# Wheaton v. Peters/Argument Sergeant

Mr Sergeant, for the defendants.
The claim now asserted by the appellants, is to a perpetual right in Wheaton's Reports, in Mr Wheaton and his representatives and assigns. Such a right is necessarily exclusive. It goes beyond the right claimed to be secured under the copyright acts of congress. Such a claim should be clearly established. It is asserted for the first time in a court of the United States. It has no precedent in the proceedings of the courts of England; for since the decision in that country, that the statute of Anne took away the alleged right of an author at common law, there can be found no precedent in that country, to sustain such a claim.
The Condensed Reports, so far as it is now material to examine them, are made up of statements, which are to be found on the records, and of the opinions of the court. Mr Wheaton's notes are not interfered with—nor are his reports of the arguments of counsel. These, it might be admitted, are his own; if he can have a property in any of the matters contained in the volumes published as a public officer.
Mr Wheaton's Reports are made up as an officer of the court. The court appointed him under the authority of a law of the United States, and furnished him the materials for the volumes; not for his own sake, but for the benefit and use of the public: not for his own exclusive property, but for the free and unrestrained use of the citizens of the United States. In relation to the work, he was not an author, but as an officer, as a public agent, selected, authorised and paid for making up the reports of the decisions of the court.
In the whole composition, under these views of the facts of the case, not a word in the reports belongs to him. It could not be the intention of the court to give him a perpetual right to the opinions delivered by them. No such purpose could have been entertained by congress, when the appointment of a reporter was directed. The objects of the law, and of the court, were to authorise, enforce and secure the publication of the proceedings and decisions of the court, for public information. Any argument, or course of argument tending to [p639] a different conclusion, must be wrong; because contrary to the design of his appointment. If is in derogation of common right.
Let us see how the claim of the complainants is made out.
1. The question whether the power to regulate copyrights under the constitution is exclusive, can never arise, until some state shall pass a law interfering with its exercise by congress. 3 Story's Com. 50. Until then, it must be a theoretical question. The law of New York, which was intended to secure exclusive rights in the navigation of the waters of that state by steam, was by this court decided to be unconstitutional. The court decided the case on other grounds, it is true, but still so decided.
Up to the present moment, no state has asserted a right to interfere with the power of congress, under the constitution, to regulate copyright. There is no judicial decision which asserts or supposes any such right. There is not a trace, sign or symptom of any such right existing in the legislation, or judicial proceedings of any state. There is, therefore, no collision; no case for judgment. But the contrary is evident.
It is not necessary to inquire whether states have the power, if they have not chosen to exercise or claim it. It is clear that there was no such thing in any of the states prior to the constitution, but by the invitation of congress, under the confederation. Fed. No. 43; 3 Story's Com. 49. Congress found the whole case unprovided for; and the laws made by some of the states, at their instance, and which have been referred to by the counsel for the appellants, ceased when the constitution was adopted.
But supposing that a concurrent power to regulate and secure copyright existed, in the states and the United States; a supposition of exceeding difficulty and doubt; and that the states may act notwithstanding the exercise of the power by congress; it is for the states to choose whether they will do so or not. They have not so chosen, they leave it to congress. But there are many reasons for considering this power exclusive, as well as reasons which clearly show it ought to be exclusive.
1. It was originally taken up by congress as matter properly belonging to their cognizance. Early in the progress of the [p640] government the first law was passed; which was followed by other legislation, thus establishing the present regulations. This power did not exist in congress under the confederation. None of the provisions in that compact applied to it; and it now rests upon the article in the constitution which gives congress the power to "promote the progress of science and the useful arts." The whole ground is admitted to have been vacant, on the establishment of the present government. It was a new power. Fed. No. 43; 3 Story's Com. 48; Rawle on the Const. ch. 9, p. 105, 106; 2 Kent's Com. 306, &c.
2. The power could only be properly, beneficially and effectually exercised by congress. By vesting the power in the national legislature, the system became uniform and certain. Authors, but for this, would have been subjected to different provisions and conditions in every state; thus materially affecting the value of all their rights. And the community throughout the whole nation were thus, after a certain interval, entitled to the benefits of the writings or compositions of those who availed themselves of the laws, passed under the constitutional provisions. 3 Story's Com. 48, 49.
