a noninfringing manner.1 or A bond may be required of plaintiff as a condition of granting a preliminary injunction.2 Dissolution. Denials of plaintiff's title right on information and belief are not sufficient to dissolve an injunction. A defendant guilty of piracy may be denied damages on dissolution of a restraining order, where the dissolution is solely on the ground of invalidity of plaintiff's copyright.* 3 [343] 3. Permanent Injunctions-a. In General. Under the statute, injunctions in copyright cases are to be granted according to the course and principles of courts of equity, and on such terms as the court or judge may deem reasonable.5 even in the case of permanent injunctions at final Accordingly, hearing, the court or judge may exercise a measure of sound legal discretion in granting or refusing the injunction. But ordinarily, if the court is satisfied at final hearing that plaintiff has a valid copyright and that defendant has infringed it, a permanent injunction will be granted to restrain further infringement. If it is doubtful whether or not there has been an infringement of copyright, 7 publishing law reports "already published or to be hereafter published by the plaintiffs"). [a] Reason for rule.-"The problem is to reach and prevent future acts of infringement, such aimed at. But as to these it is to be observed that it is only copyrighted matters that are protected, and not, therefore, until there has been actual publication and proper steps taken to copyright it, is a case presented in which the court can interfere. an In advance of this, it would have to be assumed, not only that the complainant would duly copyright his work and give notice of it, but that the defendants would continue to draw upon it, notwithstanding the warning so given." Bromley, 154 Fed. 754, 755. 1. Sweet v. Cox v. Land, etc., Journal Co., L. R. 9 Eq. 324. V. season. [a] Interlocutory injunction refused notwithstanding infringement. -In a case where the proprietor of a newspaper sought to restrain the piracy of a "list of hounds," the court was of the opinion that, although the piracy might be established, the list was liable to such frequent changes, and a correct list was so easily obtained, that it was not a case for an interlocutory injunction. Cox Land, etc., Journal Co.., L. R. 9 Eq. 324, 333 (where Malins, V. C., said: "I do not think it is a case to be de cided on an interlocutory application; and my reason is this: this list must be corrected from week to week; it could not be a correct list from the 1st of November until April, or to the end of the hunting 'Changes must take place; the list of masters, huntsmen, and whips can hardly continue to be correct, even for a week. Now, suppose were to grant an injunction, how can it be acted upon? have only to issue a fresh circular, The Defendants make an urgent appeal for answers, or send a person by rail and get the information from the masters of the hunts, and next week bring out a very correct list; and how am I to know the way in which they got their information? At present, I do not see that I can interfere"). 2. De Prato Statuary Co. v. Giuliani Statuary Co., 189 Green v. Luby, 177 Fed. 287; Trow Fed. 90; Directory Printing, etc., Co. v. U. S. Directory Co., 122 Fed. 191; Chicago Directory Co. v. U. S. Directory Co., 122 Fed. 189; Egbert v. Greenberg, 100 Fed. 447. 3. Farmer v. Calvert Lith., etc.. Co., 8 F. Cas. No. 4,651, 1 Flipp. 228. 8 [§§ 342-343 11 the court may, in the exercise of its sound discretion, refuse to grant an injunction. The courts will be slow in granting an injunction before defendant's work has been published.9 ever, been done,10 and there is no reason why It has, howpreparations for a threatened infringement may not be carried so far as to call for an injunction to prevent the consummation of the wrong." is some authority for the proposition that, although There a copyright is not perfect until all the requirements of law are complied with, still, by taking the incipient steps, a right is acquired which chancery will protect until the other acts may be done.12 is clear that no injunction can be granted under But it the copyright law to protect a merely projected publication;1 .13 and under the present statute, which provides that no action or proceeding shall be maintained until the provisions as to deposit of copies and registration have been complied with,11 an injunction will be refused if sought in a suit begun before that time.15 Where an action at law cannot be maintained, an injunction will not be granted,16 except in cases of threatened infringement which Pierpont v. Fowle, 19 F. Cas. No. against infringement. 11,152, 2 Woodb. & M. 23. Co.. 88 Fed. 74 (immorality of plain- 5. Act March 4, 1909 (35 U. S. St. 18, Morris v. Wright, L. R. 5 Ch. 279 (holding that, until defendant's work has been published and there is evidence of the actual contents, an injunction will not be granted on eviployed by defendant in preparing dence by plaintiff of the mode emhis work). 10. Thomas 849: Little v. Gould. 15 F. Cas. No. v. Lennon, 14 Fed. Sharp, [1891] W. N. 143. 8.394, 2 Blatchf. 165; Bradbury v. 11. Historical Pub. Co. v. Jones Pub. Co., 231 Fed. 638, 145 CCA 524; Morrison v. Pettibone. 87 Fed. 330. publication.-Where defendant [al Injunction granted before made preparations for the public rephad resentation of plaintiff's copyrighted ticipate the performance by plaintiff, musical composition, intending to anan injunction restraining the progranted. Thomas v. Lennon, 14 Fed. 849. posed performance by defendant was 12. Wheaton v. Peters, 8 Pet. (U. S.) 591, 8 L. ed. 1055; Boucicault v. Wood, 3 F. Cas. No. 1,693, 2 Biss. 34; Pulte v. Derby, 20 F. Cas. No. 11.465, 5 McLean 328 (both cases under the act of 1831). decided 7. West Pub. Co. v. Lawyers' Coop. Pub. Co., 79 Fed. 756, 25 CCA 25 648, 35 LRA 400 [rev 64 Fed. 360, LRA 441]; Werckmeister Pierce, etc., Mfg. Co., 63 Fed. 445 V. [rev on other grounds 72 Fed. 54. 