Above Decision Questioned. The correctness of the rule laid down in this decision, that the author may publish at any time after notice of the termination of the agreement, and before the publisher has had an opportunity to sell the copies lawfully printed, is open to reasonable doubt. It had not been expressly agreed in this case that the publishers should have the right of exclusive publication. But the court held that such must be taken to be the understood or implied meaning of the contract; because otherwise the publishers, after incurring the cost and assuming the risk of publication, might be unjustly deprived of the profits to which they were entitled. The same reason applies with equal force in determining whether the publisher is to have the sole liberty of selling the copies which he was authorized to print. If the author is free, at any time after giving notice to end the agreement with the first publisher, to license another to publish and sell, the latter may issue a competing edition, and even sell at a lower price, immediately after the first publisher has brought out a large edition at great expense, and before he has had an opportunity to sell any considerable number of copies, or even before he has sold any copies. In this way, the first publisher may not only be prevented from realizing the profits to which he is entitled, but may also be subjected to heavy losses in consequence of the expenses of publication. The Master of the Rolls replied to this argument by saying, that, if the publishers "want that protection," they "must contract for it." He might have said, with equal reason, that they could not successfully claim the exclusive right of publication during the existence of the agreement, unless they had contracted for it. But he held that they had acquired that right; and yet they had not agreed for it more clearly than they had for the right of exclusively selling the copies which they had been authorized to print. the arrangement. If you do want that protection for a term of years, or for a definite term, you must contract for it. That is all. But I cannot import such a term into the contract. If I did, I should make partnerships at will involve consequences that the partners never dreamt of." Jessel, M. R., Ibid. 501. 1 If Mrs. Cook could lawfully au thorize the defendants to bring into the market a new edition, while two thousand copies printed by the plaintiffs remained unsold, she could grant a similar license when forty-two thousand copies, or even the entire number printed, were still in the plaintiffs' stock. It was conceded in this case that the right both of printing and of selling was exclusive in the defendants during the existence of the contract. It has been seen that the author cannot end the agreement, as far as the printing is concerned, without giving due notice to the publisher; and that such notice, to be operative, must be given before any expense has been incurred on a future edition. Does not the same principle govern in ending the agreement as far as the right of selling is concerned? It is not consistent to hold that the author is powerless to interfere with the printing of an edition when the publisher will thereby incur loss, but that he is free to subject the publisher to a much greater loss by defeating the sale of the edition as soon as it is published. The publisher prints with the understanding that his right to sell is to be exclusive; and, as has been seen, this right is conceded to be exclusive, while the agreement lasts. Is not the author bound, as in the case of printing, to give due notice before he can annul that right; and must not such notice, to be operative, be given before the copies are printed? In other words, is not the author powerless to end the agreement, as far as the selling is concerned, until the copies printed shall have been sold? It may be objected that, if the author cannot publish while any copies printed under the agreement remain unsold, he may practically be deprived of his copyright, since there may be little or no demand for such copies; or it may be said, the publisher may neglect or refuse to sell them. It is clear that the latter has no right to neglect or refuse to sell. If there is no demand for the copies printed, or if the demand be insignificant, the first publisher would not sustain any material loss by the author's permitting another publisher to publish a new edition; and a court of equity might refuse to interfere with such publication. While there is a fair demand for the copies printed by the first publisher, the author is not deprived of his copyright nor the benefits for which he bargained; since he is entitled to the royalty on the copies sold, or other consideration, for which the agreement was made. The question under consideration is not free from doubt and 1 Reade v. Bentley, 3 Kay & J. 271, 4 Id. 656. difficulty. The true doctrine would seem to be, that an agreement which is indefinite as to the time of its continuance, and as to the number of copies to be published, and which, while it continues, gives to the publisher the exclusive right of printing and of selling, cannot be ended until a reasonable time for selling the copies printed under it has passed. The publisher may at any time be prevented from printing a future edition on which he has incurred no expense; but it would seem that he is entitled to have a fair opportunity to sell exclusively the copies which he has printed on his faith in the agreement.1 Held in England that Buyer of Copyright for Limited Time may Sell all Copies Printed during that Time. Where it had been agreed that the publisher should have "the copyright and sole right of sale for four years," Vice-Chancellor Wood held that the right of printing and selling reverted to the author at the end of the four years, but that the publisher was entitled to 1 Willis v. Tibbals, 1 Jones & Sp. (N. Y.) 220, was an action in the New York Superior Court, growing out of the alleged breach of a contract for the publication of a book written by the plaintiff. The agreement, which appears to have been oral, was that the defendant should publish the book, and pay to the plaintiff a royalty on each copy sold. It was not specified how long the publication should continue, or how many copies should be published, nor whether the defendant was to be the exclusive publisher. When eight thousand copies had been printed, and before all of them had been sold, the author, without notifying the publisher of his intention to end the agreement, and without the knowledge of the latter, authorized another firm to publish the book. The action was brought by the author for the recovery of money alleged to be due under the