# Wheaton v. Peters/Argument Ingersoll

The appellees submitted the following points, for the consideration of the court:
* That the book styled Wheaton's Reports,' is not law fully the subject of exclusive literary property. [p618]
* If the book of reports of the complainants be susceptible of exclusive ownership, such ownership can be secured only by pursuing the provisions of certain acts of congress.
* The provisions of the acts of congress have not been observed and complied with, by the complainants, or others, in their behalf.
* Reports of the decisions of the supreme court, published by a reporter appointed under the authority of the acts of congress, are not within the provisions of the laws for the protection of copyrights.(a)
* The entries of the copyrights by the appellant, claim more than Mr Wheaton was, in fact or in law, entitled to, as "author," "proprietor," "author and proprietor," and were for this cause void.
* The work styled Condensed Reports, is not an illegal interference with the right, whatever it may be, in Wheaton's Reports.
Mr. J. R. Ingersoll, for the defendants.
The defendants submit the following argument in answer to the complaint exhibited by the bill and testimony of the appellants.
They propose to show:
* That the book styled Wheaton's Reports, is not lawfully the subject of exclusive literary property.
* If the book of reports of the complainants be susceptible of exclusive ownership, such ownership can be secured only by pursuing the provisions of certain acts of congress.
* The provisions of the acts of congress have not been observed and complied with, by the complainants or others in their behalf.
1. The character of the work in which the right to literary property is asserted by the complainants, is sufficiently described in their own bill. It consists, they say, of twelve [p619] books of reports of the decisions of the supreme court of the United States. It was prepared in the due exercise of the appointment of Mr Wheaton as reporter, which he derived from the court. The writings or memoranda of the decisions were furnished by the judges to Mr Wheaton, who alone preserved the notes and opinions thus furnished to him, together with other materials compiled by himself; and having retained all these materials in his possession exclusively, he finally destroyed them. The work, agreeably to the description of it in the bill, is composed of "cases, arguments and decisions." However rich it may be in other materials, they are not made the subject of claim; nor is any interference with them alleged, or made in any degree the subject of complaint. The claim and complaint are confined to the reports properly so called. If the profession and the country are indebted to the individual exertions of the reporter for valuable notes, which may have been usefully inserted to increase his emoluments, or enlarge his literary reputation, they are not at all connected with the work as described and exclusively claimed in the proceedings before the court.
Reports are the means by which judicial determinations are disseminated, or rather they constitute the very dissemination itself. This is implied by their name; and it would necessarily be their nature and essence, by whatever name they might be called. The matter which they disseminate is, without a figure, the law of the land. Not indeed the actual productions of the legislature. Those are the rules which govern the action of the citizen. But they are constantly in want of interpretation, and that is afforded by the judge. He is the "lex loquens." His explanations of what is written are often more important than the mere naked written law itself. His expressions of the customary law, of that which finds no place upon the statute book, and is correctly known only through the medium of reports, are indispensable to the proper regulation of conduct in many of the most important transactions of civilized life. Accordingly, in all countries that are subject to the sovereignty of the laws, it is held that their promulgation is as essential as their existence. Both descriptions of laws are within the principle. The source from which they spring makes no difference. Whether legislative acts, or judicial constructions or decrees, [p620] knowledge of them is essential to the safety of all. A pregnant source of jurisdiction to the enlightened tribunal to which this case is now submitted, is altogether foreign to the enactments of the legislature. The extended principles of national law, and the rules which govern the maritime intercourse of individuals, are fairly and authoritatively known only as they are promulgated from this bench. It is therefore the true policy, influenced by the essential spirit of the government, that laws of every description should be universally diffused. To fetter or restrain their dissemination, must be to counteract this policy. To limit, or even to regulate it, would, in fact, produce the same effect. Nothing can be done, consistently with our free institutions, except to encourage and promote it. Every thing which the legislature or the court has done upon the subject is purely of that character and tendency.
The defendants contend, that to make "reports" the subject of exclusive ownership, would be directly to interfere with these fundamental principles and usages. They believe that no man can be the exclusive proprietor of the decisions of courts or the enactments of the legislature; and that nothing in the light of property in either can be infringed.
