# Wheaton v. Peters/Argument Paine

Copyright case discussing common law copyright and the copyrightability of judicial decisions. No common law copyright subsists for published works. The written opinions of the Supreme Court cannot be copyrighted.
Mr Paine, for the appellants, contended:
1. An author was entitled, at common law, to a perpetual property in the copy of his works, and in the profits of their [p596] publication; and to recover damages for its injury, by an action on the case; and to the protection of a court of equity.
The laws of all countries recognize an author's property in his productions. In England, beyond all question, an author had, at common law, the sole and exclusive property in his copy. This was decided in Miller v. Taylor, 4 Burr. 2303. This property was placed by its defenders, and they finally prevailed, upon the foundation of natural right; recognized by the laws, ordinances, usages and judicial decisions of the kingdom, from the first introduction of printing.
The opponents of literary property insisted, that an author had no natural right to his copy; and resorting to those laws which are supposed to have governed property before the social compact, they maintained, that because the copy was incapable of possession it was impossible to have property in it. Mr J. Yates, the great opponent of literary property, and who has probably said all that ever was or can be said against it, urges that it is impossible to appropriate ideas more than the light or air (4 Burr. 2357, 2365); forgetting that books are not made up of ideas alone, but are, and necessarily must be clothed in a language, and embodied in a form, which give them an individuality and identity, that make them more distinguishable than any other personal property can be. A watch, a table, a guinea, it might be difficult to identify; but a book never. Cited Blackstone's Commentary and Christian's notes, to show the nature of literary property.
The court are referred to the able opinions of Willis, J. Aston, J., and Lord Mansfield, in Miller v. Taylor, 4 Burr. 2310, 2335, 2395. They agreed not only, that an author had a property at common law, but that it was perpetual; notwithstanding the statute of Anne.
Not long after that decision, however, the question as to the perpetuity of an author's property, was brought before the house of lords; and it was there decided, that it was not perpetual, its duration being limited by the statute of Anne. Yet even upon this point, the twelve judges were equally divided (if we include Lord Mansfield, who did not vote, as he was a peer), and there were eleven out of twelve who maintained, that an author had a property at common law, in his copy. See Donaldson v. Beckett, 4 Burr. 2408; 2 Br.P.C. 129. [p597] The decrees of the star chamber show, that that court admitted and protected authors, as early as 1556. Maugham 12, 13. Ordinances of parliament, as early as 1641, recognize and protect the owner's property in his copy. These ordinances were several times repealed. Maugham 13, 14. In 1662 and 1679, acts of parliament were passed, prohibiting any person from printing, without the consent of the owner of the copy. Maugham 15, 16.
In the reign of Charles II., there were several cases in the courts, in which the ownership of the copy by authors, is treated as the ancient common law: and in one case, the case in Croke's Reports, the right of the author was sustained, even against the claim of the king's prerogative to publish all law books. Chief Justice Hale presided. Maugham 19; 4 Burr. 2316.
In the reign of Anne, when the perpetual ownership of literary property was thus firmly established, the booksellers, annoyed by the piracy of unprincipled and irresponsible adventurers, applied to parliament for protection. A bill was accordingly brought in for the purpose, entitled "an act to secure the property of authors." In committee, its title was changed to that of "an act to vest authors with their copies, for the times therein mentioned." Maugham 20–27. And the act declared, that authors should have an exclusive right for twenty-one years and no longer. In this shape it was passed.
Notwithstanding the strong and explicit terms of the statute of Anne, both as to vesting the author with his right, and limiting its duration, (terms not to be found in our act); the courts, by an uninterrupted series of decisions, from the passing of the statute down to the case of Donaldson v. Beckett, maintained, that an author still had his original perpetual common law right and property; and we have seen, that had Lord Mansfield voted in that case, the twelve judges would have been equally divided.
For a review of the common law property of an author, and of the legislation upon the subject in England and the United States, cited, the American Jurist, vol. 10, p. 61, &c., No. for July 1833.
2. The common law property of an author is not taken away by the constitution of the United States. The states have not [p598] surrendered to the union their whole power over copyrights, but retain a power concurrent with the power of congress; so far, that an author may enjoy his common law property, and be entitled to common law remedies, independently of the acts of congress. It is one of those concurrent powers, where the power of the state ceases, only when it actually conflicts with the exercise of the powers of congress.
In the constitutional clause relating to the rights of authors and inventors, there are two subjects, distinct enough in themselves, and only united by the form of expression. This comprehensiveness of expression, we know, belongs to the constitution; and that the aim of its framers was brevity. The expression is not so important, for in that instrument we are to look for substance and intention.
Although united in this clause, and for the same purpose of being secured by congress, the subjects of patents and of copyrights have little analogy. They are so widely different, that the one is property, the other a legalized monopoly. The one may be held and enjoyed without injury to others; the other cannot, without great prejudice. The one is a natural right, the other in some measure against natural right.
