his energies largely for that period to the vigorous prosecution of the sale of the publications (books and bibles) of Hubbard Bros., and theirs exclusively, (including bibles,) aside from his own, as named, paying for the same within sixty days of date of bills, at the rate of 65 per cent off from the retail prices, and for all circulars, prospectus books, posters, etc., at cost. The two papers also agree in the time and manner of payment, in cash and in notes, for the plates and copyright. The two papers also agree in providing that Hubbard Bros. *145 should supply Thompson with all books he might order from such plates in 500 lots, with his exclusive imprint and copyright mark, at 10 per cent advance on the actual cost of manufacture, also the cost of boxing and drayage, to be paid in cash on the receipt of the goods by Thompson; and in the statement that Hubbard Bros, would supply Thompson with their other books and bibles at a discount of 65 per cent from the retail prices of the same, and that they granted him the exclusive right of the sale of their “ close ” books in certain specified territory; and in stating that each party should be responsible to the other in the amount of $1 per copy for any “ close ” or exclusive books sold in the territory of the other, and that all applications for agency coming from without the field of either should be referred to the party having the exclusive right of sale, and a charge of 50 cents be made for each application so referred, and that, if Thompson should go out of business, or for any reason cease to prosecute the sale of the Manning book, the right of sale in his exclusive field should revert- to Hubbard Bros., unless his successor should prosecute the sale in like manner as he would have done. Afterwards, in correspondence with Hubbard, Thompson insisted upon being allowed a larger territory for the sale of the Manning book than that specified in the paper he had signed. Hubbard insisted that the provision which appears in both of the papers, “The field on stock book to be the same as on H. Bros.’ books except the six counties in Missouri adjacent to Kansas City,” specified the territory which had been settled upon. Thompson also, in a letter to Hubbard, desired a date to be fixed for the notes and for the commencement of the two years of his exclusive right in the Hubbard books. As to those matters, Hubbard replied that the date of the notes and the commencement of the two years would properly be fixed as of the date of the delivery of the plates. The dispute about the territory to be allowed to Thompson in respect to the Manning book continued, but was finally settled in a correspondence which occurred in April, 1880, and such settlement resulted in the shipment of the plates by Thompson to Hubbard, and in the payment of the consideration therefor, *146 by $500 of cash and $3500 in notes, the longest of which ran for two years from the 15tli of May, 1880, and all of which were duly paid. Thompson testifies that he shipped the plates because he and Hubbard had come to an agreement as to territory; and he also sent to Hubbard the bill of sale before set forth as a part of the original bill. In enclosing to Thompson, on the 1st of June, 1880, the notes amounting to $3500, Hubbard wrote to him as follows: “We enclose herewith notes to the' amount of $3500, which, with $500 allowed you on book account, is in full settlement of your bill of May 3d for plates, copyright, original cuts and stamps for binding, of Manning’s Illustrated Stock Doctor and Live Stock Encyclopedia. The first lot of plates did not reach us till about the 12th, second lot about the 18th, and third lot is not in yet, so we date notes the 15th, which is sooner than is really due you. Please acknowledge receipt in full and oblige.” The notes were all of them dated May 15, 1880, and each of them bore interest at 6 per cent per annum, the three $1000 notes being payable respectively at 8,12 and 18 months after date, and the $500 note at two years after date. Thompson, in a letter to Hubbard Bros., dated June 4,1880, acknowledged the receipt of the four notes, and said: “With $500 previously allowed, they are payment in full of plates, engravings, copyright and all the material that enter into the manufacture of the Stock Book. The reservation being that we-control certain field, and are to get books at a certain rate above actual cost of manufacture.” The draft of an agreement which Hubbard sent to Thompson in July, 1880, related only to future deliveries of the Manning book, to the territory in which it was to be sold by Thompson, and to the exclusive agency by Thompson for the publications of Hubbard. It did not mention the sale of the plates or the copyright, or the consideration therefor, because that had been settled by the bill of sale and the delivery of the notes; and it fixed the territory in which the Manning book was to be sold by Thompson, according to the limits which had been settled upon by the compromise of April, *147 1880. Up to July, 1880, after the compromise of April, 1880, no controversy had arisen in'regard