3. There is an absolute incompatibility between the existence of the power in the United States, and in the states.
It has been repeatedly said that the constitution has not occupied the whole ground. That it has provided for the author, and not for the public. But the true state of the case is directly the reverse of this. It has provided for the case of the author, only as instrumental to the provision for the public. The clause in the constitution gives congress the power, not to secure a copyright to the author; but to "protect the progress of science and the useful arts, by securing for limited times to authors, &c. the exclusive right to their respective writings, &c." It is to be for a limited time, no longer. 3 Story's Com. 49.
4. The state of the law in England was known here by the adjudications in the courts of that country. These adjudications stood in this way. 1. That there was a common law right before the statute of Anne. 2. That there was no common law right after that statute. According to those decisions, the effect of legislation was to take away the common law right. Where the power of legislation over the subject was placed there was the power over the whole matter. [p641]
5. The same word "secure" is applied in the article in the constitution to inventions, as well as to the works of authors.
In inventions, it is admitted, there was no common law property. The use of the word "secure" cannot, therefore, presuppose an existing right. It would have the same effect, and be equally applicable to both. No benefit can, therefore, be derived from the use of the term; however ingenious the argument which invokes it in aid of the pretensions of the complainants. Cited, Act of 41 Geo. III.; Maugham 36, 37.
6. The uniform construction, and the practice under it, have been such as is contended for by the defendants.
It is true, there was an omission in the laws to give full power to the courts of the United States, in cases of copyrights. But the omission was to no great extent. There was no provision for jurisdiction, when the parties to a suit of which copyright was the subject, were citizens of the same state. Binns v. Woodruff, 4 Wash.C.C.Rep. 48. But that omission was supplied by the act of 1819. 3 Story's U.S. Laws 1719.
7. In what state, supposing an author to have a right at common law, is the right to exist, and be protected. If there is a right of property, it must be governed by, and have the benefit of all the rules which affect such property. It accompanies the owner every where. It is not his because he is a citizen of the United States. It derives no additional security from such citizenship. A stranger, who is an author—a foreigner has the same common law right of property; and no foreign book can be printed here. Such has not been the understanding in England, from which the principles to sustain the right are derived. No common law right extended to Ireland before the union. There, at all times, before the union, the works of authors, however secured under the statute of Anne, in England, were printed and published. If a common law right existed, or was supposed to exist, we should have found, in the proceedings of the Irish courts, its establishment by judicial decisions.
But supposing it were otherwise, and that a right at common law does exist; upon the laws of what state do the complainants rely? Upon the law of Pennsylvania? In the circuit court, the right was claimed on the common law of the nation. In this court, it is asserted to rest upon the common [p642] law of a state. Below, no intimation of such a thing was given. If any such right, under the common law of Pennsylvania, exists, we of Pennsylvania do not know it. Strangers have discovered it, and claim the benefit of it, for the first time. Not a trace of its existence can be found in the whole history of that state. No authority from any of the laws, or the decisions of the courts, has been vouched. It is denied that it exists.
It is, then, assumed, without hesitation, that the right of action, whatever it is, which an author has for an infringement of his copyright, arises from the constitution and laws of the United States. The constitution gives congress the power "to promote the progress of science and the useful arts, by securing, for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." Art. 1, sect. 8, ch. 8. Until secured by congress, he could have no right under the constitution. When secured, it must be to such extent, and upon such terms as congress may enact.
Some argument has been presented upon the word "securing," as admitting a pre-existing right. But there is no force in the suggestion. There must be a pre-existing state of things, out of which a right to apply to be secured arises. That right is brought into existence by the constitutional provision. It had no existence as a right incident to the fact of the author being a member of the community of the nation, until the constitutional provision. By the agreement of those who made the constitution, the right was brought into existence; and it was to be secured. The language, therefore, is accurate. It has already been observed, that the term "securing" is applied equally to inventions; yet no common law right to inventions has been asserted.
The federal judiciary, at all events, can have no cognizance of claims to copyright, but under the laws of the United States, made in pursuance of the constitution; and to the extent such laws may authorize them to go.
Thus understood, what is the right of an author? There is a difference between a patent and a copyright. A patent, in due form, is prima facie evidence of the right of the inventor. It is, itself, prima facie proof of all the prior acts required by the laws. It rests for its support upon the invention. But [p643] invention, without a patent, is nothing. A man, without a patent, could not ask the aid of the court to protect his claims. The patent is, therefore, evidence, prima facie, of right.
A copyright is quite a different thing. Its existence, as a right, depends upon doing certain acts. The doing of these is the foundation of the right. Their being done, is the only evidence of the right. If they are not done, no right, or even claim exists. These acts, therefore, as to copyright, are as a patent in the case of an invention. There is nothing that performs the office of a patent. The whole acts together establish the right.