But because they both come from invention or mental labour, and in addition, because they are so joined in the constitution; we have become accustomed to regard them as in all respects alike, and equally dependent on the legislative favour for existence and protection.
Upon this point the counsel for the appellants argued at large, that the principles which applied to copyrights were different from those which regulated the property of inventions secured by a patent. That they were inserted in the clause of the constitution for brevity and comprehensiveness. That the framers of the constitution probably designed to give congress the complete and exclusive power over patents; but it did not follow from this, that the same was introduced in relation to copyrights.
It is important to examine the true rules of construction which are applicable to this clause in the constitution.
This is the first instance in which this court has been called upon to pronounce, whether the power given in this clause is an exclusive or a concurrent power; or as to the extent of the [p599] power conferred by it on congress. Consequently the rules established as to the construction of that instrument, have all been in relation to other powers, and powers of a very different character.
All the other powers in the constitution conferred on congress or yielded by the states, are national or political, and for national and political purposes. This is the only instance of a power being conferred, unless incidentally, over private property. This is a power over private property, not incidental to a national power, but with an immediate, primary and single reference to the property. The rule of construction as to the grant of the political and national powers may not be suited to this. It has been held as to them, that a rule of strict construction was not to be adopted.
But the question here is as to private right. And the question is whether the constitution takes away a private right, or property at common law. And why should we not apply the same rule of construction to such a constitutional provision, as we do to a statute, in derogation of common law right? The rule is, that such statutes are to be construed strictly, because they abridge the right. The reason of the rule extends to the constitution, whenever it is in derogation of common right. For this rule see 10 Mod. 282; 4 Bac.Ab. 550, 650.
Other common law rules in relation to statutes affecting private rights or common law rights, would seem to be peculiarly applicable to this clause of the constitution; although they may not be generally referred to as guides in construing the constitution. These will be found in 1 Bl.Com. 87; 1 Inst. 111, 115; 1 Bl.Com. 89; Plowd.Rep. 206; 13 Mod. 118; Plowd. 113; 1 Bac. 11, 18, 38; 1 Bac. 3, 5; 2 Burr. 803, 805; Com. Dig. Action on Stat. C. G.; Salk. 212; 19 Vin.Ab.Stat. E 6; 1 Story's Com. 436, 384, 387, 397, 411, 401; Martin v. Hunter, 1 Wheat.Rep. 326, 410.
With these general guides of construction, it is inquired whether the power granted to congress by the constitution transfers the whole subject of property of authors to the exclusive authority and control of congress; so that the property of an author ceases to exist at all, without the legislation of congress: or whether it leaves the author in the enjoyment of his [p600] property, as he had it before the adoption of the constitution; and merely attempts to improve what was supposed to be an imperfect enjoyment by authorizing congress to secure it.
This is not the question whether the power is concurrent or exclusive. If the author's common law property is not taken away, nor made wholly dependent upon the legislation of congress; but if congress possess the mere partial power to secure it, then the property remains as at common law, subject to state legislation, and the auxiliary legislation of congress. The question now is simply as to a right of property. If we take the rules above cited from Mr Justice Story's Commentaries as guides of interpretation; can there be a question as to the nature of the delegation of power, or its extent or amount? The delegation is to secure exclusive rights; not to grant property or confirm property, or grant rights or confirm or establish rights, but to secure rights.
We are willing to admit that this language is broad enough, and is adapted to transfer to congress the whole legislation and control over patents. There is at common law no property in them; there is not even a legal right entitled to protection. They have a moral or equitable right, but unknown to the law. Congress, therefore, when authorised to secure their rights, are authorised to do every thing; and full power over the subject is delegated to them.
But it does not follow, that because congress are authorised to create de novo, and to secure the right to patents by mere force of the word secure, that they are therefore authorised by force of that word to create de novo, and then secure copyrights. For a very different process would then take place in relation to the two things. In creating patents they take nothing away. They deprive the inventor of no property. He had nothing, and they gave him all merely by securing. But if by the word secure, they are authorised to give an author all that he is afterwards to possess, the operation effects a total deprivation of his common law property. So that to allow the word "secure," to confer the same power over copyrights, as over rights to inventions, is to make it a word of totally different meaning and import in the one case, from the other. The language is not broad enough, nor is it adapted to the taking [p601] away of property or pre-existing rights. We are therefore to reject the argument, that a copyright must exist and be held solely under the constitution; because patent rights must be.
What is there then in the delegation of the power to secure an author's exclusive rights, which should be construed to deprive him of his property, and make him dependent wholly on the security provided? Are not the words in themselves plain and clear; and is not the sense arising from them distinct and perfect? and if so, is interpretation admissible? and if not, is not the question settled? For it never can be pretended that the naked words, authorising congress to secure rights, take away or affect the property in which those rights exist.