to any copies of the Manning book ordered by Thompson, because he had ordered none,, having on hand the edition which he had printed before he delivered the plates to Hubbard. The draft agreement prepared by Thompson and sent by him to Hubbard in August, 18S0, differed in matters which Hubbard considered material, from the draft agreement sent by Hubbard to Thompson in July, 1880. We are of opinion that the transaction between the parties in regard to the sale of the copyright of the Manning book and the plates therefor, was a completed transaction, independently of all contracts or agreements in regard to other matters, that the consideration therefor was paid, and that that contract was never rescinded. The remark made by Hubbard, in his letter to Thompson of August 12, 1880, “I am quite agreeable to your view that there is virtually ho agreement between us,” had reference to matters other than the sale of the copyright and the plates, which had passed to Hubbard, and which he had in his possession, and for which he had paid partly in cash and partly in the negotiable promissory notes of Hubbard Bros, There was no idea on the part of either party that the copyright and the plates were to be reconveyed to Thompson, or that he was to repay the consideration to Hubbard. Neither party suggested anything of the kind. Hubbard was publishing the book and pushing its sale, and Thompson, in and after the fall of 1880, was buying from Hubbard and paying for such copies of the Manning book as he desired to sell. The real dispute between the parties was as to the extent to which Thompson should be bound to exert himself in selling Hubbard’s other publications, and should be restricted in selling any other publications than the three specified in the paper of March 30, 1880, and the point which concerned the matter of the sale of Hubbard’s publications for two years had become unimportant when the original bill was filed, because that time had then expired. The preparing and publishing by Thompson of the Periam and Baker book was - entirely inconsistent with the idea that *148 he still owned the copyright of the Manning book. At the time the original bill was filed, Hubbard had fully performed his agreement to furnish, the Manning book to Thompson as •Thompson ordered it, had respected the territory allotted to Thompson, and had shipped his other publications to Thompson as demanded’. On these facts, there could be no revesting in Thompson of the title to the copyright and the plates, and all that he could ever have a right to, growing out of the failure by Hubbard to perform any agreements which he had entered into, wrs a remedy by damages in an action at common law, or a remedy by a bill in equity for specific performance, on -the basis of the existence of the actual agreement made. The remaining question is as to whether Hubbard, as the owner of the copyright of the Manning book, can maintain his suit against Thompson for its infringement. • The following statement is made in the brief by Hubbard: , “ It is conceded’ that plaintiff’s book was duly entered for copyright; that before.publicat. on a printed copy of the title of the book was delivered at the office of the librarian of Congress at Washington; that, within- ten days after publication, two completé copies of the best edition of the book were delivered at the office of the librarian of Congress at Washington; and that on the page' next after the title-page there was printed, in every copy of the first edition of the book, notice of copyright in the following words, viz.: ‘ Entered according to act of Congress, in the year 1880, by N. D. Thompson & Co., in the office of the Librarian of Congress, at Washington.’ It is also conceded that, after Mr. Thompson had delivered the electrotype plates of the book to Hubbard Brothers,’they changed the form of the copyright notice so as to read as follows, viz.: ‘ Entered according to Act of Congress,’ in which form the notice was printed in the copies of several editions, and that' afterward plaintiff again changed the. notice of copyright so as to read as follows: ‘ Copyright, 1880,’ in which last mentioned form the notice was printed in the copies of' several editions.” One of the forms used by Hubbard did not state either the year in which the copyright was entered, or by whom it was *149 entered; while the other form mentioned the year but not the name. Section 4962 of the Revised Statutes provides as follows: “No person shall maintain an action for the infringement of his copyright unless he shall give notice thereof by inserting in the several copies of every edition published, on the titlépage or the page immediately following, if it be a book; or if a map, chart, musical composition, print, cut, engraving, photograph, painting, drawing, chromo, statue, statuary, or model or design intended to be perfected and completed as a work of the fine arts, by inscribing upon some portion of the face or front thereof, or on the face of the substance on which the same shall be mounted, the following words: ‘ Entered according to act of Congress, in the year-, by A. B., in the office of the Librarian of Congress at Washington.’ ” Section 1 of the act of June 18, 1874, c. 801, 18 Stat. 78, which áct took effect on and after August 1, 1874, provides as follows: “ That no person shall maintain an action for the infringement of his copyright unless he shall give notice thereof by inserting in the several copies of every edition published, on the title-page or the page immediately following, if it be a book; or if a map, chart, musical composition, print, cut, engraving, photograph, painting, drawing, chromo, statue, statuary, or model or design intended to be perfected and completed as a work of the fine arts, by inscribing upon some visible portion thereof or- of the substance on which the same shall be mounted, the following words, viz. : ‘Entered according to act of Congress, in the year-, by A. B., in the office of the Librarian, of Congress, at Washington;’ or, at his option the word ‘Copyright,’ together with the year the copyright was entered, and the name of the party by whom it was taken out; thus — ‘ Copyright, 18 — , by A. B.’ ” The 4th section of the same act repealed all laws and parts of laws inconsistent with the provisions contained in the first three sections of the act. It is very clear that Hubbard, as the proprietor of the copyright, was bound to give the statutory notice in the several copies of every edition published by him, and that *150 he did not do so. The plain declaration of the statute is, that no person shall maintain an action for the infringement of Ms copyright, unless he shall give notice thereof by inserting the prescribed words in the several copies of every edition published. That means,- every edition which he, as controlling the publication, publishes. His failure to give such notice debars him from maintaining an action for the infringement of Ms copyright. The word “ action ” means an action either at law or in equity. Section 3 of the act of May 31, 1790, c. 15, 1 Stat, 125, declared that no person should be entitled to the benefit of that act, unless he should first deposit a printed copy, of the title of a book in the prescribed office; and further provided that the author or proprietor should, within a prescribed time, cause a copy of the record of the title to be published in one ■or more newspapers, as prescribed. Section 1 of the act of April 29, 1802, c. 36, 2 Stat. 171, provided that every person who should seek to obtain a copyright of a book should, in addition to the requisites enjoined in the act of 1790, give information, by causing the copy of the record to be inserted at full length in the title-page, or in the page immediately following the title of the book. Section 5 of the act of February 3, -1831, c. 16, 4 Stat. 437, declared that ho person should be entitled to the benefit of that act, unless he should insert the prescribed words in the published copies of the book. In section 97 of the act of July 8, 1870, c. 230, 16 Stat. 214, now section 4962 of the Revised Statutes, the language of section 5 of the act of 1831 was changed so as to declare that no person should maintain an action- for the infringement of his copyright, unless he should insert in the several published copies the notice prescribed. This requirement of giving the prescribed notice has always been held, under all of the statutes, to be one of the conditions precedent to the'perfection of the copyright, the other two being the deposit, before publication, of the printed copy of the title, and the depositing in the public office, within the prescribed time after publication, of a copy or copies of the book. Wheaton v. Peters, 8 Pet. 591; Merrell v. Tice, 104 U. S. 557; Callaghan v. Myers, 128 U. S. 617, 652. *151 It is not enough that Thompson, while he owned the copyright, gave the required notice in the copies of every edition he published, while it was Ms copyright. The inhibition of the statute extended to and operated upon Hubbard while he owned the copyright, in respect to the copies of every .edition which he published, and for his failure he is debarred from maintaining his action. The view is urged, that the only object of the notice required by the statute is to give notice' of the copyright to the public; and that, as Thompson himself took the copyright, and had vested the title to it in Hubbard, he has no right to infringe the copyright, although it may be invalid as to the rest of the world. JBut we are of opinion that the failure of Hubbard to comply with the statute operated to prevent his right of action against Thompson from coming into existence. This right of action, as well as the copyright itself, is wholly statutory, and the means of securing any right of action in Hubbard are .only those prescribed by Congress. Wheaton v. Peters, 8 Pet. 591, 662, 663 ; Banks v. Manchester, 128 U. S. 244, 252. The decree of the Circuit Court is reversed, and the case is remanded to that count with directions to dismiss the original bill and the cross-bill, with costs in the Circuit Court to neither party. Each panty is to pay one half of all the costs in this court.