The two things being analogous, let the illustration of the one in controversy be derived from the one that is not. That a particular act of congress, or any number of acts of congress, could be made any man's exclusive property, has perhaps never been supposed. Yet the same labour is devoted to the construction of them-the same degree of talents is required for the due and proper composition of them. A particular individual receives them for publication, and the manuscripts may be said to belong to him; for "having retained such materials in his possession exclusively," as long as he had occasion for them, in every case it may probably be said, "he finally destroyed the same." This person is specially employed to publish the acts of congress. He does so, under an appointment, which has been deemed, by some learned judges, incompatible with the tenure of an office under one of the states. Where, then, does the parallel end? An individual may voluntarily publish an edition of the laws. But he does not by such publication make the laws his own. It is not necessary to determine whether he has or has not exclusive property in the [p621] peculiar combination, or in the additional matter which his edition may contain. He certainly does not, by either combination or addition, appropriate to himself that which is neither the one nor the other; and his combination being untouched, and his additions discarded, a stranger may surely use as he pleases, that which at first was public property, and is public property still. Those acts themselves are no more the property of the editors, than the hall in which they were enacted is the property of the members who passed the laws.
If either statutes or decisions could be made private property, it would be in the power of an individual to shut out the light by which we guide our actions. If there be any effect derived from the assertion, that the judges furnished their decisions to the reporter, the gift would be both irrevocable and uncontrollable, even by the judges themselves. The desires of the court to benefit the public, and the wishes and necessities of the public to receive the benefit, might alike be frustrated by a perverse or parsimonious spirit. A particular case, or a whole series of cases, might be suppressed by a reporter endowed with different feelings from those of the highly respectable complainant in this cause. It might become the interest of such a person to consign the whole edition to the flames, or to put it at inaccessible prices, or to suffer it to go out of print before the country or the profession is half supplied. These are evils incident to every publication which can be secured by copyright. Mere individual works, whether literary or religious, the authors can undoubtedly thus control. During the "limited time" for which they are constitutionally secured in an exclusive enjoyment of them, there is no remedy. Their right is perfect during that period. A similar right must exist, if at all, in the publisher of reports. Can such a power be asserted, with all its consequences, over the decisions of the highest judicial tribunal of the land?
We are not to be told, that the interest of the proprietor would secure the country against so great an evil. The law endeavours to prevent the occurrence of any possible wrong, although it may not anticipate the precise mode of accomplishing it. But there are contingencies readily conceivable when the interest of a venal reporter might be promoted by the course suggested. A party might feel it to his own advantage, and [p622] therefore make it to the advantage of the reporter, to suppress a part, or the whole of the edition of his work. The law cannot and ought not to be made the prisoner or the slave of any individual.
It is proper here to draw to distinction between reports, the immediate emanations from the sources of judicial authority, and mere individual dissertations, or treatises, or even compilations. These may be of great utility, but they are not the law. Exclude or destroy them, and the law and the knowledge of it still exists. The same fountains from which the authors of them drew, are accessible to others. These private works may be regarded as so many by-paths to the temple of justice, smoothed and straightened by individual labour, and laid out for greater convenience over private ground. The owner may close them at his pleasure, and no one can complain. But the entrance to the great temple itself, and the highway that leads to it, cannot be shut without tyranny and oppression. It is not in the power of any department of the government to obstruct it.
The reports in England used to be printed with the express permission or allowance of the twelve judges prefixed. Probably it would have been held a contempt of court to print them without. We are told, that four reporters were formerly appointed by the king "to commit to writing, and truly to deliver, as well the words spoken, as the judgments and reasons thereupon given," in the courts of Westminster. 3 Croke's Reports, preface. When sergeant Henden vouched for authority Dalison's printed reports, Sir Henry Hobert "demanded of him by what warrant those reports of Dalison's came in print." 3 Croke's Reports, preface.
Sir James Burrow rebelled against the habit of receiving a special allowance or recommendation from the judges, preparatory to publication, and actually published without any allocatur. His preface, p. 8, which explains all this, also has a reference to the property of the reporter. But that has, evidently, no allusion to copyright property, for it refers to a proceeding previous to the publication by the reporter: viz. a surreptitious publication by some other person, "and after the surreptitious edition has been stopped by an injunction, the book has been [p623] published, with consent of the reporter, without leave or license, and no notice taken or complaint made of it."
Reporting, however, in England, as it respects the common law courts at least, is a very different thing from reporting in this country. There the reporter has, with regard to the decisions themselves, a labour to perform which requires experience, talents, industry and learning: and he receives nothing from the judges to aid him in his task. Here (with respect to the opinions), he does nothing more than transcribe, if he does so much. And having received the manuscripts from the judges, if he should not himself publish them, they are withheld from the public, to the infinite detriment of the whole nation.