18 CCA 4311; Fishel v. Lueckel, 53 Fed. 499; Sanborn Map, etc., Co. v. Dakin Pub. Co., 39 Fed. 266; Henry Bill Pub. Co. v. Smythe, 27 Fed. 914; Reed v. Holliday, 19 Fed. 325; Folsom v. Marsh. 9 F. Cas. No. 4 901, 2 No. 3,552, 6 Blatchf. 256; Greene v. Story 100; Daly v. Palmer, 6 F. Cas. Bishop, 10 F. Cas. No. 5.763, 1 Cliff. 186; Jollie v. Jaques, 13 F. Cas. No. 7.437, 1 Blatchf. 618; Lawrence v. Dana, 14 F. Cas. No. 8.136, 4 Cliff. 1; Story v. Holcombe, 23 F. Cas. No. 13,497, 4 McLean 306; Hogg v. Scott, L. R. 18 Eq. 444; Morris v. Ashbee, 66; Johnson v. Wyatt. 2 De G. J. & S. L. R. 7 Eq. 34; Macklin v. Richardson, Ambl. 694, 27 Reprint 451, 7 ERC 67 EngCh 15, 46 Reprint 281; Prince Albert v. Strange, 2 De G. & Sm. 652, 64 Reprint 293, 1 Hall & T. 1, 47 Reprint 1302, 1 Macn. & G. 25, 47 EngCh 19. 41 Reprint 1171; MacRae v. Holdsworth, 2 De G. & Sm. 496, 64 Reprint 222; Murray v. Bogue, 1 Drew. 353, 61 Reprint 487; Tinsley 327; Dickens v. Lee, 8 Jur. 183; Jarv. Lacy, 1 Hem. & M. 747, 71 Reprint rold v. Houlston, 3 Kay & J. 708, 69 Reprint 1294; Chappell v. Sheard, 2 51, Kay & J. 117, 69 Reprint 717; Sweet v. Maugham, 11 Sim. 51, 34 EngCh 59 Reprint 793; Scott, 11 Sim. 31, 34 EngCh 31, 59 Campbell Reprint 784; Whittingham v. Wooler, 2 Swanst. 428, 36 Reprint 679; NisKelly v. Hooper. 1 Y. & Coll. 197, 20 bet v. Golf Agency, 23 T. L. R. 370; EngCh 197, 62 Reprint 852. [a] At interlocutory tion, if at all, at the time the decretal Complainant is entitled to an injunc-petual injunction accordingly). order is entered, to restrain defend14. Deposit of copies and regisant from any further violation of his tration see supra § 174 et seq. rights, as the whole case is then be15. New York Times Co. fore the court. Lawrence v. Dana, Printing, etc., Co., 204 Fed. 586, 123 V. Sun CCA 54; New York Times Co. v. Star Co.. 195 Fed. 110. Porter. 5 F. Cas. No. 2,546, 2 Wkly Catalogue Co. V. Constitutional Newspaper Co., 40 Ch. NC (Pa.) 601; Cate v. Devon, etc.. D. 500. And see supra § 106. Contra Little v. Gould, 15 F. Cas. No. 8.394, 2 Blatchf. 165 (where the injunction restrained defendant from publishing in the future certain law which plaintiff was to publish in the reports future); Bradbury v. Sharp, [1891] W. N. 143 (in which, where a single objection to the injunction extending illustration had been Punch, Kekewich, J., said he saw no taken from to the protection of the contents of future numbers and granted a per 16. Lawrence v. Smith, Jac. 471. v. Walker, 7 Ves. Jr. 1, 32 4 EngCh 471. 37 Reprint 928; Walcot , same title, page and note number the court will grant an injunction without proof of actual damages.21 [§ 346] d. Slight Infringement. In cases where the infringement of copyright is slight, both as to the quality and the value of the matter copied, and the pirated matter is quite out of proportion to the amount of original matter in defendant's work, the court will not, as a general rule, interfere by way of injunction, but will leave plaintiff to his remedy at law.22 22 But there may be cases where the pirated matter, although small in quantity, is so material 17. Historical Pub. Co. v. Jones | year 1910." Park, etc., Co. v. Keller- | 32 L. ed. 547]; Carte v. Ford, 15 Fed. V. 18. Alfred Decker Cohn Co. Etchison Hat Co., 225 Fed. 135; Gilmore v. Anderson, 38 Fed. 846; E. W. Savory, Ltd. v. The World of Golf. Ltd., [1914] 2 Ch. 566; Nisbet v. Golf Agency, 23 T. L. R. 370. [a] Defendant's promise not to infringe further. "Where a right of this kind has been infringed by a defendant, the plaintiff is entitled to an order and is not debarred from exercising his right to sue by a suggestion on the other side that they will promise not to do it again and will pay such damages as may be agreed between them. I am not going to consider it, and it is not necessary from the point of view I take, but supposing that the plaintiffs had been offered all that they were entitled to except an order, and that then the writ was issued and the defendants had repeated the offer that they made before action, enlarging their offer by including the costs of the action up to date, and then the plaintiffs had persisted with the action, I think the whole of the subsequent costs, from the time of their offer to submit to an order, would be cast upon the plaintiffs, but that in my opinion is the only way in which, where a wrong has been done, the defendant can escape from the liability of having the rights which have been infringed asserted in a Court of law and a proper order obtained." E. W. Savory, Ltd. v. The World of Golf. Ltd., [1914] 2 Ch. 566, 571 (per Neville, J.). 19. See Patents [30 Cyc 1008]; Trade-Marks, Trade-Names. and Unfair Competition [38 Cyc 902]. 20. Park, etc.. Co. v. Kellerstrass, 181 Fed. 431; Hartford Printing Co. V. Hartford Directory, etc., Co., 146 Fed. 332; Byrne v. Statist Co., [1914] 1 K. B. 622; H. Blacklock & Co., Ltd. V. C. Arthur Pearson, Ltd., [1915] 2 Ch. 376; Sarpy v. Holland, [19081 2 Ch. 198. 1 BRC 769. See Lillard v. Sun Printing, etc., Assoc., 87 Fed. 213 (where Lacombe, J.. doubted whether an injunction should be granted for a newspaper infringement of a cut and accompanying text, on the ground that there was no likelihood of further publication or sale). [a] Applications of rule.