The cross-bill raised the important question, whether the defendants had acquired the right, not only of publishing the work themselves, but also of preventing the author, or any person claiming under him, from issuing an edition while they were the authorized publishers. On this point the court expressed the opinion, that, as the copyright had been entered in the name of the defendants, the legal title was in them, but only for the purposes of the agreement; that they had the exclusive right to publish on the conditions of the contract, but were not empowered to transfer the copyright, nor to publish except on the terms agreed on; and that the author was not entitled to publish the work in disregard of the contract.1 As the agreement was for the publication of two editions, the defendant's rights were restricted to those two editions, and hence they would cease when the second edition should be sold.

Agreement for Use of Matter in Specified Editions. In Lawrence v. Dana, it appeared that the complainant, William Beach Lawrence, at the request of Mrs. Wheaton, widow of Henry Wheaton, had prepared two annotated editions of Wheaton's Elements of International Law; of which one was issued in 1855, and the other in 1863. Both were published by Little, Brown, & Co., of Boston; and the copyright in each was entered in the name of Mrs. Wheaton. The complainant prepared the notes, without asking or receiving pay for his services. He alleged that it had been understood and agreed between Mrs. Wheaton and himself that she should be entitled to the use, in those two editions, of the matter prepared by him; but that, subject to this use, the property in such matter should be his, and that she should hold in trust for him the copyrights taken out in her name. The agreement for the publication of the first of the two editions was oral. Concerning the second edition, Mrs. Wheaton agreed in writing "to make no use of Mr. Lawrence's notes in a new edition, without his written consent," and to give to him "the right to make any use he wishes to of his own notes." On this agreement the complainant based his suit.3 After these two editions had been sold, Mrs.

15 McLean, 335. 2 2 Am. L. T. R. N. s. 402.

8 See Ibid. 405.

Wheaton employed the defendant to prepare another annotated edition, which was also published by Little, Brown, & Co. The complainant alleged that this edition contained matter copied from his notes in the two preceding editions, and hence infringed his copyright therein. The court held that Mrs. Wheaton had acquired the right to use Lawrence's notes in the two editions as agreed, but not otherwise; that the legal title to the copyright was in her; that the copyright was the property of Lawrence, in whom vested the equitable title which entitled him to maintain his suit in equity; that neither Mrs. Wheaton nor any one claiming under her had a right to use Lawrence's notes, without his consent, in any publication other than the two editions agreed on.1

1 "The legal title to the copyrights," said Mr. Justice Clifford, "is in Mrs. Wheaton or her legal representative; and the complainant claims, in the first place, that the same is held in trust for him as the equitable owner of the notes by virtue of the original arrangement under which the same were prepared. Secondly, the complainant claims that the negative as well as the affirmative promise contained in the agreement in regard to the use of the notes was binding upon Mrs. Wheaton; and that both are obligatory upon her legal representative, and all others having notice of the existence of those covenants.

"Two principal objections are taken by the respondents to the claim of the complainant that he is the equitable owner of the notes under the original arrangement. First, they deny that the proofs in the case warrant any such finding, especially as the theory is denied in the answer. Second, they contend that Mrs. Wheaton, if such was the agreement, could not legally copyright the notes; as it would show that she was but a mere licensee, and that the copyrights in that state of the case would be void on that account.

First, conclusive proof to show what was the original understanding between the parties is found in the correspondence upon the subject. Unaided by any one, the complainant prepared the

notes, but with the express understanding that he would do so without any charge, and that the property of the same, so far as respected the new edition, should vest in the proprietor of the book, and that she should take out the copyright and remain, as she was, the sole and exclusive owner of the entire book. Liberal, however, as the agreement was toward the proprietor of the book, yet it did not include any thing except that edition; and when the second annotated edition was prepared under a similar arrangement, as conceded by both parties, the agreement was not extended beyond that publication. Confirmation of those propositions is unnecessary, as they are not controverted by the respondents. They deny that it was agreed between the parties that the notes should ever afterward become the property of the complainant; but they do not allege nor offer any proof tending to show that his agreement with Mrs. Wheaton extended beyond the annotated editions. Tested by these indubitable facts, the rights of the parties are plain, and easy to be understood. As the proprietor of the book, Mrs. Wheaton, by virtue of that arrangement, became the absolute owner of the notes as they were prepared, so far as respects the editions in question; and she also acquired therewith the right to copyright the same for the

Agreement with State Reporter for Publication of Law Reports. In Little v. Hall, it appeared that the complainants by a contract with Christopher Morgan, the Secretary of State of New York, and George F. Comstock, the State Reporter, were to publish and have the copyright of reports of decisions to be prepared by Comstock. The last named received a salary from the State for acting as reporter, and the copyright in the reports was to be the property of the State. When three volumes of reports had been published under the agreement above referred to, Comstock ceased to be State Reporter; but afterward, with the consent of the court, he prepared, from manuscripts, some of which had come into his hands while reporter, and others had been given to him by the judges after the expiration of his term of office, a fourth volume of reports, which was bought and published by the defendants. The plaintiffs republished this volume, and sought to enjoin the sale of the edition published by the defendants. The Supreme Court of the United States held that the complainant's contract had been made with Comstock as State Reporter; and that, whatever claim they might have against him for failure to supply the manuscripts to them, they could not be considered as the owners of the copyright in the volume of reports prepared by him after he had ceased to be State Reporter.1

protection of the property; but she did not acquire thereby any right or title, legal or equitable, to use the notes in a third edition of the annotated work without the consent of the complainant. Proof to support any such right or title is entirely wanting in the record, and no such right or title is set up in the answer. Such omission confirms the view that no such right or title was intended to be conveyed; and the subsequent conduct of the parties in executing the memorandum tends strongly to the same conclusion.