The cases that have been decided in England have, as it should seem, turned on a question of prerogative, and not of copyright.
Such was the point in the Company of Stationers v. Seymour, 1 Mod. 256. "Matters of state, and things that concern the government, were never left to any man's liberty to print that would. And particularly, the sole printing of law books, has been formerly granted in other reigns."
The case in 1 Vern. 120 (Anonymous), was a motion by the king's patentees for an injunction to stop the sale of English bibles, printed beyond sea. The lord keeper then referred to the circumstance, that a patent to print law books had been adjudged good in the house of lords.
In the case of Company of Stationers and Parker, Skinner 233, Holt arg.: "agreed that the king had power to grant the printing of books concerning religion or law, and admits it to be an interest, but not a sole interest." The court inclined for the defendant, (who had pleaded the letters patent of the king, which granted to the University of Oxford to print omnes et omni modo libros which are not prohibited to be printed, &c .) and they said that "this is a prerogative of power which the king could not grant so, but that he might resume it, but otherwise it is of a grant of an interest."
In Gurney v. Longman, 5 Ves. 506, 507, Lord Erskine declared that the granted the injunction (as to publishing the Trial of Lord Melville) "not upon any thing like literary property, but upon this only, that these plaintiff are in the [p624] same situation, as to this particular subject, as the king's printer, exercising the right of the crown as to the prerogative copies."
The cases of Bell v. Walker, 1 Bro.C.C. 451, and Butterworth v. Robinson, 5 Ves. 709, are not sufficiently developed, to show whether they turned upon copyright proprietorship, or a proprietorship derived from a prerogative grant.
It cannot be contended, with any semblance of justice, that the mere opinions of the judges, communicated to Mr Wheaton, as it is alleged they were, could be the subject of literary property. A book composed in part of those opinions, and in part of other matters, does not change the nature of the opinions themselves. An individual who thus mingles what cannot be exclusively enjoyed, with what can, does, upon familiar principles, rather forfeit the power over his own peculiar work, than throw the chain around that which is of itself as free as air. The intermixture, if it affect either description of materials, must render the whole unsusceptible of exclusive ownership. That which is public cannot, in its nature, be made private, but one e contra. The lucubrations of the reporter assume the hue of the authoritative parts of his book, and must abide by the result of a connexion so framed, and a colour so worn. Whether a stranger could extract the original parts in the face of a copyright, and publish them alone, it is not necessary to discuss. But upon the principles just asserted, he could give additional dissemination to the whole, as he finds it connected together. And he could, it is conceived, unquestionably select what is justly public property, and leaving the merely private work of the reporter untouched, publish the rest with entire impunity.
2. Our second point is, that the exclusive ownership of an author can be obtained only by pursuing the provisions of the acts of congress.
Upon this particular point, a moment's attention will be usefully given to the celebrated case of Miller v. Taylor, 4 Burr. 2303, and its companion, Donaldson v. Beckett, 4 Burr. 2408.
Judgment of the court of king's bench having been entered for the plaintiff, in Miller v. Taylor, a decree of the court of chancery was founded upon it in the case of Donaldson v. Beckett and others. This came before the house of lords on [p625] an appeal, and the decree of the court of chancery (and, of course, Miller v. Taylor along with it, in principle) was reversed, "the lord chancellor seconding Lord Camden's motion to reverse." Besides the influence of the decision itself, we have the force of these professional opinions, and that of a majority of the eleven judges, who gave their sentiments, that the existence of the statute deprived the author of any right of action which he may have had at the common law.
The question of a common law right has not been decided favourably to the author; and if it had been, the existence of a statute is thus recognized as superseding both the right and the remedy which may have previously existed. The marginal note of Sir James Burrow to Miller v. Taylor, 4 Burr. 2303, itself is, "authors have not by common law the sole and exclusive copyright in themselves or their assigns in perpetuity after having printed and published their compositions," &c. If in England, the source and fountain of the common law, no such right exists, what can be alleged in favour of its existence in these United States? We contend that there could be no such common law right here, even if there were no statute: and that if there could be, it is incompatible with the provisions of the statute.
All the arguments contained in the powerful and splendid opinion of Mr Justice Yates in Miller v. Taylor, 2 Burr. 2354, are of irresistible force here.