—(1) An injunction is unnecessary where defendant acted in good faith, and immediately on notice of the infringement destroyed all infringing copies, Anglo-Canadian Music Pub. Assoc. V. Dupuis, 27 Que. Super. 485, 5 Que. Pr. 351. (2) An injunction will not be granted to restrain infringement of a copyrighted bust where all that defendant did was to exhibit a model and make a single offer to manufacture and sell copies of it, desisting on being warned. Britain v. Kennedy, 19 T. L. R. 122 (showing a printed copy of a bust). (3) "In view of the statement made by the defendant Kellerstrass in his affidavit, presented on this hearing, that he has abandoned the publication, distribution, or use of the book 'Exhibit E,' published in 1909, and that the type and matrices for printing the same have been destroyed, and therefore there is no injury therefrom threatened, the restraining order as to that is refused, but is granted as to 'Exhibit F. the book published in the strass, 181 Fed. 431, 432. (4) Where an infringing publication had become no longer a salable book at the time suit for infringement was instituted, complainant was not entitled to an injunction or to an accounting, as an incident to equitable relief, its remedy at law being adequate. Pub. Co. v. Edward Thompson Co., 169 Fed. 833 [mod on other grounds 176 Fed. 833, 100 CCA 303]. West 21. Macmillan Co. v. King, 233 Fed. 862; Sampson, etc., Co. V. Seaver-Radford Co., 134 Fed. 890 [rev on other grounds 140 Fed. 539, 72 CCA 551; Black v. Henry G. Allen Co., 56 Fed. 764; Fishel v. Lueckel, 53 Fed. 499; Reed v. Holliday, 19 Fed. 325; Farmer v. Elstner, 33 Fed. 494; Weatherby V. International Horse Agency and Exch., Ltd., [1910] 2 Ch. 297; Morris v. Ashbee, L. R. 7 Eq. 34; Smith v. Johnson, 4 Giffard 632, 66 Reprint 859; Tinsley v. Lacy, 1 Hem. & M. 747, 71 Reprint 327; Tinsley v. Lacy, 32 L. J. Ch. 535 [expl Whittingham V. Wooler, 2 Swanst. 428, 36 Reprint 679]; Sweet v. Maugham, 11 Sim. 51, 34 EngCh 51, 59 Reprint 793; Campbell v. Scott, 11 Sim. 31, 34 EngCh 31, 59 Reprint 784; Kelly v. Hooper, 1 Y. & Coll. 197, 20 EngCh 197, 62 Reprint 852. But see Borthwick v. Evening Post, 37 Ch. D. 449 (where an injunction was refused, part of a newspaper's title having been appropriated without damage); Saunders v. Smith, 3 Myl. & C. 711, 14 EngCh 711, 40 Reprint 1100 (where it was held that, where the proportion of piracy was very small, an injunction would not issue without proof of actual injury that injury would probably occur). or "Proof of actual damages is not necessary for the issuance of an injunction, if infringement appears and damage may probably follow from its continuance. . . . It is understood that no accounting is desired by the plaintiff, and an injunction only is Scught. To that I think the plaintiff is entitled." Macmillan Co. v. King, 223 Fed. 862, 868. "It appears to me that an infringement has taken place; and that as to damage, the view taken by Shadwell, V. C. in Campbell v. Scott, 11 Sim. 31, 34 EngCh 31, 59 Reprint 784, is correct, that when once the Court has found that there is 'injuria,' the plaintiff ought to be allowed to judge of the 'damnum:' who can tell to what extent she may be prejudiced by the best portions of her work being printed and sold without her consent? It would be very difficult for any jury to arrive at an exact conclusion upon that subiect." Tinsley v. Lacy, 32 L. J. Ch. N. S. 535, 539. Competition as affecting question of infringement see supra § 282. 22. Dun V. Lumbermen's Credit Assoc., 209 U. S. 20, 28 SCt 335, 52 L. ed. 663, 14 AnnCas 501 [aff 144 Fed. 83. 75 CCA 241]; Record, etc., Co. v. Bromley, 175 Fed. 156; West Pub. Co. v. Edward Thompson Co., 169 Fed. 833 [mod on other grounds 176 Fed. 833, 100 CCA 303]; Dun v. Lumbermen's Credit Assoc., 144 Fed. 83. 75 CCA 241 [aff 209 U. S. 20. 28 SCt 335, 52 L. ed. 663, 14 AnnCas 5011: Howell v. Miller, 91 Fed. 129, 33 CCA 407; Mead v. West Pub. Co.. 80 Fed. 380; Myers v. Callaghan, 20 Fed. 441 [aff 128 U. S. 617, 9 SCt 177, 439; Farmer v. Calvert Lith., etc., Co., 8 F. Cas. No. 4,651, 1 Flipp. 228; Gray v. Russell, 10 F. Cas. No. 5,728, 1 Story 11; Story v. Holcombe, 23 F. Cas. No. 13,497, 4 McLean 306; Webb V. Powers, 28 F. Cas. No. 17,323, 2 Woodb. & M. 497; Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080; Tinsley v. Lacy, 1 Hem. & M. 747, 71 Reprint 327; Bohn v. Bogue, 10 Jur. 420; Bell v. Whitehead, 3 Jur. 68; Bailey v. Taylor, 3 L. J. Ch. O. S. 66; Bramwell v. Halcomb, 3 Myl. & C. 737, 14 EngCh 737, 40 Reprint 1110; Saunders v. Smith, 3 Myl. & C. 711, 14 EngCh 711, 40 Reprint 1100; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380; Sweet v. Carter, 11 Sim. 572, 34 EngCh 572, 59 Reprint 994; Campbell v. Scott, 11 Sim. 31, 34 EngCh 31, 59 Reprint 784; Jarrold V. Heywood, 18 Wkly. Rep. 279; Kelly v. Hooper, 1 Y. & Coll. 197, 20 EngCh 197, 62 Reprint 852. See also Greene v. Bishop, 10 F. Cas. No. 5,763, 1 Cliff. 186, 203 (where Clifford, J., said: "Decided cases have been cited by the counsel for the respondent, which show that when the invasion of a copyright is slight, and the copying consists of indefinite or small parts, so scattered through the work that it is difficult or nearly impossible to estimate either the amount of the injury to the complainant, or the profit to the respondent, relief in equity has sometimes been refused, and the party turned over to his remedy at law. Those decisions were doubtless correct as applied to the facts and circumstances under which they were made"). [a] Rule applied.