contract; but the counter-claim, set up by the defendant for damages sustained in consequence of the publication and sale of the book by another publisher, raised the question whether the defendant had acquired the right to be the exclusive publisher during the existence of the contract, or whether during that time the author was at lib. erty to license another to publish. The fact that the plaintiff had granted such a license, without taking any steps to end his agreement with the defendant, raised, or should have raised, the vital question, which had been so elaborately discussed and decided in the two suits of Reade v. Bentley, whether an author is at liberty at any time, and without giving any notice, arbitrarily to end an indefinite contract which he has made with a publisher. This question, whose determination was essential to a right decision of the case, is not referred to in the reported opinion. The court held that, in the absence of an express agreement to that effect, the defendant had not acquired the right of exclusive publication; and, in effect, that the plaintiff, without taking any steps to end his contract with the defendant, was entitled at any time to authorize another to publish. This decision was rendered without any reference, as far as appears from the report of the case, to the leading authorities on the subject, and is entitled to little consideration. sell after the expiration of that term the copies which he had printed in good faith during the term.1 And that, after Sale of Copyright, Seller may Sell Copies Printed before Sale. It has also been held that, after he has assigned his copyright, the assignor is free to sell any copies of the book which he had printed before the assignment was made.2 In this, as well as the case last referred to, there was no express agreement or mutual understanding as to the sale of the copies in dispute. Of course, if an express or an implied agreement had been proved, the rights of the parties would have been determined by it. Law Claimed to be Different in United States. The two cases under consideration were decided under the English statute. The soundness of the decisions has been questioned elsewhere in this work, and it is maintained that a different construction should be given to like agreements in this country: that the buyer of a copyright for a limited term is not entitled, without the consent of the owner, to sell copies after that term has ended; and that an assignment of the copyright divests the assignor of the right of sale.3 Negative Covenant by Author. It has been seen that an author, in agreeing with a publisher for the exclusive publica 1 Howitt v. Hall, 6 L. T. N. s. 348. a publisher was not likely to incur the "The copyright acts," said the Vice- useless expense of printing copies Chancellor," were directed against print- enough to exhaust the demand for all ing (8 Anne, c. 19, and 5 & 6 Vict. c. 45, time, and have them lying on his s. 15); and when, as in this case, the hands unprofitably. But the answer defendant had acquired the right of was palpable, that, if the author wished lawfully printing the work, he was at to guard against such a contingency, liberty to sell at any time what he had he might easily secure himself by so printed. The words, 'sole right of stipulating what number of copies was sale,' might or might not have been to be printed. Should, however, a superfluous; but after four years the case of fraud be established against a right to print the work reverted to the publisher under such a state of circumauthor, who had taken care to secure stances, the court could deal with it. himself in that respect. It had been But no case of fraud was alleged in the suggested that the effect might be to present case. What the defendants destroy the copyright in the author had done appeared to him (the V. C.). altogether, as the publisher, who had to have been done perfectly bona fide; purchased the copyright for a limited and they were entitled under the conperiod only, might during that period tract to do what they had done." Ibid. print off copies enough to last for all 350. time. Probably a nice question might have arisen as to the number of copies of which an edition might consist; but 418. 2 Taylor v. Pillow, Law Rep. 7 Eq. See ante, pp. 338-342. tion of a literary composition, binds himself not to publish, or permit a third person to publish, the same work while the first publisher's rights are exclusive. So also an author, in giving one person the right to publish a book, may covenant not to write another work on the same subject, or to take part in a rival publication, or to do any thing to defeat or prejudice the sale of the first composition. Lord Eldon held that a covenant made with his copartners by the dramatist Colman, not to write plays for any other theatre than the Haymarket, was not analogous to a contract in restraint of trade and against public policy.1 It may be regarded as settled that a Court of Chancery will restrain an author, or any person having notice, from violating an express negative covenant made by the author; 2 and it has been held that a third person, without notice of the covenant, may be enjoined from publishing or selling a book in violation of it. The same principle would doubtless apply in the case of a negative covenant, not express, but clearly implied and understood by all the parties. It has been held that an actor may bind himself by an implied stipulation not to act in any other theatre than that for which he is regularly engaged; and a court of equity will enjoin him from violating such covenant. There is no reason why literary contracts should not come within the same rule.5 Author may not Reproduce Work after Sale of Copyright. After an author has sold the copyright in a book, he is not free to reproduce substantially the same matter in another work. Even in the absence of any special agreement, the 1 Morris v. Colman, 18 Ves. 437. "I cannot therefore," said the Lord Chancellor, see any thing unreasonable in this. On the contrary, it is a contract which all parties may consider as affording the most eligible, if not the only, means of making this theatre profitable to them all as proprietors, authors, or in any other character which they are by the contract to hold." 2 Barfield v. Nicholson, 2 Sim. & St. 1; Brooke v. Chitty, 2 Coop. (temp. Cottenham) 216; Colburn v. Simms, 2 Hare, 543, 558; Warne v. Montague v. Flockton, Law Rep. 16 Eq. 189. See also Webster v. Dillon, 3 Jur. N. s. 482; Fechter v. Montgomery, 33 Beav. 22; Daly v. Smith, 6 Jones & Sp. (38 N. Y. Superior Ct.) 158. 5 For a further consideration of this subject and the authorities bearing on it, see latter part of Chap. XI. |