"Second, suppose the facts to be so, then the respondents contend that the copyrights are void, because, as they insist, the applicant for the same was a mere licensee of the author of the notes; but the court is of a different opinion, for the reasons already given, as well as for others yet to be mentioned." 2 Am. L. T. R. N. s. 418.

1 18 How. 165. "After the expiration of his official term, Comstock did not and could not act as reporter. His successor, having been appointed and qualified, discharged the duties of the office and received the salary. . . . As his term of office had expired, he was unwilling to publish the fourth volume without compensation for his labor. This changed his relations with the plaintiffs, as that contract was made as reporter, and on the supposition that he would be continued in that office. . . . Comstock could not have published the work as reporter without the consent of the court of appeals, and also the Secretary of State, who was required to secure the copyright to the State; and for his labor in preparing the notes, references, &c., and superintending the printing, he could have received no compensation.

"Without saying what effect might

Principles Drawn from Foregoing Cases. Certain general principles may now be drawn from the cases which have been examined. These cases present contracts which, with respect to the duration or extent of the right to publish, may be arranged in three general classes: 1, those in which the number of copies to be published, or the time during which publication is to continue, is expressly limited; 2, those in which the right of publication and its duration are made conditional on a certain event; 3, those in which the agreement is indefinite as to the number of copies to be published, or the period through which publication is to extend.

A person who has acquired the right to publish only one edition of a work cannot publish another edition, without authority.1

Where the agreement is for the exclusive publication of a specified number of copies, the publisher acquires the right to print and sell on the terms of the contract that number of copies; and, while those terms are observed by the publisher, the author is powerless to revoke the authority given, or himself to publish, until the number of copies agreed on has been sold.2

An agreement which is made conditional on a certain event becomes binding on the occurrence of that event. Thus, where the contract provided that, if a second edition should be called for, the publishers should publish it, the latter acquired the

have been given to the contract had the relation of the parties remained unchanged, we are unable to say, as the case now stands before us, that the plaintiffs were the legal owners of the manuscript within the copyright law. The contract was made by Comstock as reporter, whose duties were regu lated by law; and the obligations of the complainants as publishers were embodied in the contract, and were in compatible with any publication on private account. The entire labor of the work was performed by Comstock, not as reporter, but on his own account. It is, we think, not a case for a specific execution of the contract; and in effect that is the object of the bill. ... Under the changed relation of the

parties, the plaintiffs cannot be considered as the legal owners of the manuscript for the purposes of the contract under the copyright law. Whatever obligation may arise from the contract under the circumstances as against Comstock must be founded on his failure to furnish the manuscripts to the plaintiffs, and of such a case we can take no jurisdiction as between the parties on the record." McLean, J., Ibid. 171, 172.

1 Lawrence v. Dana, 2 Am. L. T. R. N. s. 402. See also Delf v. Delamotte, 3 Jur. N. s. 933.

2 Sweet v. Cater, 11 Sim. 572; Pulte v. Derby, 5 McLean, 328. See also Blackie v. Aikman, 5 Sc. Sess. Cas. 719.

right, and became bound, when a second edition was called for, to publish that edition on the terms of the contract.1 Under such agreement, the question whether a new edition is demanded by the public is not left solely to the discretion of the publisher; but is one of fact, which may be determined by proof. But, where the agreement was for the publication of a single edition, and, without any special provision for that purpose, had in view the issue of following editions, the court was of opinion that it was left to the publisher to determine the proper time for bringing out a new edition.

An agreement that the publishers shall publish a second edition, if demanded by the public, and print as many copies as they can sell, an exclusive publication being understood, gives them the right, when such demand arises, to publish and sell as many copies as can properly be considered to belong to that edition, and to prevent the author, or any one claiming under him, from publishing until such copies shall be sold.* And so, where the publishers are authorized and agree to publish as many editions as may be demanded, there can be little doubt that they have the right, and are bound, to continue the publication on the terms of the agreement as long as they can sell the book. In this case, the rights and obligations of the parties are ended only when the demand for the book ceases, or the conditions of the contract are violated.5

When neither the time during which the publication is to last, nor the number of editions or copies to be published, is specified, the publisher is not bound to publish more than the first edition; and the author, by giving proper notice, may end

1 Pulte v. Derby, 5 McLean, 328. 2 "If Derby & Co. find a second edition called for, they are bound to prepare the plates, and publish a second edition. Now, if a second edition was called for, which is a fact susceptible of proof, could the defendants, in the exercise of their discretion, refuse to publish? Such a ground would be in opposition to the spirit of the contract; and it is supposed that a Court of Chancery, looking at the whole contract, would have compelled them to publish. The discretion vested in the

defendants was not an arbitrary one, but a discretion to be governed by facts, and on the establishment of the facts the right of the complainant could be enforced." McLean, J., Ibid. 334.

3 Reade v. Bentley, 4 Kay & J. 665. 4 Pulte v. Derby, supra.

5 Such was the agreement in controversy in Stevens v. Benning. The case was decided on other grounds. But Vice-Chancellor Wood expressed obiter the same view of the law that is given in the text. See ante, p. 347, note 1.