—(1) Where it appeared that complainant's copyright on a large part of the material used had been abandoned or lost, and that much of the material used could have been lawfully obtained from other sources, so that the amount of actionable infringement was small in comparison with the whole quantity of matter, and an adequate remedy at law existed for any damages, an injunction and an accounting of profits should be denied. West Pub. Co. v. Edward Thompson Co., 169 Fed. 833 [mod on other grounds 176 Fed. 833, 100 CCA 303]. (2) "It may be that the evidence would require a finding that with respect to a few names an improper use of Dun's book was made by an agent or correspondent of appellees. But the proportion is so insignificant compared with the injury from stopping appellees' use of their enormous volume of independently acquired information, that an injunction would be unconscionable. In such cases copyright owner should be remitted to his remedy at law." Dun v. Lumbermen's Credit Assoc., 209 U. S. 20, 23, 28 SCt 335, 52 L. ed. 663, 14 Ann Cas. 501. (3) Where passages which are neither numerous nor long have been taken from different parts of the original work, the court will not interfere to restrain the publication of the work complained of, but will leave plaintiff to his remedy at law. Sweet v. Cater, 11 Sim. 572, 34 Eng Ch 572, 59 Reprint 994. [b] Where a phrase is copied here and there, but there is nothing to show extensive copying or extraction of the vital part of the original work, the remedy by injunction 23 and of such value in quality that the court will interfere by injunction." And it has been said that plaintiff ought not to be remitted to his action for damages where the court can see from the impossibility of estimating these damages that the remedy must be entirely illusory.24 To authorize an injunction against particular parts of an alleged infringing work, it is only necessary that a substantial portion of the copyrighted work should have been taken; it is not material that the injunction will practically destroy the value of the original portions of the work.2 25 27 [347] e. Determination of Right at Law. Formerly it was not unusual to deny plaintiff an injunction until he had established his right at law and obtained a verdict finding infringement,26 particularly where there was a reasonable doubt as to plaintiff's right, or defendant's infringement.2 Such practice is no longer followed, as a court of equity is equally competent to determine those questions, either with or without the aid of a jury.28 ought not to be applied. Moffatt & Paige, Ltd. v. George Gill & Sons, Ltd., 84 L. T. Rep. N. S. 452. [c] The question of minuteness in the value of the original matter extracted from a work for purposes of criticism will have great weight with the court in influencing its decision on the application for an injunction. Bell v. Whitehead, 3 Jur. 68. 23. Bohn v. Bogue, 10 Jur. 420; Bell v. Whitehead, 3 Jur. 68; Bramwell v. Holcomb, 3 Myl. & C. 737, 14 EngCh 737, 40 Reprint 1110; Saunders v. Smith, 3 Myl. & C. 711, 14 EngCh 711, 40 Reprint 110. [a] Eight lines enjoined.-Where defendant had taken eight lines from plaintiff's work, and it was held that defendant was not entitled to use them without acknowledgment of the source from which they came, and that plaintiff was entitled to an injunction to restrain the publication of these eight lines. Cobbett Woodward, L. R. 14 Eq. 407. V. [b] Where pirated matter constitutes small part of plaintiff's, but bulk of defendant's work-In a case where the pirated matter formed a very small portion of plaintiff's work, but constituted the bulk of defendant's work, an injunction was granted. Kelly v. Hooper, 4 Jur. 21. Quantity and quality as affecting infringement see supra § 280. 24. Farmer v, Elstner, 33 Fed. 494. 25. West Pub. Co. v. Lawyers' Co-op. Pub. Co., 64 Fed. 360, 25 LRA 441 [rev on other grounds 79 Fed. 756, 25 CCA 648, 35 LRA 400]; Farmer v. Elstner, 33 Fed. 494; List Pub. Co. v. Keller, 30 Fed. 772; Emerson v. Davies, 8 F. Cas. No. 4,436, 3 Story 768; Lawrence v. Dana, 15 F. Cas. No. 8.136, 4 Cliff. 1; Story v. Holcombe, 23 F. Cas. No. 13,497, 4 McLean 306; Webb v. Powers, 29 F. Cas. No. 17,323, 2 Woodb. & M. 497. 26. Dodsley v. Kinnersley, Ambl. 403, 27 Reprint 270; Bogue v. Houlston, 5 De G. & Sm. 267, 64 Reprint 1111; Lawrence v. Smith, Jac. 471, 4 EngCh 471, 37 Reprint 928; Rundell v. Murray, Jac. 311, 4 EngCh 311, 37 Reprint 868; McNeill v. Williams, 11 Jur. 344; Dickens v. Lee, 8 Jur. 183; Lowndes v. Duncombe, 1 L. J. Ch. O. S. 51; Southey v. Sherwood, 2 Meriv. 435, 35 Reprint 1006; Bramwell v. Halcomb, 3 Myl. & C. 737, 14 EngCh 737, 40 Reprint 1110; Saunders v. Smith, 3 Myl. & C. 711, 14 EngCh 711, 40 Reprint 1100; Sweet v. Cater. 11 Sim. 572, 34 EngCh 572, 59 Reprint 994; Platt v. Button, 19 Ves. Jr. 447, 34 Reprint 583; Wilkins v. Aikin, 17 Ves. Jr. 422. 34 Reprint 163; King v. Reed, 8 Ves. Jr. 223 note, 32 Reprint 341 note; Hogg v. Kirby, 8 Ves. Jr. 215, 32 Reprint 336; [348] f. Laches and Acquiescence. The doctrine of laches as a defense to a bill for injunetion, when sought to protect a vested property right, such as a copyright, patent, or trade-mark, has application mainly only to preliminary injunctions." On final hearing the rule is that laches or delay is no answer to a permanent injunction unless accompanied by circumstances amounting to either an actual abandonment of the legal right, or to an estoppel to assert it against defendant,30 even where the laches or delay is sufficient to bar an accounting for damages and profits. This is the well estab lished rule in patent32 and trade-mark cases,33 and injunctions in copyright cases are governed by the same rule, the statute in each instance providing that injunctions shall be granted according to the course and principles of courts of equity. Indeed infringement is a present continuing wrong to which the doctrine of laches, in the sense of mere delay, can hardly be applied.35 With but a single excep Walcot v. Walker, 7 Ves. Jr. 1, 32 Reprint 1. [a] Adverse possession. Where defendant has been in possession a long time, claiming by an adverse title, an injunction will not be granted until his right is first settled at law. Cooper v. Mattheys, 6 F. Cas. No. 3,200. V. 27. Blunt v. Patten, 3 F. Cas. No. 1,580, 2 Paine 397; Martinetti Maguire, 16 F. Cas. No. 9,173, 1 Abb. 356; Miller v. McElroy, 17 F. Cas. No. 9,581, 2 PaLJ 305; Southey v. Sherwood, 2 Meriv. 