Feudal principles apply to real estate. The notions of personal property of the common law, which is founded on natural law, depend materially on possession, and that of an adverse character, exclusive in its nature and pretensions. Throw it out for public use, and how can you limit or define that use? How can you attach possession to it at all, except of a subtle or imaginative character? If you may read, you may print. The possession is not more absolute and entire in the one case than the other. It is an artificial, and therefore arbitrary rule which draws the distinction; and in order to render it available, the lesson must be read in the statute, and the means must be resorted to which are there pointed out. Even in the face of statute backed by the constitution itself, let an inventor lose his possession, and his privilege is gone. The [p626] decision of this court as to the patent for fire hose, was to this effect. Pennock v. Dialogue, 2 Peters 1.
If the right secured by statute does not enable the owner to reclaim his lost possession, even when aided by the common law, (if it be so) how can the common law, independently of all statutes, avail?
Analogous rights, if such they may be called, are nothing without actual possession and use. Light and air, and a part of the great ocean, may be claimed and held, as long as necessary for the occupant; but abandon the immediate occupation, and the exclusive power and exclusive possession are gone together.
These and similar reasons contribute to show the source of literary property every where. They justify the positive provisions, and manifest the wisdom of them which give existence to it among ourselves. It is not to be found in natural law or common law, and the deficiency is wisely and aptly supplied.
The inconveniences to the public that would be the consequence of mere common law assertion of the right would be endless. It would lead to perpetual strife. If the mere individual stamp of authorship would afford even a foundation for a claim, originality might be pretended to by numerous individuals, and a test of truth might not be obtained. If the real author give his work the official stamp of originality before it goes forth into the world, most of the questions that would otherwise occur are anticipated. The source of exclusive ownership is therefore found in positive enactments, and not in any unwritten law.
What is the common law of the United States? To sustain a copyright it must be a very different thing from what the sages of the American law have supposed. To construe existing laws and contracts, to aid in giving them effect, to furnish lucid definitions, sound principles and apt analogies, it is rich in the most important uses. For all these and various other purposes it is indispensable. Most of the crimes prohibited by statute would be misunderstood without its assistance; all of the civil enactments would become obscure if it did not shed its light never-failing streams upon them. Yet it cannot originate a single punishment, or create a single crime. It does not give any jurisdiction to the judge, or increase the [p627] number or widen the extent of the subjects on which he has authority to decide. When he has a duty to perform, it gives him wisdom and strength to perform it; but the duty itself it cannot create, enlarge, diminish or destroy.
This subject is well treated of by Mr Duponceau in his Dissertation on the Nature and Extent of the Jurisdiction of the Courts of the United States. In his preface, page xi, he says, "the common law in the United States is no longer the source of power or jurisdiction, but the means or instrument through which it is exercised; therefore, whatever meaning the words common law jurisdiction may have in England, with us they have none: in our legal phraseology they may be said to be insensible." To them may be applied the language in which the common lawyer of old spoke of a title of the civil law: "in ceux parolx n'y ad pas entendment."
Again, preface, pages xiv, xv, "I contend that in this country no jurisdiction can arise," from the common law as a source of power—"while," as a means for its exercise, "every lawful jurisdiction may be exercised through its instrumentality, and by means of its proper application."
The common law would be impracticable in its application to copyrights in the United States. It might vary in every state in the union from the rest. What is the common law of New York or Pennsylvania? It is the common law of England, as it has been adopted or modified in those respective states. Each state then has or may have its own common law as a system, or as it applies to a particular subject of regulation or control. But copyrights, as recognised by the United States, must be uniform. There cannot therefore be a state common law for copyrights for the want of necessary uniformity: and if the United States cannot derive it through the states, they have it not at all. "This power," says Chancellor Kent, 2 Com. 299, "was very properly confided to congress, for the states could not separately make effectual provision for the case."
The states themselves at no time ever treated this as a common law right. Before the adoption of the federal constitution, accordingly, several of them are found to have made special provision by statute on the subject. New Hampshire, Massachusetts, Connecticut, New Jersey, Maryland and North Carolina, [p628] each passed acts of assembly to secure to authors an exclusive enjoyment for a term of years. Why should they have secured a right already in full existence? They might have merely provided a penalty for an already perfect right. The periods for which an exclusive right is maintained are different in these provincial enactments. In Germany this difficulty is cured by rendering them perpetual in each department. But there is no common government in that country to which the subject can be referred.