There would seem to be nothing, therefore, in the plain meaning of the word secure, which should alter, affect, or take away an author's property in his writings. Indeed, it seems too plain to admit of argument, that when the constitution authorises congress to secure an acknowledged pre-existing right, and does not authorize them to grant it; it is an express declaration that it subsists, and is to subsist, independently of their power.
But it may be said, that all the author can ask, or have, is security for his rights, and that this is all he had at common law: and that the constitutional clause does not take away his security, or any part of it, but only transfers to congress the power and duty to secure him, which before belonged to the states.
We answer, that if this construction is derived from the import of the words themselves, it is strained beyond all bounds allowed by the rules of construction. There is the strongest reason to believe, from the language of the constitution, that those who framed it, adopted it with a particular view to preserve the common law right to copyrights untouched. If this clause in the constitution is to be construed as taking away the author's common law right, it deprives him of a part of the security he had at common law; and does more than merely transfer to congress a power and duty which before belonged to the states. It is, then, asked, whether the word secure can be found to possess any such meaning as to take away, and diminish, and disturb, either by the common law or constitutional rules of construction. [p602]
The meaning of the clause of the constitution, when tried by the usual rules of interpretation, is shown to be as contended by the appellants. Cited, 19 Viner's Abr. 510, E. 6; and see 2 Inst. 2d ed.; Plowden 113; 1 Ch.Pl. 144; Almy v. Harris, 5 Johns. Rep. 175; The President, &c. of the Farmers' Turnpike Road v. Coventry, 10 Johns. Rep. 389.
Chief Justice Marshall (12 Wheat. 653, 654) lays great stress on the framers of the constitution having been acquainted with the principles of the common law, and acting in reference to them. Most of them were able lawyers; and certainly able lawyers drew up, and revised the instrument. Are we, then, to believe, that if they had any design to take away the common law right, or to authorize congress to take it away or to impair it; they would, knowing the rules of construction cited, and like common law maxims, have used the language they have? There is the strongest reason to believe, from the language, it was adopted for the purpose of preserving it, and to reserve from congress any power over it. This probability arises, almost irresistibly, from the language used; and under the circumstances that it was used.
The case of Donaldson v. Beckett was decided in the house of lords in 1774. This case, and all the law on this subject, discussed and decided by it, must have been known to the lawyers of the convention. The opinion of the judges in the case of Miller v. Taylor, must also have been familiar to them.
From the statute of Anne, then, down to 1774, there had been in England a continual contest about the words of that statute, and whether it was a statute to secure a right already existing. It agitated the literary world especially, because it belonged to them; and it agitated the courts. Cases of unequalled importance arose out of, and were decided upon the use of these words. Yeates, J. calls the case of Miller v. Taylor, a case of "great expectation." This case occurred in 1769, and immediately followed the still greater case of Donaldson v. Beckett, in which the twelve judges gave each an opinion in the house of lords. These cases, therefore, occurred and were reported a few years before the adoption of the constitution.
Had the convention designed to take away, or to authorize congress to take away the common law property, they would [p603] have used the words vest, or grant; and would have carefully avoided the word secure.
But what reason can be discovered why the framers of the constitution should wish, or intend to take away, or authorize congress to take away the common law right. What was the mischief they had in view?
Will it be said that the public have rights as well as the author; and that it is impolitic to allow a perpetual right? Suppose we grant it. Yet, what has the constitution to do with a mischief like this? It does not require a national power to cure it. The states were fully adequate to provide a remedy themselves. And the states gave congress no powers, which they could as well exercise themselves. Will it be pretended that the states could not regulate, limit or take away the right within their own territories; and that it was necessary to empower congress to do it?
Will it be said that it was designed to take from the states their power over copyright, lest, if a state were to protect the rights of authors, the citizens of other states might be curtailed of their rights within that state? The answer is obvious. No person can have any rights opposed to the author's. He has the property, and it cannot stand in the way of another's property or rights. Besides, the objection goes to the whole of state legislation on any subject: for a state may, by its laws, curtail or affect the rights of citizens of other states, in other particulars, and why be so careful to prevent them in this? As we have already shown, copyrights have, in these respects, none of the mischiefs attending them which attend a right to inventions.
There could be but one possible motive for making copyrights a national concern; and that was because the states might not, or could not, individually, afford them a just protection. From this single motive, what intention are we to infer? That, and that only, apparent on the face of the constitution. An intention to secure the right.
Why is it, however, that if the public good was had in view, by the framers of the constitution, and not the author's benefit singly, either as regards patents or copyrights, that they did not undertake to guard the citizens of the several states against the protection which the states might afford to inventions introduced [p604] from abroad. For that, as well as for the printing of foreign books, a state might, if it chose, grant monopolies. But this, and other mischiefs to spring from state legislation, it was thought proper to provide against.
