Agreement Indefinite as to Duration and Number of Copies. Subsequent Editions, if called for. Transfer of Rights of Publisher in Bankruptcy to Third Persons. In Stevens v. Benning,1 the contract between William Forsyth, the author, and Robert Saunders and William Benning, the original publishers, of a Treatise on the Law relating to Composition with Creditors, came up for judicial construction. The agreement was that the book should be published at the expense and risk of the publishers, and that the net profits should be divided equally between them and the author. Nothing was said about the copyright, the number of copies to be printed, or the absolute duration of the agreement. It was, however, agreed that, in case the first edition should be sold, "and a second or any subsequent edition of the said book be required by the public," Forsyth should make the necessary revision, and Saunders & Benning should publish "the said second and every subsequent edition" on the same conditions agreed on for the original publication. It was further provided, that, in case any edition should not be entirely sold within five years after publication, the publishers might dispose of the unsold copies in such manner as they deemed most advisable, in order that

time when he might think it right to publish some subsequent edition; and he was taking care to impose an obligation on Sweet to sell; and, while he imposes that obligation, he is himself bound at the same time to perform his part of the contract, which is not to interfere with the sale of the book. I think that, upon the plain construction of this contract, Sweet has obtained a right in the copyright of the work, to the extent that he is to be at liberty to be the sole publisher of it until the whole edition, consisting of two thousand five hundred copies, shall be sold. He therefore is an assign of the copyright, in a limited sense." 11 Sim. 578.

It appeared that some of the passages in the defendant's publication had been published in earlier editions of Sir Edward Sugden's work, as well as in the tenth; and, as to these, it was contended that the plaintiff had

no right to complain. On this point the Vice-Chancellor said: "But I do not think that that fact at all alters the case; for the entire copyright in all those prior editions was vested in Sir E. Sugden when he made the agreement with the plaintiff; and my opinion is that the effect of that agreement was to give to the plaintiff, as against Sir E. Sugden and all persons claiming under him, a right to insist that the matter contained in the tenth edition should not be published whilst he was performing his part of the contract, by selling that edition to the public. And, that being my view of the case, I think that, although the passages may be contained in some prior edition, yet, if they are contained in the tenth edition as well, the court ought to prevent their being copied." Ibid. 580.

11 Kay & J. 168, on ap. 6 De G., M. & G. 223.

the account might be "finally settled and closed." The first edition was published by Saunders & Benning in 1841. Afterward, John Kirton Gilliat succeeded Saunders in the firm, which now assumed the title of William Benning & Co., and in 1844 published a second edition of the work revised by the author. In 1851, William Benning was adjudged a bankrupt, and afterward his assignees and Gilliat assigned to Stevens & Norton the contract which had been made by Saunders & Benning with Forsyth. At the same time, about four hundred copies of the second edition of Forsyth's book were transferred to Stevens & Norton. In the mean time, William Granger Benning had published a third edition of the work revised by Forsyth, who was ignorant of the transactions by which Stevens & Norton claimed to have acquired their rights. The latter firm now sought to restrain the further publication of the book by W. G. Benning, and also applied for an account of profits.

Both Vice-Chancellor Wood, before whom the suit was first brought, and the judges on appeal, found great difficulty in determining the precise nature of the contract between Forsyth and Saunders & Benning, and the rights of the original parties under it. They agreed, however, that it was not an assignment of the copyright. The Vice-Chancellor expressed the opinion that the first publishers were entitled, and were bound, to publish on the terms of the agreement as many

1 Vice-Chancellor Wood regarded the contract as "a special kind of agency, under which the agents were bound to sell, and to take the risk of there being no profits upon themselves." 1 Kay & J. 175. But, in the following case of Reade v. Bentley, the same judge, in considering a like contract, remarked that the defendant was more than a mere agent of the plaintiff. A mere agent," he said, "may be paid, as the defendant was to be paid, by a share of the profits: but a mere agent never embarks in the risk of the undertaking; and here the defendant took upon himself the whole expense and risk of bringing out the work. Clearly, therefore, the case is

something more than one of simple agency." 4 Kay & J. 662. Lord Justice Knight Bruce thought that whatever rights vested in Saunders & Benning, by virtue of the contract with Forsyth, they acquired "by way of joint adventure with him or of partnership with him." 6 De G., M. & G. 229. Lord Justice Turner expressed the opinion, that, if there was a partnership, it was "not in the copyright, but in the copies printed under the license contained in the agreement. In that case, the court has nothing to do with the question of partnership, except as regards the unsold copies." Ibid. 231.

editions as might be required by the public, and that during the existence of the contract they had the exclusive right of publication and of sale; that the agreement was terminable by failure to comply with its material conditions; and that after its termination the author would not be at liberty to publish until the first publisher had sold the editions printed under the agreement.2 It was, however, not necessary to

decide these questions, as the original parties to the agreement were not before the court. Nor was it necessary to determine what rights had passed to the assignees in bankruptcy. But the Vice-Chancellor, after pointing out the circumstances under which the original publishers might have been entitled to an injunction, incidentally remarked, that "it would be very possible for the assignees, disposing of the remaining copies of this work as part of the bankrupt's effects, as they might properly do if they could prove clearly that no disadvantage would thereby be occasioned to Mr. Forsyth, and if they made such sale within a reasonable time, to sustain a suit for an injunction under similar circumstances." 1

The judgment was that the contract in controversy was in the nature of a personal engagement; and hence that the rights and obligations created by it, whatever they were in the case of the original parties, were not transferable, and therefore had not passed to the plaintiffs. Nor was the standing of the plaintiffs the same as that of the assignees in bankruptcy through whom they claimed to have derived their interests. The injunction was accordingly refused.2

been printed, and all the expenses incurred, the publishers might have a right in that edition somewhat similar to that recognized in Sweet v. Cater, 11 Sim. 572; so that they might contend, that, having incurred all the liabilities, and having performed their duty by doing every thing necessary on their part to bring the book into the market, they had a right, until they had realized their profit, to prevent the author from interfering with them by bringing into the market any thing which might deteriorate the value of what they had on hand; and that, therefore, no new edition of the book should be published which would destroy the value of the former one. I still think that Messrs. Saunders & Benning, suing under this agreement, and showing that they had performed their part and were ready to continue to do so, would be entitled to prevent Mr. Forsyth from disposing of a third edition of his work until they had sold the preceding edition." 1 Kay & J. 176.

11 Kay & J. 177.

2 "The principal question then is," said Vice-Chancellor Wood, "whether this agreement is a personal engagement or not. It would be difficult for me to say, that, in a contract of this kind, the author is utterly indifferent into whose hands his interests under such an engagement are to be intrusted. It is not merely a question of his literary interests; but certain publishers undertaking to incur the expenses of bringing out the work, and fixing the price, the author is to have a share of the profits; and they are to decide in what shape the book is to come out, and at what price it is to be sold, and are to account with him. I must say, that, in my opinion, these are peculiarly personal considerations; and that this contract bears the impress of being a personal contract in all these respects. It could not be a matter of indifference to Mr. Forsyth, that the assignees in bankruptcy of Mr. Benning should be at liberty to transfer the future right of fixing the price of

This decision was affirmed on appeal; but it does not appear how far the judges agreed with the views expressed by the Vice-Chancellor as to the respective rights of the original parties to the agreement.1