This is a subject expressly ceded by the states to the general government. It is extinguished with regard to them in all its parts. Whatever power or control the states might have exercised is now gone, and all is vested in the United States. No common law power, then, of any kind in relation to copyrights exists. Not in the states, for they have surrendered the whole subject to the federal government. Not in the United States, for they exercise only the jurisdiction which is conferred by the constitution and the laws. Nor have they declined or omitted to fulfil the trust thus confided to them. If some powers are left unexercised (as in the case of bankruptcy), such omission cannot be asserted with regard to the protection of literary property. It is amply provided for. No assistance is needed from any other jurisdiction: no deficiency is even suggested to have been left to be supplied.
Mr Duponceau, in his treatise already cited, page 101, asserts, "that when the federal courts are sitting in and for the states, they can, it is true, derive no jurisdiction from the common law; because the people of the United States, in framing their constitution, have thought proper to restrict them within certain limits: but that, whenever, by the constitution, or the laws made in pursuance of it, jurisdiction is given to them either over the person or subject matter, they are bound to take the common law as their rule of decision, whenever other laws, national or local, are not applicable."
Judge Chase, in the case of the United States v. Worrall, 2 Dallas's Rep. 384, uses this comprehensive phrase, "in my opinion the United States as a federal government HAVE NO COMMON LAW!" "If indeed the United States can be supposed for a moment to have a common law, it must, I presume, be that [p629] of England; and yet it is impossible to trace when or how the system was adopted or introduced."
It would be most strange if the double jurisdiction did exist. The constitution, and the statutes enacted in furtherance of its provisions, instead of providing or estending rights and remedies, would have greatly limited and restrained them: instead of doing, as they were designed to do, much benefit to the author, they have done him much positive harm. He had already, according to the theory we are opposing, rights by the common law. These rights, if they were perfect in their nature, were unlimited in their extent. The patronage of American legislation then abridges the duration of the right, if it does not curtail its enjoyment, by imposing restraints and prescribing preliminary forms. It does more, it draws a distinction between the stranger and the citizen or resident; but the distinction, if it mean any thing, is in favour of the former, and against the latter. The natural law, or common law, would be unlimited in the duration of the privilege which it would confer; and the labour and skill exhibited in the composition, would secure the right. This would be an innate privilege of the foreigner. The statute law afterwards comes and confines the security to a term of years, and makes the way to obtain it intricate, or at least perplexed! How does this consist with the language or the spirit of the eighth clause of the eighth section of the first article of the constitution? That clause ordains, that congress shall have power "to PROMOTE the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." It would not be to promote, but to retard that progress, if it possessed already a more active stimulus. There would be no occasion to secure for a limited time, if the exclusive right already existed in perpetuity.
The case of Ewer v. Coxe, 4 Washington's Circuit Court Reports 487, is broad enough to cover all that is now contended for. Judge Washington having demonstrated the necessity of the proprietor's complying with the provisions of the act of congress, in order to obtain the benefit conferred by that act, declares 'if he has not that right, he can have no remedy of any kind.' The right thus referred to, was one purely under the statute. But it was the only available one [p630] that could exist; the only one that could carry with it, or be productive of any remedy.
In order to sustain his claim at all, an author who has not complied with the provisions of the statute, must make out these several positions:—
* That a right and a remedy existed independently of the statute, and prior to it.
* That the provision of redress by the statute does not take away a previous right.
We have endeavoured to show that the first of these positions is unsound, and if so, the second is altogether inapplicable.
The language of the supreme court of New York (Almy v. Harris, 5 Johnson 175; see also Scidmore v. Smith, 13 Johnson 322 and 1 Roll.Abr. 106, pl. 16), applied to a totally different matter, may be usefully quoted here. "If Harris had possessed a right a common law, to the exclusive enjoyment of this ferry, then, the statute giving a remedy in the affirmative, without a negative expressed or implied for a matter authorized by the common law, he might, notwithstanding the statute, have his remedy by action at the common law. 1 Com. Dig., Action on Statutes, C. But Harris had no exclusive right at the common law, nor any right but what he derived from the statute. Consequently, he can have no right since the statute, but those it gives; and his remedy, therefore, must be under the statute, and the penalty only can be recovered."