It is contended that the case of copyrights is one within the concurrent powers of the United States, and the states. It is not within either of those kinds of exclusive powers enumerated in the Federalist (No. 34), but belongs to the other class of powers.
What is the power here? A power to secure the right of authors. And the question is whether the states may not protect and enforce the common law right, while the United States secure it. Is such a power totally and absolutely contradictory and repugnant? Is it not, on the contrary, perfectly consistent with the other. It is as consistent as a common law remedy is with a statute remedy; it is the same thing. Both may exist and act in concert, and no conflict can occur, unless the state undertakes to deprive an author of what congress has secured to him. If that were a reason for taking away the state power, it would be a reason for depriving them of all power: for so long as they have power to legislate, they can pass laws to interrupt those of congress. It is impossible to imagine a case where a power of congress could receive so little interruption from the legislation of the states; because this is a power primarily over private right, and not for national purposes; and it is the only one of the kind in the constitution.
The opinions of this court have been uniform, that a concurrent power in cases like this, might exist and be exercised by the states. See Houston v. Moore, 5 Wheat. Rep. 48 to 56; also Mr Justice Story's Commentaries 421 to 433.
It is believed that if the states have resigned to congress their power over copyrights, and have none remaining in themselves, yet that they have given the power to congress with a qualification and limitation, and have confined it in their hands, as they had power to do, simply to securing the right of the author. If they have any power besides this, it is merely to abridge the period.
Next. Have congress impaired the author's right? That is, supposing the common law remedies to be gone, and that [p605] the author can have no remedy unless he has published the record, and deposited the copy in the secretary of state's office.
It is answered that they have most essentially. They have entirely changed, and unnecessarily, the whole title which an author had at common law, and the evidence on which it rested. They have taken from him the natural common law title, and the evidence to support it; and have given him one of a most artificial and difficult character. And is not a man's title to property, his evidence of ownership, a part of the property itself, a part of its value? Is it not this which distinguishes real from personal estate, in some measure; and gives it a higher character? Suppose a man were to lose his title deeds, or one of them, what would be the value of his property?
What title had a man before the statute, and what has he now? Before the statute, it was sufficient for him to prove himself the author. This he could do by proof, in pais, in a thousand ways. The proof of this is easy and imperishable, because it is the natural proof. The name of the author on the book, possession and claim of title alone, or first publication, would be prima facie sufficient evidence. And these are inherent, and inseparable from almost every case, as a part of its natural incidents.
But suppose he must, as is contended, prove a compliance with the requisites of the statutes. He is driven from all his safe and easy common law proof. There can be no such thing as prima facie evidence offered. Must he prove the publication for four successive weeks, forty-two years after it was made? Is he to keep a file of newspapers, and if he does, what proof has he of publication? How is he to prove the delivery of the volume? The law provides for no record. He must call a witness, and then he cannot be safe for forty-two years, unless he files a bill to perpetuate testimony. The evidence in the case establishes the difficulty of such proof. Can a statute, which thus loads a right with burthensome and needless regulations, and makes it wholly dependent on accidental mistake or omission, where it was free from them both, be said not to impair an author's common law right of property?
If, then, congress have not the power to impair the author's propery, and if the requisites as to publication and delivery of [p606] the copy, if made conditions precedent, do impair it; they are so far unconstitutional; and the appellants have a right to claim the benefit of the act without performing them.
4. A citizen of one state has the same common law property in his copy, in other states, as the citizens of these states can have; and the common law property exists in the state of Pennsylvania: consequently, the complainants are entitled to a copyright at common law in that state, and can have a remedy in the circuit court of the United States, for its violation, independently of the provisions of the act of congress; the citizenship of the parties giving the state jurisdiction.
The constitution of the United States provides, that "the citizens of each state shall be entitled to all privileges and immunities of citizens of the several states."
The constitution, by this provision, designed to make, and does in fact make us one nation, living under the same laws. It designed to give to all the citizens of the United States, not merely the benefits and privileges secured to them by national laws, but the benefit of all the laws of all the states, and the privileges conferred by them. Under this provision, a citizen of New York has all the privileges of the laws of Pennsylvania, whatever they may be.
It is this provision which makes us one nation, and this only. It is this alone which gives to all the citizens of the United States uniform and equal civil rights throughout all the territories of the nation. Other constitutional provisions secure political advantages; but without this we should be a mere league, and not a nation. We should be several distinct nations. Vattel says (p. 159, book i. ch. 19), "the whole of a country possessed by a nation, and subject to its laws, forms, as we have said, its territories, and it is a common country of all the individuals of the nation."
In this sense of a nation, this provision of the constitution makes us one; and makes all the states the common country of all the individuals of the nation.