435, 35 Reprint 1006; Bramwell v. Halcomb, 3 Myl. & C. 737, 14 EngCh 737, 40 Reprint 1110; Saunders v. Smith, 3 Myl. & C. 711, 14 EngCh 711, 40 Reprint 1100; Grierson v. Jackson, Ridg. L. & S. 304; Anonymous, 1 Vern. Ch. 120, 23 Reprint 357; Walcot v. Walker, 7 Ves. Jr. 1, 32 Reprint 1. [a] "The court always exercises its discretion as to whether it shall interfere by injunction before the establishment of the legal title." Per Cottenham, L. C., in Saunders v. Smith, 3 Myl. & C. 711, 14 EngCh 711, 40 Reprint 1100. 28. Worthington v. Batty, 40 Fed. 479; Hubbard v. Thompson, 25 Fed. 188 [rev on other grounds 131 U. S. 123, 9 SCt 710, 33 L. ed. 76]; Yuengling v. Schile, 17 Fed. 97, 20 Blatchf. 452; Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; Baker v, Taylor, 2 F. Cas. No. 782, 2 Blatchf. 82; Binns v. Woodruff, 3 F. Cas. No. 1,424, 4 Wash. C. C. 48; Farmer v. Calvert Lith., etc., Co., 8 F. Cas. No. 4,651, 1 Flipp. 228; Gould v. Hastings, 10 F. Cas. No. 5,639; Little v. Gould, 15 F. Cas. No. 8,394, 2 Blatchf. 165; Paige v. Banks, 18 F. Cas. No. 10,671, 7 Blatchf. 152 [aff 13 Wall. 608, 20 L. ed. 709]; Pierpont v. Fowle, 19 F. Cas. No. 11,152, 2 Woodb. & M. 23; Dodsley v. Kinnersley, Ambl. 403, 27 Reprint 270; and cases passim. "It is claimed that complainant is not entitled to an injunction for the reason that it does not appear by the bill that he has settled his right at law, and obtained a verdict of a jury in his favor touching the alleged infringement. Such, no doubt, was formerly the law, and now, in some cases, the court will, no doubt, require that to be done. But it is now well settled that both the right and the infringement may be set up and adjudicated in a court of equity without having been first determined at law." Farmer v. Calvert Lith., etc., Co., 8 F. Cas. No. 4,651, 1 Flipp. 228, 231. "If this be an infringement of the Copyright Act, it does not appear to me that I ought to send it to a jury to consider whether any damage has been incurred. I am now bound by the statute to deal with the question 31 34 | myself. Formerly these cases were sent to be tried at law, because this Court could not grant an injunction without the assistance of a Court of law." Tinsley v. Lacy, 32 L. J. Ch. N. S. 535. 539. [a] Title to copyright in dispute. -Where the title to a copyright under a contract of sale is in dispute, it may be settled in a court of chancery, under a bill for an infringement thereof. Pierpont v. Fowle, 19 F. Cas. No. 11,152, 2 Woodb. & M. 23. 29. Sawyer Spindle Co. v. Taylor, 69 Fed. 837 [aff 75 Fed. 301, 22 CCA 203] (where the distinction between the application of the doctrine of laches to preliminary and final injunctions in patent and like cases is stated with exceptional clearness and force); Brush Electric Co. v. Electric Impr. Co., 45 Fed. 241 (where Sawyer, J., said, in a patent case, that the doctrine of laches was generally applicable only to cases of prelimi nary injunction). Laches as a defense see generally Equity [16 Cyc 150 et seq]; Injunctions [22 Cyc 777 et seq). 30. Werner Co. v. Encyclopædia Britannica Co.. 134 Fed. 831, 1024, 67 CCA 281; Black v. Henry G. Allen Co., 56 Fed. 764; Gilmore v. Anderson, 38 Fed. 846; Boucicault v. Fox, 3 F. Cas. No. 1,691, 5 Blatchf. 87; Boucicault v. Wood, 3 F. Cas. No. 1,693, 2 Biss. 34; Greene v. Bishop, 10 F. Cas. No. 5,763, 1 Cliff. 186; Hogg v. Scott, L. R. 18 Eq. 444; Weldon v. Dicks, 10 Ch. D. 247; Platts v. Button, Coop. 303, 10 EngCh 303, 35 Reprint 566, 19 Ves. Jr. 447, 34 Reprint 583; Buxton v. James, 5 De G. & Sm. 80, 64 Reprint 1027; Maxwell v. Somerton, 30 L. T. Rep. N. S. 11; Latour v. Bland, 2 Stark 382, 3 ECL 455. "In order that the defence should prevail, it must be made out that there is proof of at least one of three propositions-viz., either that the Plaintiff authorized what was done by the Defendants, or that his conduct conduced to what was done by them, or that there is enough to displace the prima facie proof of the Plaintiff's copyright." Morris V. Ashbee, L. R. 7 Eq. 34, 38. 31. See infra § 353. 32. See Patents [30 Cyc 9961. 33. See Trade-Marks, TradeNames, and Unfair Competition [38 Cyc 881]. 34. Act March 4. 1909 (35 U. S. St. at L. 1075 c 320 § 36), and U. S. Rev. St. § 4970 (copyright statutes); U. S. Rev. St. § 4921 (patent statute); U. S. Rev. St. § 4942, and Act of Febr. 20, 1905 (33 St. at L. 724 c 592 § 19) (trade-mark statutes). 35. See Ide v. Trorlicht, etc., Co., 115 Fed. 137, 53 CCA 341; StearnsRoger Mfg. Co. v. Brown, 114 Fed. to constitute fatal laches, all the following elements must be present: A seemingly unnecessary and unreasonable delay;39 knowledge of the facts showing the infringement or charging plaintiff with notice of it;10 and prejudice to defendant resulting from the delay and making it inequitable to grant an injunction.11 Laches or acquiescence will not bar relief against infringement, unless it is tantamount to fraud for plaintiff to insist on his legal rights; 939. 