"But where a statute gives a right, and furnishes the remedy, that remedy must be pursued." Gedney v. The Inhabitants of Tewksbury, 3 Mass.Rep. 309. And, "when a statute creates a new right, without prescribing a remedy, the common law will furnish an adequate remedy to give effect to the statute right. But when a statute has created a new right, and has also prescribed a remedy for the enjoyment of the right, he who claims the right must pursue the statute remedy." Smith v. Dean, 5 Mass.Rep. 515.
The same principles will make it necessary, in order to reach the rights which the statute creates, to pursue the means which it points out. Judge Washington, in Ewer v. Coxe, 4 Wash.C.C.Rep. 491, already cited, says, "that the author [p631] must perform all that is pointed out before he shall be entitled to the benefit of the act. It seems to me," says he, "that the act will admit of no other construction."
The case of Beckford v. Hood, 7 T.R. 620, has been relied on to show that the directions of the English statute are not necessary preliminaries to the establishment of the right. The judges of the king's bench were construing a very different statute from ours. The second section of the act of 8 Anne, c. 19, 12 Statutes at Large 82, recites, that "whereas many persons may, through ignorance, offend against this act, unless some provision be made whereby the property in every such book, &c. may be ascertained, &c." and then enacts, that "nothing in this act contained shall be construed to extend to subject any bookseller, printer, or other person whatsoever, to the forfeitures or penalties therein mentioned, for or by reason of the printing or reprinting of any book or books without such consent as aforesaid, unless the title to the copy of such book or books hereafter published shall, before such publication, be entered in the registed book of Stationers Hall, &c.
The corresponding clause of the act of congress of April 29, 1802 runs thus: "that every person, &c. before he shall be entitled to the benefit of the act, &c. shall, in addition to the requisites, &c." The preliminary in the English statute is connected directly with the penalty. In ours, it is directly associated with the whole benefit of the act. The decision in Beckford v. Hood cannot affect the present case, even if it be sound. Of the soundness of it there may be much doubt, when we find Lord Hardwicke deciding, in Blackwell v. Harper, 2 Atk. 95, that "upon the act of 8 Anne, c. 19, the clause of registering with the Stationers Company is relative to the penalty, and the property cannot vest without such entry." A farther view is taken by Judge Hopkinson of this decision in Beckford v. Hood, which is respectfully submitted as a conclusive reply. It will be found in his printed opinion.(a)
Let us look at the statutes themselves. The question here between us seems to be whether the acts of congress merely provide a remedy, or also constitute a right.
The act of 31st of May 1790 would have commenced with [p632] its second section, if it had merely intended to suggest redress for the infringement of an existing right. This second section, however, is only a corollary or incident to the first, which provides, in complance with what the constitution had authorized, security to authors which they did not in any shape enjoy before. There is nothing declaratory about it.
"From and after the passing of this act the author, &c. shall have the sole right, &c. &c." The right is certainly prospective, and it is (we say) conditional. The right is to arise at all events subsequently to the passage of the act, and it is to commence "from the recording the title, & c. in the clerk's office as is hereinafter directed."
It would seem to be quite unnecessary thus gravely to confer in prospect a privilege already enjoyed, and to trammel it with conditions, if it was already unconditional. This is certainly no restraining statute.
An argument has already been used, and it will not be formally repeated, that the ostensible or professed encouragement of learning, by securing, &c. during the times mentioned, would be a mere delusion: for the encouragement had been more liberal—the security not less perfect—and the right more comprehensive, because of unlimited extent, if they respectively had any anterior existence whatever. It is no less striking, that congress, who are supposed to be declaring the common law, and merely providing a precise penalty for the infraction of a right under it, could not, by any possible exercise of their power or authority, come up to the supposed common law right; for the paramount authority of the constitution restrains the exercise of any encouragement to a limited time.
The act proceeds to mark out the preparatory step towards penalty or prohibition, viz. the legal acquisition of a copyright. (Section 1.) And how is the copyright to be legally acquired? Why only by following the directions of the statute, i.e. depositing the title in the clerk's office, publishing the record, and delivering a copy within six months to the secretary of state, to be preserved in his office. (Section 3.)
Judge Washington was inclined to think that some of these provisions were merely necessary to enable the author to sue for the forfeitures provided by the second section.
But that would be quite an empty satisfaction. The copies forfeited by the invading party are to be destroyed; and the [p633] penalty of fifty cents for every sheet in his possession, belongs one half to the United States. The author is not much the better for this provision. He might have reserved all the damages for himself, independently of the act, if the right existed previously.