An author then, who is a citizen of one of the states, is entitled to have his property in his copy protected in every other state, according to the laws of such state; without the aid of any national law. The only question is, do the laws of the state give an author a property in his copy; for if they do, who [p607] shall say he is not entitled to enjoy his property under such laws, as much as any other kind of property? Has not a citizen of New York a right to hold lands, or any other kind of property under the laws of Pennsylvania? And if that state were to attempt to deprive him of the same rights as her own citizens enjoy, would it not be a violation of this clause of the constitution? The truth is, a citizen of New York is, so far as all his civil rights and privileges are concerned, a citizen of Pennsylvania. See Mr Justice Story's Commentaries 674, 675.
An author's copyright at common law exists in Pennsylvania.
The American colonies brought hither, as their birthright and inheritance, the common law, so far as it was applicable to their situation. Judge Chase, in United States v. Worrall, 1 Dall. Rep. 384.
Chief Justice M'Kean, in 1 Dall. Rep. 67, says, the common law has always been in force in Pennsylvania. Statutes made before the settlement of the province have no force, unless convenient, and adapted to the circumstances of the country; all made since, have no force, unless the colonies are named. See also page 74.
There never was a statute in Pennsylvania retative to copyright; and the statute of Anne was passed after the settlement of that state: the common law therefore prevails there.
5. The publication of the record in the newspapers, and the delivery of the copy to the secretary of state, are not made conditions precedent at all by the acts of congress, or if at all, only as to the right to the security provided by the acts. A non observance of the statutory directions in these particulars, does not deprive the author of the ordinary remedies by an action on the case and bill in equity. Besides, the publication of the record, and delivery of the copy, were at most intended only as a means of notice of the author's right; and actual notice, in this case abundantly shown, dispenses with those modes of constructive notice.
After stating the particular provisions of the act of 1790, the counsel proceeded to argue, that, on the proper construction of the act, the publication of the record, or the delivery of the copy, is not in any way connected with the right; and the delivery of the copy has nothing to do, even with the penalties [p608] and forfeitures imposed by it. The provisions of the act are, in some respect, similar to those of the statute of Anne; and it must have been drawn with reference to it. Congress, by this law, did not think proper to impose all the penalties which are found in the act of Anne; because they were engaged in discharging their constitutional power of securing the author's right.
The copy to the secretary of state is a mere donation from the author. Congress give him no equivalent for it. The clerk is paid for the record; and what do government give the author for the copy, but security? Have they a right to sell the security; to put a price on the exercise of their constitutional powers? What right does the constitution give them to require a donation from the author? And will it be believed, that they intended to forfeit his property if he did not furnish it?
The month which may elapse after the right attaches, and before publication, and the six months before depositing the copy; show, that these things are not conditions precedent.
Natural rights are generally known by their own incidents. Property always carries with it its own indicia of ownership; and literary property not less than any other. The superaddition of record evidence, the highest known to law and all that is required of ownership of real estate, was probably deemed sufficient by congress; and they, therefore, required no other of the right of an author. It would be a fair presumption, that when they had required enough, they would not go on to require a superfluity.
But the publication of the record and delivery of the copy have been held, by a very numerous, learned and able court, on full argument (the court of errors in Connecticut, composed of the twelve judges), to be only directory; and to have nothing to do with the author's right. Nicholas v. Ruggles, 3 Day's Rep. 145.
But it is said, that although the publication and delivery of the copy, are not conditions precedent by the act of 1790, they are made so by the act of 1802; and that this has been decided in the case of Ewer v. Coxe, 4 Wash. 487, as to the publication of the record.
The counsel then proceeded to comment on the decision of Mr Justice Washington, in the case referred to; denying that [p609] the language said by him to be contained in the first section of the act of 1802, was contained in it; and asserting that the meaning of the words used in the section, had been strained by the judge. He contended, that the act of 1802 was not intended to operate on the provisions of the preceding law, but only to refer to them as established by that law. There is no enacting language in the latter law; and without enacting language, it can be no enactment.
It is the duty of this court, before it allows property to be sacrificed, even if the words of an act are clear and free from doubt on their face; to look carefully at the intention of the legislature, to look at the spirit of the law and its consequences, and at the old law, the mischief and the remedy.
The counsel then went into an examination of both the statutes, for the purpose of showing that, applying these principles, the construction of those acts should be such as was maintained by the appellants. In the course of this examination, he cited, 19 Vin. Abr. 510, E. 6; Plowd. 111; 2 Institutes 200; 1 Bl.Com. 87; University v. Beyer, 16 East 316; Postmaster General v. Early, 12 Wheat. 148.
The act of 1802 does not make the publication and delivery conditions precedent, because it is impossible they should be so. The first act vests the right on recording the title. It then gives two months to publish the record, and six months to deliver the copy. A condition precedent is an act to be done precedently; and it is impossible to publish the record until the record is first made, and the right attaches on making the record.