52 CCA 559 (both patent cases). 36. West Pub. Co. V. Edward Thompson Co., 176 Fed. 833. 838. 100 CCA 303 [mod 169 Fed. 833] (which case rests on the principle of estoppel or acquiescence, the court finding early knowledge of the infringing use and saying: "Its conduct shows that it must have considered this to have been a fair use of its publications because it did not begin this action until the defendant, after 16 years of labor and immense outlay of money, had published almost its entire work"). 133. 49 Reprint 52. in other words, unless plaintiff is estopped.12 There is no burden on the copyright proprietor to be astute in discovering the piracy; he may rely on the presumption that no one will infringe his rights.43 Circumstances may excuse the delay, in which event it is immaterial. Consent, whether express or implied from long acquiescence with knowledge of the infringement, will prevent relief in equity on the principle of estoppel.45 [349] 4. Form and Extent of Injunction—a. In General. The form of the injunction is dependent on the nature and extent of the piracy, and an injunction may be either general or particular in its terms and extend to the whole or to specified portions of the piratical work. But defendant is v. American Newspaper Assoc., 130 Fed. 460 [aff 134 Fed. 831, 67 CCA 2811. [b] Fourteen years.-The court of equity will not restrain the publication of a copyright work where plaintiff has tacitly allowed such publication for fourteen years, has been reimbursed for his expenses, and has obtained considerable profit from the publication thereof. Rundell v. Murray, Jac. 311, 4 EngCh 311, 37 Reprint 868. [c] Twenty-three years. Where a work has been left for twenty-three years in the hands of a bookseller to whom it was originally sent with an intention of having it published, which intention was afterward relinquished, and the work passed into the hands of defendants who pubauthor, an injunction was refused. Southey v. Sherwood, 2 Meriv. 435, 35 Reprint 1006. 37. Wooster v. Crane, 147 Fed. 515, 77 CCA 211; Encyclopædia Britannica Co. V. American Newspaper Assoc., 130 Fed. 460 [aff 134 Fed. 831, 67 CCA 2811; Patterson v. J. S. Ogil-lished it without the consent of the vie Pub. Co., 119 Fed. 451; Black v. Henry G. Allen Co., 56 Fed. 764; Gilmore v. Anderson, 38 Fed. 846; Boucicault v. Fox. 3 F. Cas. No. 1,691, 5 Blatchf. 87; Greene v. Bishop, 10 F. Cas. No. 5,763, 1 Cliff. 186; Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1; Webb v. Powers, 29 F. Cas. No. 17.323, 2 Woodb. & M. 497. 38. Hogg v. Scott, L. R. 18 Eq. 444; Mexborough v. Bower, 7 Beav. 127, 29 EngCh 127, 4. Reprint 1011; Lewis v. Chapman, 3 Beav. 133, 43 EngCh 133, 49 Reprint 52; Buxton v. James, 5 De G. & Sm. 80, 64 Reprint 1027; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380; Baily V. Taylor, 1 Russ. & M. 73, 5 EngCh 73, 39 Reprint 28, Taml. 295, 12 Eng Ch 295, 48 Reprint 118; Pitman V. Hine, 1 T. L. R. 39; Platt v. Button, 19 Ves. Jr. 447, 34 Reprint 583; Robinson v. Wilkins, 8 Ves. Jr. 224 note, 32 Reprint 341 note. 39. Encyclopædia Britannica Co. v. American Newspaper Assoc., 130 Fed. 460 [aff 134 Fed. 831, 67 CCA 281]. [a] Delay in prosecuting earlier suits. The failure of the publishers of a foreign encyclopedia to press to completion suits for infringement of copyrights of certain volumes does not estop them from prosecuting suits for infringement of parts of later volumes. Black v. Henry G. Allen Co., 56 Fed. 764. 40. Encyclopædia Britannica Co. v. American Newspaper Assoc., 130 Fed. 460 [aff 134 Fed. 831, 67 CCA 281]; Weldon v. Dicks, 10 Ch. D. 247; Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080; Chappell v. Sheard, 2 Kay & J. 117, 69 Reprint 717. ac 41. West Pub. Co. V. Edward Thompson Co., 176 Fed. 833, 100 CCA 303 [mod 169 Fed. 833]. "In Campbell v. Scott, 11 Sim. 31, [a] Acquiescence in infringement. 34 EngCh 31, 59 Reprint 784, which-To sustain an allegation of is very similar to the present case, quiescence in the infringement of a this remark was justly made by the copyright, it must be shown that plaintiff's counsel: If the plaintiff there was knowledge of the infringehad acquiesced in the defendant's ment. Weldon v. Dicks, 10 Ch. D. taking a portion of his poems, he 247. would have lost his right to call on this Court to interfere against other persons infringing his copyright.' That is a point of very considerable importance; and if this lady had waited when some persons had printed a quarter of that which is hers until some other persons had taken a half or three quarters before she complained, the Court would have said, You have acquiesced in it; persons have taken a quarter or a half of your work and published it as theirs, and you did not object to that, therefore now you cannot interfere in any way. That shews the extreme importance of authors coming at the earliest possible moment to ask the Court to prevent the violation of their property." Tinsley V. Lacy, 32 L. J. Ch. 535, 538. [a] Delay of six years. Where the original and the pirated copy have appeared at the same time, and the owners of the copyright have had ample opportunity for discovering the piracy, a delay of six and onehalf years will deprive plaintiffs of their right to an injunction. Lewis v. Chapman, 3 Beav. 133, 43 EngCh| "The cases in which laches has been considered a bar to equitable relief proceed on the assumption that the party to whom it is imputed has knowledge of his rights. Halstead v. Grinnan, 152 U. S. 412, 14 SCt 641, 38 L. ed. 495; Ritchie v. Sayres, 100 Fed. 520. Laches is not, like limitation, a mere matter of time, but, rather, a question of the inequity of granting the relief." Encyclopædia Britannica Co. v. American Newspaper Assoc., 130 Fed. 460, 466 [aff 134 Fed. 831, 1024, 67 CCA 281]. 