It is not necessary to rely upon the construction of this act alone, if there be any doubt with regard to the true interpretation of it. The supplementary act, passed April 29, 1802, is free from all difficulty. It is on this that Judge Washington relies.
This last act provides, section 1, that the author, "before he shall be entitled to the benefit, &c. shall," in addition to the requisites enjoined in the third and fourth sections of said act, &c. "give information, by causing the copy of the record, &c. to be inserted at full length in the title page, &c."
It thus makes those clauses which had before been of doubtful name, requisites. It requires him to perform them, not as preliminary to forfeiture or penalty, which are only particular provisions of parts of the act, but as preliminary to the benefit of the act itself. He, therefore, in terms, is denied its advantages, unless he perform the conditions precedent. These, agreeably to a well known rule, are to be construed strictly, and the party who omits to bring himself within them can claim no right whatever. The statute becomes a unit; all its benefits are yielded or withheld, exactly as all its requisites have been fulfilled or disregarded.
Requisite it aptly defined by the American lexicographer, Noah Webster, to be "so needful that it cannot be dispensed with; something indispensable." An author must show that he has complied with these affirmative requisitions, or they will not be presumed for him.
There are familiar analogies which will fully sustain this position. Take the statute which regulates distresses for rent. Certain provisions are made which justify a landlord for acts which would otherwise amount to a trespass. But he must show that he has performed them strictly, or, as the law at first stood in England, and does still in Pennsylvania, he is a trespasser ab initio; and the statute of George II. only so far alters the rule, as to leave the party to his remedy action on the [p634] case for the recovery of the actual damages that may have been sustained.
If notice be required by statute, as, for example, preparatory to a suit against a magistrate for misconduct in office, not only is it never presumed, but nothing cas supply its proof; not even knowledge of the design to sue, which might be substantially the same thing. In such case, knowledge is not notice.
There is nothing against our construction in the principle which requires a strict interpretation of certain statutes. If the act be penal, we are not endeavouring to enforce the penalty. There is nothing penal as to the author claiming the copyright. All the penalties are against other persons. It is to be construed strictly when it is to be enforced against them. He claims the benefit of his copyright, which is a grant to be obtained only on conditions precedent and well defined. He attempts to enforce with rigour, if not the penal forfeitures, at least the penal prohibitions of the law against the defendant, whom he alleges to be a wrong doer. Against the defendant, thus, without (if it be without) bringing himself under the provisions of the law, the alleged proprietor denounces awful consequences. The defendant asks nothing—wants nothing, but to be let alone until it can be shown that he has violated the rights of another.
Where is the difference between this act and the act respecting patents, as regards the right of the alleged owner? This court has said, that if a defendant sued for the infringement of a patent right, "shows that the patentee has failed in any of these prerequisites on which the authority to issue the patent is made to depend, his defence is complete. He is entitled to the verdict of the jury and the judgment of the court." Grant v. Raymond, 6 Peters 220.
3. There will be little difficulty in showing that the provisions of the acts of congress have not been complied with.
The requisites are:
1st. The deposit of a printed copy of the title in the clerk's office of the district court where the author or proprietor resides.
2d. Within two months from the date thereof, the publishing of a copy of the record in one or more newspapers printed in the United States, for four weeks. [p635]
3d. Within six months, the delivery, &c. to the secretary of state of a copy to be preserved in his office.
With regard to the first volume, the bill is defective in not stating either of the two last requisites. The complainants are informed by M. Carey, and believe that all things which are requisite and necessary to be done, &c. have been done!!
An inference or conclusion even of the party, would be a sorry substitute for the allegation and proof of the facts themselves. The court must have an opportunity to judge whether all things were done, &c.; and that they can have only when the things which were done are exhibited and proved. But here is double distilled inference. The parties are informed of Matthew Carey's conjecture, and this is presented to the court as a substitute for proof; while H. C. Carey proves that Matthew Carey knew nothing about it, for all was left to him. It is extraordinary if Mr Carey really possessed any information on this subject, that he was not produced as a witness.