The act of 1802 declares that the author, "before he shall be entitled to the benefit of the act" of 1790, shall, "in addition to the requisites," &c. Now what was the benefit of that act? It is entitled an act to secure the author's right; and the power of congress is to secure the right, i.e. an existing right. How does the act secure the right? Only by penalties and forfeitures. It gives no action on the case, no bill in equity; and if it had given them, it would have been, as to them, wholly inoperative, for no court had jurisdiction of them. What then was meant by; what, in fact, was, the "benefit of that act?" Certainly the penalties and forfeitures; nothing else. We [p610] claim the benefit of the act of 1819, which expressly gives a bill in equity, and the circuit court jurisdiction.
It is in vain to say that the acts in question are conditions precedent to the right. The right itself is recognised by the constitution and law, as an existing right; and the right is not given by the act, but is only secured by it. The security, as we have shown, is the penalties and forfeitures, which we do not now claim. The action on the case is a remedy founded on the right, and not on the statute which gives none. And this bill is founded on the right, and on the act of 1819. We, therefore, get neither the right nor remedy from the act of 1790; and what benefit do we claim from it?
In support of the construction thus contended for, were cited, Rules of Construction found in 6 Bac.Abr. 379, Statute 1, pl. 1; 383, pl. 4, 5; 387, pl. 6; 391, pl. 10; 19 Vin.Abr. 519, Statute E. 6, pl. 86; 520, pl. 96; 525, pl. 129; 524, pl. 119; 528, pl. 156; 5 Vin.Abr. Condition 2a. pl. 2, 3, 4, 5; 528, pl. 154, 158.
It is agreed that the object of the requisites in the act is to give notice, and statutes, however strong their language or positive their enactments, which require things to be done nor notice, are held not to apply; and that their provisions need not be complied with, where actual notice is proved. Such are the registry acts, and other similar acts, which declare that instruments shall be absolutely void if not recorded. Le Neve v. Le Neve, 2 Atk.Rep. 650; Jackson ex dem. v. Burgett, 10 Johns.Rep. 460; Jackson ex dem. v. West, 10 Johns.Rep. 466.
It is fully shown by the evidence that the defendant had notice; and a part of that evidence shows that the claim of the appellant, Mr Wheaton, was admitted.
The rule is that the provisions of the registry acts do not apply except in cases of bona fide purchasers. What is a bona fide purchaser? A purchaser without notice; no matter what his property, or his attempt to get it, has cost him. Is Mr Peters a bona fide purchaser?
It is objected that the record of some volumes is taken out as author and proprietor. In answer we say, it is the clerk's duty to make out the record; and we cannot be held to forfeit our property, because he has not done it correctly. [p611] But the record is right. As author, and not having parted with the right, Mr Wheaton was also proprietor. The act is adapted to a proprietor as well as author, and to enable a proprietor who is not the author to secure a copyright. In our case Mr Wheaton is described as author, and the super-addition of proprietor is mere surplusage.
6. The directions of the acts of congress as to the publication of the record and delivery of the copy to the secretary of state; and the renewal of the right to the first volume have been complied with; and the complainants have offered all the proof they are bound to offer of those facts.
In support of these positions, the counsel referred to the evidence in the record.
As to the delivery of copies to the secretary of state, he stated, that the law is silent as to any proof. It directs no memorandum of the deposit to be made. The presumption, therefore, is, that none is made. And, in fact, they did not begin to make any until about the close of these volumes.
It appears, that certificates were given, sometimes, latterly. But the law does not direct them, does not know them; and why should one take them? Would they be evidence of any thing if he had them? And Mr Brent proves the greatest irregularity as regards certificates and memoranda. Mr Carey proves the same thing.
But the law does say, that the secretary of state shall preserve the copies in his office. This then is the evidence required by law, that the volumes have always been in his office, since within six months of their publication. And this is proved by Mr Brent's deposition. The volumes are and have been there. It is for them to show that they were not placed there by us under the law.
How can we prove, by parol, facts which occurred from sixteen to seventeen years before the proof taken in this cause? The proof must be by parol; and such proof the law presumes to be out of men's power after the lapse of six years. Without the copies having actually been found there, the law would presume that an act enjoined by law to be performed, was performed after such a lapse of time. It would presume it, in favour of right and natural justice against a wrong doer. See [p612] a case of presumption, even of the enrolment of articles of apprenticeship, against positive evidence to the contrary. The King v. The Inhabitants of Long Buckley, 7 East 45.
But we have proved, positively, by the evidence of Mr Brent, that eighty copies of every volume were delivered under the reporter's salary act, within the six months after publication. The four acts of congress allowing the reporter his salary, also provide, that he shall within six months deliver eighty copies to the secretary of state; one of which he is to keep and transmit to his successor in office, of course to be preserved in the office.
The fact is, that eighty-one copies were sent, but the law giving the salary, not requiring more than eighty, the papers in the department under these acts speak of but eighty; and all being sent to the department together, is the reason why there was no minute, or memorandum, or certificate, as in some cases under the copyright law.