42. Gilmore v. Anderson, 38 Fed. 846. [a] Delay in prosecuting former suits.-The fact that suits are pending for the infringement of certain volumes of an encyclopedia, when such suits have not been prosecuted to a final hearing, does not estop the publishers from prosecuting suits for the infringement of later volumes. Black v. Henry G. Allen Co., 56 Fed. 764. 43. Encyclopædia Britannica Co. 44. Wooster v. Crane, 147 Fed. 515, 77 CCA 211; Buxton v. James. 5 De G. & Sm. 80, 64 Reprint 1027; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380. [a] Delay pending establishment of title at law-A delay will not prejudice plaintiff if solely caused by his awaiting the result of litigation, whether prosecuted by himself or others, to settle a doubtful question of law involving the validity of his title. Buxton v. James, 5 De G. & Sm. 80, 64 Reprint 1027. [b] Delay for the purpose of examining the infringing work.-A delay may be justified by showing that it was necessarily consumed in the comparison of the two works for the purpose of ascertaining how much of plaintiff's work had been appropriated. Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380. 45. Heine v. Appleton, 11 F. Cas. No. 6,324, 4 Blatchf. 125; Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1; Johnson v. Wyatt, 2 De G. J. & S. 18, 67 EngCh 15, 46 Reprint 281; Tinsley v. Lacy, 1 Hem. & M. 747, 71 Reprint 327; Rundell v. Murray, Jac. 311, 4 EngCh 311, 37 Reprint 868; Chappell v. Sheard, 2 Kay & J. 117, 69 Reprint 717; Bailey v. Taylor, 3 L. J. Ch. O. S. 66; Strahan v. Graham, 17 L. T. Rep. N. S. 457; Saunders v. Smith, 3 Myl. & C. 711, 14 EngCh 711, 40 Reprint 1100; Latour v. Bland, 2 Stark. 382, 3 ECL 455; Allen v. Lyon, 5 Ont. 615 (where the author assented to and encouraged publication). "There has often been great difficulty about granting injunctions, where the Plaintiff has previously, by acquiescing, permitted many others to publish the work; where ten have been allowed to publish, the Court will not restrain the eleventh." Rundell v. Murray, Jac. 311, 4 EngCh 311, 37 Reprint 868, 870. [a] Delay not necessarily acquiescence.-(1) Mere delay in taking proceedings after knowledge of a piracy is not in itself such acquiescence as will deprive plaintiff of his right to an injunction at the hearing. Hogg v. Scott, L. R. 18 Eq. 444. (2) An injunction may be obtained after the copyright has been infringed to plaintiff's knowledge for a period of four years. Hogg v. Scott, L. R. 18 Eq. 444. [b] Custom of trade is insufficient to imply acquiescence or consent. Maxwell v. Somerton, 30 L. T. Rep. N. S. 11. [c] "Not only conduct with the party with whom the contest exists, but conduct with others may influence the court in the exercise of its equitable jurisdiction by injunction." Saunders v. Smith, 3 Myl. & C. 711, 730, 14 EngCh 711, 40 Reprint 1100. 46. Sampson, etc., Co. v. SeaverRadford Co., 140 Fed. 530, 72 CCA 55; West Pub. Co. v. Lawyers' Co-operative Pub. Co., 64 Fed. 360, 25 LRA 441 [rev on other grounds 79 Fed. 756, 25 CCA 648, 35 LRA 400]; Farmer entitled to be informed with reasonable certainty [350] b. Where Pirated Parts Are Separable. Where defendant's work is not wholly piratical, and the pirated matter can be readily separated from the rest of the work without destroying the use and value of the original matter, the injunction will be limited to the parts pirated.48 Especially will this be done where a broader injunction is likely to lead to consequences to defendant out of all proportion to the damage done to plaintiff.49 An approved form of injunction in such cases is one in terms restraining the printing, sale, disposition, etc., of any copy of defendant's work containing any of the infringing matter,50 although it is not v. Elstner, 33 Fed. 494; List Pub. Co. v. Keller, 30 Fed. 772; Daly v. Palmer, 6 F. Cas. No. 3.552, 6 Blatchf. 256; Emerson v. Davies, 8 F. Cas. No. 4,436, 3 Story 796; Folsom v. Marsh, 9 F. Cas. No. 4,901, 2 Story 100; Greene v. Bishop, 10 F. Cas. No. 5,763, 1 Cliff. 186; Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1; Story v. Holcombe, 23 F. Cas. No. 13,497, 4 McLean 306; Webb v. Powers, 29 F. Cas. No. 17,323, 2 Woodb. & M. 497; Pike v. Nicholas, L. R. 5 Ch. 251, 7 ERC 108; Hogg v. Scott, L. R. 18 Eq. 444; Morris v. Ashbee, L. R. 7 Eq. 34; Scott v. Stanford, L. R. 3 Eq. 718; Kelly. v. Morris, L. R. 1 Eq. 697; Lewis v. Fullarton, 2 Beav. 6, 17 Eng Ch 6, 48 Reprint 1080; Colburn v. Simms, 2 Hare 543, 24 EngCh 543, 67 Reprint 224; Jarrold v. Houlston, 3 Kay & J. 708. 69 Stevens v. Wildy, 19 L. J. Ch. 190; Reprint 1294; Smith v. Chatto, 31 L. T. Rep. N. S. 775. [a] Scope of injunction restraining unauthorized sales of subscription work.-Defendant, a dealer in books, who had wrongfully obtained possession of a number of copies of a copyrighted work which was sold by subscription only was enjoined from selling such copies, but the court refused to grant an injunction restraining him from dealing in the book in the future otherwise than as he might deal with plaintiff, or from interfering with the local agent of the work. Henry Bill Pub. Co. v. Smythe, 27 Fed. 914. 47. Sweet v. Bromley, 154 Fed. See also Injunctions [22 Cyc 754. 