In the case of an invention, the patent being a prima facie case of right, in the first instance, where the right of the inventor is disputed, it is sufficient to prove the patent, at law or in equity.
In the case of a copyright, the title is made out prima facie, at law and in equity; by stating and proving the acts which, by the provisions of the law, constitute the copyright.
This distinction is a most material one, and to be always kept in mind. It goes to the root of the whole case. If any thing has been omitted or neglected; if any of the requirements of the law, the performance of which are conditions upon which the right rests, and by which the right would be protected by the law, have been neglected; there is no title at all; no title in existence. Such a case is the same with that of an inventor coming into court without a patent.
The court will not grant him an injunction. Ewer v. Coxe, 4 Wash.C.C.R. 487. There is nothing in such a case on which to engraft the doctrine of possession. It is only when a prima facie title exists, one made out by showing a compliance with the law, that the doctrine of possession can be applied. Ewer v. Coxe, 4 Wash.C.C.R. 488.
This brings us to the first head of inquiry, which separates itself into two branches.
* What are the requisites to a copyright under the laws of congress?
* Have these requisites been complied with?
1. Upon the first question we have the light of a judicial decision, and there is no decision to the contrary. It is that of a judge of the highest and the most regarded judicial talents; [p644] one whose opinions have always received the utmost respect. In Ewer v. Coxe, 4 Wash.C.C.R. 487, Judge Washington held, that to entitle the author of a book to a copyright, he must deposit a printed copy of the title of such book in the clerk's office; publish a copy of the record of his title within the period, and for the length of time prescribed by the third section of the act of congress of 31st of May 1790; and deposit a copy of the book in the secretary of state's office, within six months after its publication. The requisites of the third and fourth sections of the act of congress of 1790, relative to copyrights, are not merely directory; but their performance is essential to vesting a title to the copyright secured by law. The act of congress of 29 April 1802, declares, that, in addition to the requisites enjoined in the third and fourth sections of the act of 1790, and before the person claiming a copyright shall be entitled to the benefits of the same act, he shall perform all the new requisites; and that he must perform the whole before he shall be entitled to the benefits of the act. "It seems to me," says the judge, "that the act will admit of no other construction."
The argument upon the two acts taken together is plain and convincing. Act of 1790, 1 Story's Laws of United States 94; Act of 1802, 2 Story's Laws of United States 866. The question, be it remembered, is, what are the requisites under the act of 1802.
1. When these acts were passed, the whole subject of copyrights was open for legislation. The object of congress was to carry into effect the provisions of the constitution, by establishing a mode of obtaining a copyright. The provisions of the laws have no other view.
It is material and reasonable, then, to suppose, that whatever was directed to be done was a requirement. The acts to be performed, were to secure for a limited time to an author, the benefit of his writings; and these acts were directed for that purpose. It is impossible to distinguish, so that one of the acts shall be decreed material, and another not so. The whole, and each of the acts are pointed out in the law, and the most natural course is to deem them all material. They do all, in effect, constitute the conditions of the title; they constitute the title itself.
[p645]
2. Upon the words of the act it seems impossible to raise a doubt. They are plain, clear, and require no explanation. The acts they require, are of easy performance; the evidence that they have been performed, can always be obtained and preserved. The reason of requiring these acts is not here in question.
It is probably true, that when the act of 1790 was passed, congress had before them the statute of Anne, and the decisions of the English courts upon that statute, and on all the litigated questions of literary property, and of copyright. This is equally true of the act of 1802; and this must be considered in reading that act.
But the reason of the requirement of the law is obvious. The author "shall deliver a copy to the secretary of state, to be preserved in his office."
The copy to be delivered is not to constitute a part of the library of the secretary of state. The books deposited for copyright, never do form a part of the library of the department of state. They are, it is understood, always marked, "deposited for copyright," with the date of the deposit. The books so deposited are not lent out, or ought not to be. They are "to be preserved in the office" of the secretary of state. They are not delivered for the sake of the officer, nor are they like the copies delivered to the stationers' company, under the act of Anne.
Why does the law require a copy to be deposited in the office of the secretary of state? It is a material requirement. Why, it is asked, were models and drawings to be deposited in the patent office, a part of the department of state? That is a kindred subject, and the reason is the same in one case as in the other.