And is not this within the letter of the copyright law, the delivery of the eighty copies alone? And if we have complied with the letter of the law, ought it not to save us from a forfeiture feiture of our property? Is it not within the spirit of the law? The judge in the court below insists it is for notice; the counsel insist it is for notice. And is it not as good notice, if it is there under one law, as under the other? But the judge who decided the case below says, that it is not required under the salary law to be kept in the office. It is submitted, that it is as much required to be kept there under one law as another. At all events, the condition, if it be a condition precedent, is substantially performed by it; and this, as has been shown, is sufficient.
The copyright for the first of our property? Is renewed in New York, the place of residence of the author. This was done before the publication of any volume of the Condensed Reports, containing any of the matter in Wheaton's Reports. Mr Wheaton had not parted with his property in them; and by the third section of the act of 1790, it is required that the title shall be deposited, and the record made in 'the clerk's office of the district court where the author shall reside.'
Law reports, like other books, are objects of literary property; [p613] and Mr Wheaton was the author of the reports in question in this case, and entitled to the copyright in them. The other complainant, Mr Donaldson, has a limited property in the copy by assignment from Mr Wheaton.
It was never doubted in England, that law reports were the subject of copyright. The only question was, whether the prerogative of the crown did not monopolize all law books, so as to exclude an author's right. Cited in support of this point, Roper v. Streater, Skin.Rep. 234; 4 Burr. 2316, 2403; Tonson v. Walker, 3 Swanston 673; 3 Ves. 709; 2 Bro.Parl.Cases 100.
The prerogative right, however, is now abandoned, and has long been in England. Maugham, 101, says, "it is now treated as perfectly ridiculous." Godson says the same thing (Patents 322, 323). See 4 Burrows 2415, 2416, as to the reason of the prerogative. It there appears the king introduced printing into England.
It is not necessary, however, to produce cases to prove a right so obvious, until cases are produced or principles established which show that it does not exist. There are necessarily but few cases, because the right has not been questioned. One fact is enough, without cases. We know the great price of law reports in England, and we know, of course, that but one person does publish, viz. the proprietor: that there are never contemporancous editions of the same reports: that a single whole edition is exhausted before another is published, and sometimes lasts half a century. Why is this? Who prevents enterprize and cupidity from participating in this field? What can it be except the copyright?
As to the objection that the matter of which the report is composed is not original; we answer this is wholly unnecessary in copyright. There is no analogy in that respect between copyrights and patents. A man who makes an Encyclopedia may have a copyright, although he does not write a word of it. And in Carey v. Kearsley, 4 Esp.Rep. 168, where it was attempted to show that the survey in which the copyright was claimed, was made at the expense of the post office, and that the copyright belonged to the post office, Lord Ellenborough said, "I do not know that that will protect the defendant. At law the first publisher, even though he has abused his trust [p614] by procuring the copy, has a right to it; and to an action against the person who publishes it without authority from him."
The salary of the reporter was never designed to be a compensation in full, and to deprive him of his copyright. Had such an effect been intended, or thought of, it would have been expressed. It stipulates an equivalent for the sum allowed him, or a greater part of it, viz. eighty copies. When congress, by the last reporter's act, reduced the price of the volume to five dollars, the copyright was considered.
Mr Wheaton published his first volume without a salary. He had been appointed reporter by the court, and was looking to the profits of the copy as his only compensation. But it was found unequal to the labour and time, and in truth no compensation. In this state of things, to enable him to go on, congress give him one thousand dollars (for which he gives them back eighty copies); and say nothing of its being an equivalent for his copyright. The copyright was established in England, and in this country, before the law was passed. And is established property to be taken away by implication? Does any one believe that Mr Wheaton would have spent half a year or more in making and publishing these reports, if he had supposed he had not the copyright? After deducting the eighty copies, the thousand dollars would not leave enough to pay the expenses of a gentleman in Washington during the term, and going and coming. Besides, he took steps to secure his copyright every year. It was considered a copyright book. Congress saw this and knew it. Their laws with him were contracts, made under a full knowledge of existing facts. And shall it be said, when they made no exception of the copyright, and knew that he relied on it, that they intended to deprive him of it? It would have been a fraud unworthy of congress; as it would have been disgraceful to an individual. Other reporters in this country, in the state courts, who had salaries, had always secured their copyright; (even Mr Peters has secured his), and the right to do so was never doubted.
Mr Wheaton published the first volume without salary; consequently this objection cannot apply to that.
As to the cases and abstracts, they are clearly Mr Wheaton's own composition. He acquired the right to the opinions by judges' gift. They invited him to attend at his own expense [p615] and report the cases; and there was at least a tacit engagement on their part to furnish him with such notes or written opinions as they might draw up. This needs no proof: it is the course of things, and is always done. The mere appointment proves all this. Was this engagement, this understanding, ever altered? Do not the judges of this court know that Mr Wheaton believed he was acquiring a property in his reports? Did they not suppose he would be entitled to it, if he took the necessary steps to secure it?