958]. [a] Restraining "unlawful use."An injunction simply in terms restraining defendants from making any unlawful use of complainants' publication would be objection that it was argumentative to the and unspecific. Sweet v. Bromley, 154 Fed. 754. open 48. Historical Pub. Co. v. Jones Pub. Co., 231 Fed. 638, 145 CCA 524; Da Prato Statuary Co. v. Giuliani Statuary Co., 189 Fed. 90; Dam v. Kirk la Shelle Co., 166 Fed. 589 [aff 175 Fed. 902, 99 CCA 392, 20 AnnCas 1173]; Sampson, etc., Co. v. SeaverRadford Co., 134 Fed. 890 [rev on other grounds, but appr on this point 140 Fed. 539, 72 CCA 55]; Social Register Assoc. v. Murphy, 128 Fed. 116; Trow Directory, etc., Co. v. Boyd, 97 Fed. 586; Lillard v. Sun Printing, etc., Assoc., 87 Fed. 213 [dist Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547] (applying rule to a newspaper infringement of a cut and accompanying text); West Pub. Co. v. Lawyers' Co-op. Pub. Co., 64 Fed. 265; List Pub. Co. v. Keller, 30 Fed. 772; Emerson v. Davies, 8 F. Cas. No. 4,436, 3 Story 768; Greene v. Bishop, 10 F. Cas. No. 5,763, 1 Cliff. 186; Story v. Holcombe. 23 F. Cas. No. 13.497, 4 McLean 306; Webb v. Powers, 29 F. Cas. No. 17,323, 2 Woodb. & M. 497; Lamb v. Evans, [1892] 3 Ch. 462; Morris v. Ashbee, L. R. 7 Eq. 34; Jarrold v. Houlston, [§§ 349-351 an unusual form for the decree to direct a general injunction against defendant's work with leave to defendant to apply again in reference thereto after expunging all matter copied from plaintiff's work.51 In cases of partial infringement, an injunction in general terms against the parts pirated ought to be granted whenever it appears by sufficient evidence that piracy has been committed to an extent which is likely to be seriously prejudicial to plaintiff, without waiting until all the parts which have been pirated can be distinctly specified." [351] c. Where Pirated Parts Are Not Sepa- [a] Rule applied.-Where Co. v. Jones Pub. Co., 231 Fed. 638, 51. Frank Shepard Co. v. Zachary P. Taylor Pub. Co., 185 Fed. 941 [aff 193 Fed. 991, 113 CCA 6091; Park, etc., Co. v. Kellerstrass, 181 Fed. 431; Co., 140 Fed. 539, 72 CCA 55 [rev 134 Sampson, etc., Co. v. Seaver-Radford Fed. 8901; Social Register Assoc. v. Murphy, 128 Fed. 116; Williams v. Smythe, 110 Fed. 961; Kelly v. Morris, L. R. 1 Eq. 697, 703; Lewis v. Reprint 1080. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 [a] Reason for rule.-"While the restraining order can only apply to the portions of the book which constitute piracy or invasion of the comyet, as what is permissible and what operate upon the forbidden matter, is improper are combined in one and the same book so interwoven and that the defendant without elimination cannot use or employ what is his own without employing and using that which is not, he ought not at this juncture to exact of the court the task of such separation so as to relieve him therefrom. plete, erasures, he can then be heard shall have made the When he proper. comthe decree." Park, etc., Co. v. Kelleras to a modification or restriction of strass, 181 Fed. 431, 432. 49. Farmer v. Elstner, 33 494. Fed. [a] Illustration.-Complainant was the author and proprietor of an elab-plainant's copyright, and should only orate book of one thousand and twenty-four pages, entitled "A History of Detroit and Michigan, or, the publication was a pamphlet of two Metropolis Illustrated." Defendant's hundred and seventy-four pages, entitled "The Industries of Detroit," mainly historical and contained about the first seventy pages of which were hundred short complainant's book. from two hundred pages consisted of adThe remaining vertisements only. It was held that, as three fourths of the extracts from complainant's book, and practically all to which he could lay claim as original matter, the first eleven pages of the pamwere contained in phlet, and as to enjoin the whole would cast a disproportionate pecuniary loss on defendant, the injunction should extend only to this portion. one extracts Radford Co., 140 Fed. 539, 72 CCA 55 [a] Approved form.-"In view of or [b] The appropriate form of decree is that directed in West Pub. Co. v. Lawyers' Co-op. Pub. Co., 79 Fed. 756, 25 CCA 648, 35 LRA 400, where the court ordered an injunction, with certain named exceptions, defendant's whole digest, but with against leave to defendant to move before a fringing from the noninfringing matmaster for a segregation of the inter. Such a decree does exact equity. [c] When not followed. "The complainant maintains that the decree should direct a general injuncapply again in reference tion, permitting the respondent to when it should have expunged all thereto matter copied from the complainant's work. This form of decree would not be an unusual one; but, for this case, we can see no sufficient distinction in substance between it and that which the court entered to require our attention, while, on the other hand, the decree entered is clearly more convenient, because it finally disposes of the case and relieves the court from a reconsideration of it. In this we have reference to the particular case before us, where the infringing portions of the clearly pointed out. Of course, inrespondent's publication have been stances might easily be conceived where the infringing book was piratical in its general nature, tained piratical matter with original work that the entire mingled publication should be suppressed; but proposition of that brought before us." kind is Sampson, Co. v. Seaver-Radford Co., etc., 539, 540, 72 CCA 55 [rev 134 Fed. 140 Fed. 8901. no SO or con 52. Park, etc., Co. v. Kellerstrass, 181 Fed. 431; Farmer V. Calvert Lith., etc., Co., 8 F. Cas. No. 4,651, 1 For later cases, developments and changes in the law see cumulative Annotations, same title, page and note number. |