If a model, or a drawing of a machine or invention is required to be deposited in the patent office, the reasons and the objects of the requirement are, that the public may know what the invention is; and that, after the limited period shall have expired, they may have the use of it, according to the purpose of the provision in the constitution. A book or writing is required to be deposited for the same reason. The matter claimed as original is there to be preserved, in order that the extent and nature of the claim for the limited period may be known. The deposit of the title in the clerk's office, the publication [p646] of the record in the newspapers, give no information of the contents of the work; but the deposit of it in the secretary's office does this: and as it is "to be preserved" there at all times, there the extent of the author's claims can be always known.
The law enjoins on the secretary of state obligations which are consistent with those views of its purposes. It is made his duty to preserve the books deposited in his office. He is thus the trustee of the author and of the public. The court will not suppose this duty is ever neglected. It will always presume the injunctions of the law are complied with.
As to the author, he has an easy mode of securing the evidence of his compliance with the law. To his rights, the preservation of the book deposited, is not essential. He has done all that is required of him, by depositing the copy of his work: and the certificate of the secretary of state, which the secretary has power to give, will be evidence of the deposite.
An examination of the provisions of the act of 1802, must result in the conviction that the construction contended for by the defendants is the true one. The act must be interpreted, not altered. It must be read in its own words, and according to the common meaning and use of the terms in which it is expressed. The first and second section of the act are those upon which the construction is to be given; and no better language for the clear interpretation of them can be used than those used by Judge Washington, in Ewer v. Coxe.
It is of no importance to the case, whether, by the law of 1790, the acts to be done by an author were conditional or directory. They were enjoined—they were "requisites." The act of 1802 has so declared them, and without this they were clearly so. This cannot be reasonably denied.
The construction conceded by Judge Washington, in Ewer v. Coxe, of the provisions of the act of 1790, is not satisfactory. Having ascertained to his complete satisfaction, that the act of 1802 left no room to doubt that the acts imposed on an author, were conditions essential to his copyright; that venerable and learned judge did not consider it necessary to examine the provisions of the law of 1790, with the care and scrutiny he would have done, had the case rested on that law only.
The requirements of the law of 1790 are made of the party himself. It is in his power to perform them all. They are [p647] all, and each of them, parts of a system having reference to the author and publisher. The act of depositing a copy in the office of the secretary of state, is one of the number of acts by which he evinces his intention to secure a copyright, and by which he executes his intention. Less than the whole does not suffice to prove the intention. Less than the whole is not a copyright.
The publication in the newspapers is on the same footing. It will surely by admitted that was material. Yet they are both of the same character. There was no necessity for either, if not for both. Unless both were to be performed, both were nugatory; and the whole provisions of the law might have been a dead letter.
The law of 1802 places the question of construction of the act of 1790 out of doubt or controversy. It declares the acts stated in the law of 1790 to be requirements. He shall, in addition to the "requisites" "enjoined" in the third and fourth sections of the act of 1790, do certain things. Every word of the law must have effect. Each section contains one requisite, and no more; neither, therefore, can be rejected. All must have their full force.
The second section is equally clear. It helps to construe the other.
These, it will be seen are words of enactment, not of recital. They make the law; they do not declare or expound it. Whatever the law may have been before 1802, it is now established. The decision in Ewer v. Coxe, in establishing the construction of the act of 1802, establishes that of both statutes.
Under these views of the law, founded on the fair and sound construction of their provisions, and supported by the decision in Ewer v. Coxe; copyright is the union of these acts, the "requirements" of the laws by an author. It is nomen collectivum, signifying all that confers and constitutes the right.
2. Such being the law, how stand the facts of the case? And now it must be conceded that the proof of title, and compliance with the law, lies upon the complainant. He must state the facts distinctly in the bill, and he must prove them as stated. Most clearly this is his duty, when he asks the extraordinary aid of a court of equity. [p648]
Nor can it be deemed unreasonable to require this. The proof of his title to copyright is of such a nature that it may easily be preserved. It may consist of an official certificate of the deposite of a copy of the work—of newspapers to prove the required publication.
There is a want of such allegations in the bill, as well as of such proof.
Mr Sergeant declined going into an examination of the bill and evidence in support of the positions he assumed; considering that they had been fully sustained by the argument of Mr Ingersoll. He also referred, in support of these positions, to the opinion of the learned judge in the circuit court, by whom the case was decided.(a)
Upon the point made by the counsel for the appellants, that the delivery of the eighty copies of the reports under the reporter's act, was a compliance with the requisite of copyright acts, of the deposite of a copy in the secretary of state's office; he also referred to the decision of Judge Hopkinson.
The case, as exhibited on the record, and by the examination of it which has been submitted to the court, is one which has no claim to the relief sought by the complainants. Its principal features are repeated, to connect with them other matters deserving the consideration of the court.