Were not the opinions of the judges their own to give away? Are opinions matter of record, as is pretended? Was such a thing ever heard of? They cannot be matters of record, in the usual sense of the term. Record is a word of determinate signification; and there is no law or custom to put opinions upon record, in the proper sense of that term. Nor were they ever put on record in this case. They were given to Mr Wheaton, in the first instance. Blackstone, 1 Comm. 71, 72, shows that the reasons of the court are not matter of record.
The copy in the opinions, as they were new, original and unpublished, must have belonged to some one. If to the judges, they gave it to Mr Wheaton. That it did belong to them is evident; because they are bound by no law or custom to write out such elaborate opinions. They would have discharged their duty by delivering oral opinions. What right, then, can the public claim to the manuscript? The reporter's duty is to write or take down the opinions. If the court choose to aid him by giving him theirs, can any one complain?
But we allege and prove that Mr Wheaton was the author of the reports; that he published them. This is enough to entitle him to a copyright, until they prove that he is not. The burden of proof is on them. (See Carey v. Kearsley, 4 Esp. R. 168, already cited.)
It is contended that it is against public policy to allow reports to be copyrighted. And extravagant suppositions are made, as, than an author might destroy them, or never publish them, or put an unreasonable price on them.
Is one to be divested of property, is a common rule of law to be overthrown, because the imagination of man can devise a danger which may arise, however improbable? And besides, in this case the reporter would lose his salary; and in all cases [p616] he must lose his place, if he were guilty of any of such absurdities.
As to enhancing the price, which is one of the evils apprehended, if the author were to do it unreasonably he would lose his place; and he must always do it to his own injury, for he would lose his sales and profit. In England, the statute of 54 Geo. III., amending the statute of Anne, omits the provision in the statute of Anne intended to prevent too high a price. This shows that experience had proved that no such evil was to be apprehended. In Germany, where a free, perpetual copyright exists, books are cheaper than any where else in the world. (Maugham 14, 15.)
Congress had power to apply the remedy, and they did apply it, when they thought proper, by fixing the price.
It is attempted to put judicial decisions on the same ground as statutes. It is the duty of legislators to promulgate their laws. It would be absurd for a legislature to claim the copyright; and no one else can do it, for they are the authors, and cause them to be published without copyright. Statutes never were copyrighted. Reports always have been.
It is said that one employed by congress to revise and publish the statutes, might as well claim a copyright as a reporter. The difference is, one is employed to act as a mere agent or servant, or clerk of the legislature, to prepare the laws to be properly promulgated. He is engaged to do what it is well understood never is copyrighted, and does not admit of copyright. There is a distinct understanding, a contract, that he is to do the work for his compensation, and not to claim a copyright. But a reporter is not an agent employed by congress. He is, and is understood to be engaged for himself, as principal; and congress buy eighty copies, and add a salary to his profit from his copy. He was doing before the act what it was understood he could copyright, and what he did copyright; and the act does not intimate that there was to be any change; and he went on copyrighting, and they renewed his salary without any objection or stipulation.
It is the bounden duty of government to promulgate its statutes in print, and they always do it. It is not considered a duty of government to report the decisions of courts, and they therefore do not do it. The oral pronunciation of the judgments [p617] of courts is considered sufficient. Congress never employed a reporter, and they never gave any one any compensation, before Mr Wheaton. Mr Cranch reported without compensation, and relied upon his copyright; and Mr Wheaton continued, with a full understanding that he was to report in the same way.
Are the court prepared to deprive all the authors of reports in this country of their copyrights? Of property which they have laboured to acquire, with the full belief, of all others as well as of themselves, that they were to be legally entitled to it?
8. The publication of the defendants is a violation of the complainants' rights.
The quo animo of the publication is important. An abridgement was not contemplated; and the work was intended to be supplied at less cost. This is stated in the proposals annexed to the bill. The answer admits the decisions contained in the third Condensed Reports to have been previously published in Wheaton's Reports, and that it is intended to continue the publication of the same. It is denied in these papers that Mr Wheaton could have a copyright; and if he could, that he has taken the necessary steps to secure it.
The actual violation of the complainants' rights consists in having: first, printed the abstracts made by Mr Wheaton; secondly, in taking the statements of the cases made by Mr Wheaton, verbatim, from Wheaton's Reports; thirdly, in having taken points and authorities, and, in some instances, the arguments, and in all cases oral opinions from Wheaton's Reports, and for which, of course, no materials could be found elsewhere; fourthly, in having printed the whole of the opinions, which, it is not pretended, were found elsewhere. No resort was had to the records for the statements of the cases.
The Condensed Reports are not a fair abridgement. Cited, Butterworth v. Robinson, 5 Vesey 709; 1 American Jurist 157; Mangham 129 to 136.