Upon the complainants' own allegations, their case must fail. But the proof is scarcely less defective than the allegations of the bill. Henry C. Carey, the clerk of his father in 1816, states that they were in the habit of advertising, and from the course of business he does not doubt it was advertised, but he has no recollection of it. He has no recollection at all of a deposit of a copy in the office of the secretary of state. But he says, that the most probable way in which it was sent, was by Mr Wheaton. In other words, that it was not sent by himself; and, therefore, as to any proof from him, that it was not sent at all.
Mr Brent states, that the eighty copies of the volume of Wheaton's Reports, containing the decisions for February Term 1817, were delivered to the department of state on or before the 4th day of November 1817. This refers, of course, to the second volume which contains the decisions of that term, and not the first, which is for the previous year. Subsequent volumes had been delivered in the same manner; all of them were received under the acts of congress, giving a salary to the reporter. He adds, that there has always been, according to his recollection, one or more complete sets of said reports, from the time of their publication, in the said department of state. But he is unable to recollect, or state more [p636] particularly when the same were first placed in said department, or for what purpose.
Both of these particulars, it is conceived, must be made out. The delivery must be within six months. The loose declaration that, according to his recollection, there has always been one or more sets, &c. from the time of publication, if it could have any force by itself, is done away by his acknowledged inability to recollect when they were first placed there. The object of the receipt of them too, is directly the reverse of that prescribed by the copyright law; for, instead of being delivered to be preserved in the office, &c., they were, if delivered at all, merely a part of a general library, intended to be lent out and used. If delivered to be preserved, the presumption is, that the particular copy so left would be found. It will scarcely be contended that the second edition of the first volume can cure the defects of the first. It can have no copyright existence by itself.
With regard to the subsequent volumes, the bill is scarcely less defective. The declaration of Robert Donaldson is vague and unsatisfactory. It could not be otherwise. He knew nothing of the subject. The result of the inquiries at the department of state, is evasively set forth; and were it otherwise, he must state the fact, and not the inquiry.
The bill proceeds to insist, that the complainants would still be entitled to the benefits of the acts of congress, although they should be unable to prove that a copy was delivered &c. We say, that such proof is a necessary preliminary.
The proof, with regard to these subsequent volumes, is equally defective. Of the second volume, there is no proof of publication. And of none of the volumes is there either alleation or proof of deposit, agreeably to the provisions of the law.
    The fourth volume wants publication. It began August 28th, and ended September 17th instead of 25th.
    The seventh had but two publications in July, four in August, and one in September.
    The eighth had one publication in October, five in November, and two in December.
    Of the ninth there is no evidence of publication at all.
    The tenth, eleventh and twelfth are all defective in publication.
[p637]
It is not necessary to dwell upon the facility with which proof of delivery might have been preserved and exhibited if it had been made. The requisites of the law must be shown. But the certificate of Mr Van Buren, with regard to the second edition of the first volume, is a specimen of what might have been, and would have been produced with regard to the whole, if the deposit had in fact been made.
In the absence of all right on the part of the complainants, not much difficulty is apprehended from any supposed possession or enjoyment, by colour of privilege. Judge Washington, in delivering his opinion in Ewer v. Coxe, disposes of this question to our hand. 4 Wash.C.C.Rep. 489. "I hold it to be beyond controversy," says he, "that if the plaintiff has no copyright in the work of which he claims to be the owner, a court of equity will not grant him an injunction. This was formerly the doctrine of the English court of chancery, and still is, and I conceive, notwithstanding Lord Eldon has, in some instances, granted an injunction and continued it to the hearing, under circumstances which rendered the title doubtful, if the plaintiff has possession under a colour of title. But surely if he has no title at all, or such a one as would enable him to recover at law, even that judge would, I presume, refuse an injunction."
The authorities cited by Judge Washington support the principle which he maintains.
Against whom is this mere naked possession claimed? Not the defendant; for during the period when it has existed he was only one of the mass of individuals who had not any particular concern indisturbing the complants' colourable claims. It is therefore against the public, who cannot thus be baffled of their rights.
It is, however, a most extraordinary case, that would justify a perpetual injunction without a trial at law. This is a proceeding which turns aside from the regular and proper mode of ascertaining title, and asks that the existence of it shall be definitively rested upon mere colourable claims. The complainants do not choose to bring their case to the proper test: but assuming as conclusive, what at the utmost is only prima facie evidence in their favour, they propose to hang up for ever, in a state of presumption and doubt, that which is susceptible of a just and satisfactory settlement. All that the defendants [p638] ask, in the dismission of the bill, is, that their rights may not be prejudged.