Mr Wheaton undertook the preparation and publication of the reports of the decisions of the court, under the appointment of the court. He furnished nothing original from his own mind. All the contents of the reports were the fruits of the minds of others; supplied for the public use; at the public expense; or at the expense of others. There is not a thought of Mr Wheaton's from the beginning to the end of the work. It was intended for the public, for their use and benefit; and should therefore be made as public as possible.
In process of time, after the publication of the first volume of his reports, Mr Wheaton became a public officer; with a salary for his labour as reporter, and obliged to perform the duties of the office. This provision for the reports, it has been said, in the course of the argument for the complainants, was obtained at the earnest solicitation of Mr Wheaton. It therefore [p649] became a contract on his part, for the sum allowed by the law, to prepare and publish the reports. See act of 1823. He became, like the clerk of the house of representatives, keeping the journals.
The object of his appointment, the plain purpose of the law, was to preserve a record of the proceedings and decisions of the court; the highest tribunal in the nation; and to give them circulation. If Mr Wheaton could have a copyright, this object might be entirely defeated—his book might be a sealed book.
Out of this public work it becomes necessary to compile something less bulky and expensive. The usefulness of such a publication is admitted by all but those interested to deny it. Mr Peters undertakes to prepare it, and he has completed the work. He announced his intention to do this publicly; and fully explained his plan. No efforts were made to stay this proceeding until invited by him; and after he had completed the third volume of his work. If the further circulation of his book is stopped, it will be a public injury. Such a result will limit the knowledge of the law of the land, as determined and established by this court, to but a small portion of the community; while all are interested in knowing it.
But here a question arises, whether books of reports can be copyrighted in England or in the United States.
There are no cases decided in which the principle is established, that reports of the decisions of courts of law are the subjects of copyright. The case of Streater v. Roper, 4 Bac.Abr.Prerogative; Maugham 101, note; was reversed in parliament. By that decision the prerogative right, the right of the patentee, was established. No right, as author, was sustained by this case; but the contrary. It is true, that Maugham says the prerogative claim is ridiculous; but it rests on a decision that it is the ancient law. In the case of Butterworth v. Robinson, 5 Ves. 509, it does not appear how the right was derived.
By the decisions of the house of lords, no such right is maintained. No copyright, in any one author, is supported by those decisions. No one could report but by the authority of the chancellor; and this authority was exclusive; it prohibited all others from interfering. Gurney v. Longman, 13 Ves. 493. [p650]
The whole of this subject will be found to be examined in the compilations of Jeremy, Maugham and Godson. The law is not established, at least it has not been so declared, that reports can be private property. Essentially, their contents are public property. The knowledge of the decisions of courts should not be confined. It is consistent with the views of this court, that copies of their opinions should be multiplied to any extent, and in any form required. Publicity is the very thing required.
4. The reporter is a public officer, and his duty, by law, is, to publish. He has no liberty to keep back the matter which he collects and prepares, in the performance of his official duties. The act of 1817, 3 Story's Laws 1639, regards him as a public officer. So by the subsequent acts, which will be found in Story's Laws 1803, 1913, 2046. The court, in 3 Peters 397, at January term 1830, decided that the reporter was the proper officer to give copies of the opinions of the court, when required. Could he refuse such copies? Could he refuse to give a copy of a report of a case, when asked for it; on the ground that it was his property, and only to be used by his consent, and for his benefit. The whole purpose of the reporter's act would be defeated, could this be done. That act makes him the officer to give publicity to the proceedings of the court; but, upon this view of the matter, it has placed him in a situation to get possession of the official actions of the court; it has given access to the records of the court, and has placed him in a situation by which he has obtained all the materials to accomplish the plain and obvious intention of the law, for his private advantage, and that he may defeat and set at naught that intention. Such cannot be the law. This court will never sanction such pretensions.
The purpose of the appellants is to subject the defendants to all the evils of a violation of the copyright acts, by a proceeding which deprives them of the benefits of a trial by jury. Such a course will not receive the favour of this court. The facts upon which the rights of the complainants must rest, whatever may be the construction of the acts of congress, are not made out. All the essential facts to sustain their claims are denied; and certainly, it will be admitted, the proof offered to sustain them by the complainants, is imperfect. Will the court, then, give its aid in such a case? Will they reverse the [p651] decision of the circuit court, and order a perpetual injunction. Will they not say to the complainants, If you have rights, go into a court of law and establish them?