54

are so intermingled with the rest of the piratical work that they cannot well be distinguished from it, the entire profits realized by defendant will be given to plaintiff,53 and the injunction will extend to the entire work unless defendant is able to and does segregate and point out by satisfactory proof the parts that do not infringe," and this is true, even though a very large proportion of defendant's work is unquestionably original. After plaintiff has shown the existence of substantial infringement, the burden shifts to defendant to segregate it, if possible, and if not possible he must bear the loss caused by his own wrong. 58 This is an application of the doctrine of confusion of goods. Where defendant sustains the burden of segregation, the injunction is directed in the form previously men

Flipp. 228; Kelly v. Morris, L. R. 1 Eq. 697; Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080; Stevens v. Wildy, 19 L. J. Ch. 190; Mawman v. Tegg. 2 Russ. 385, 3 EngCh 385, 38 Reprint 380.

53. See infra § 354.

54 Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514 [foll Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547]; Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547; Frank Shepard Co. v. Zachary P. Taylor Pub. Co.. 193 Fed. 991, 113 CCA 609 [aff 185 Fed. 941]; Park, etc., Co. v. Kellerstrass, 181 Fed. 431; Hartford Printing Co. V. Hartford Directory, etc., Co., 146 Fed. 332; Sampson, etc.. Co. v. SeaverRadford Co., 140 Fed. 539, 72 CCA 55 [rev 134 Fed. 890]; Encyclopædia Britannica Co. v. American Newspaper Assoc.. 130 Fed. 460 [aff 134 Fed. 831, 1024, 67 CCA 281]; Social Register Assoc. v. Murphy, 128 Fed. 116; Trow Directory Printing, etc., Co. v. U. S. Directory Co., 122 Fed. 191; Edward Thompson Co. v. American Law Book Co., 119 Fed. 217; Williams v. Smythe, 110 Fed. 961; Trow Directory, etc., Co. v. Boyd, 97 Fed. 586; West Pub. Co. v. Lawyers' Co-op. Pub. Co., 79 Fed. 756, 25 CCA 648, 35 LRA 400 [rev 64 Fed. 360, 25 LRA 441]; Farmer V. Elstner, 33 Fed. 494; Emerson v. Davies, 8 F. Cas. No. 4.436, 3 Story 768; Lawrence v. Dana, 15 F. Cas. No. 8,136, 4 Cliff. 1; Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080; Stevens v. Wildy, 19 L. J. Ch. 190; Bain v. Henderson, 16 B. C. 318; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380; Cartwright v. Wharton, 25 Ont. L. 357, 20 OntWR 853, 1 DomLR 392.

"The objectionable parts of the defendants' articles are so intermingled with the other parts that it is impossible satisfactorily to separate them. In all such cases the rule is to enjoin the publication of the whole of the literary matter in which the piracy is found." Encyclopædia Britannica Co. V. American Newspaper Assoc., 130 Fed. 460, 467 [aff 134 Fed. 831, 67 CCA 281].

[a] Lord Eldon's reason for rule. -"Upon this aspect of the case I adopt, as strikingly applicable. the terse language of Lord Eldon in Mawman v. Tegg, 2 Russ. 385, 3 Eng Ch 385, 38 Reprint 380, at pp. 3901: 'As to the hard consequences which would follow from granting an injunction, when a very large proportion of the work is unquestionably original, I can only say, that, if the parts which have been copied cannot be separated from those which are original, without destroying the use and value of the original matter, he who has made an improper use of that which did not belong to him must suffer the consequences of so doing. If a man mixes what belongs to him with what belongs to me, and the mixture be forbidden by the law, he must again separate them. and he must bear all the mischief and loss which the separation may occasion.

57

tioned.58

Under

[§ 352] 5. Enforcement and Operation. the present statute, any injunction that may be granted restraining and enjoining the doing of anything forbidden by the copyright statute may be served on the parties against whom such injunction is granted, anywhere in the United States, and is operative throughout the United States.59 This provision is founded on the act of 1897,60 which, however, was limited to the infringement of dramatic and musical copyrights.61 This is now made general in its application to copyrights, with the provision for dissolution in other districts eliminated. Prior to these statutes, injunctions in copyright cases, like any other injunctions, were enforceable only in the district where granted.62 Now

If an individual chooses in any work
to mix my literary matter with his
own, he must be restrained from
publishing the literary matter which
belongs to me; and if the parts of
the work cannot be separated, and if
by that means the injunction, which
restrained the publication of my lit-
erary matter, prevents also the pub.
lication of his own literary matter.
he has only himself to blame.'"
Cartwright v. Wharton, 25 Ont. L.
357, 364, 20 OntWR 853, 1 DomLR
392.

ter Assoc. v. Murphy, 128 Fed. 116; Lawrence v. Dana, 15 F. Cas. No. 8.136, 4 Cliff. 1; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385, 38 Reprint 380 [cit and appr Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080]; Cartwright v. Wharton, 25 Ont. L. 357, 20 ÖntWR 853, 1 DomLR 392.

56. Frank Shepard Co. v. Zachary P. Taylor Pub. Co., 193 Fed. 991, 113 CCA 609 [aff 185 Fed. 941]; Stevens v. Wildy, 19 L. J. Ch. 190.

"I do not think that I am bound to go through the whole book; but I apprehend that the law at present is in conformity with the old Roman law, which is, that if the defendant will take the plaintiff's corn and mix it with his own, the whole should be taken to be the plaintiff's; and after the defendants in this case have taken so much as I see has been taken, I think the injunction ought to be granted.' Stevens v. Wildy, 19 L. J. Ch. 190, 193.

Burden of proof as to segregation see infra § 424.

57. Callaghan v. Myers, 128 U. S. 617. 9 SCt 177, 32 L. ed. 547; Lewis v. Fullarton, 2 Beav. 6, 17 EngCh 6, 48 Reprint 1080; Cartwright v. Wharton, 25 Ont. L. 357, 20 OntWR 853, 1 DomLR 392. See Confusion of Goods 12 C. J. p 490.

58. See supra § 350.

59. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 36).

60. Mr. Currier's report to the House of Representatives, Report No. 7083, p 17, 59th Congress. 2d session.

61. Act Jan. 6, 1897 (29 U. S. St. at L. 481); Lederer v. Rankin, 90 Fed. 449. See also Fraser v. Barrie, 105 Fed. 787 [aff 116 Fed. 285, 53 CCA 563] (holding that this statute does not affect question of original

[b] Rule applied.-(1) Where some substantial use of copyrighted material is shown, an injunction against the entire publication will be granted, unless defendant can affirmatively justify its work as to particular portions of the books complained of, and thus except from the decree such articles or volumes as are affirmatively freed from the accusation of infringement. West Pub. Co. v. Edward Thompson Co., 169 Fed. 833 [mod on other grounds 176 Fed. 833. 100 CCA 303]. (2) "As to the relief, the nature of the work was such that it is impossible to separate that which was copied and used by the defendant and that which was original, and under the circumstances the court feels constrained to apply the rigorous rule that a defendant who has committed the unlawful act and benefited by the prior research, work, and authorship of another must abide by the consequence. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547. In the present form of defendant's book of citations and under the circumstances in which it has been issued, its publication and sale must be enjoined in its entirety." Frank Shepard Co. v. Zachary P. Taylor Pub. Co., 185 Fed. 941, 944 [aff 193 Fed. 991. 113 CCA 609]. (3) | venue). "The relief ought to apply to the entire publication, because the parts which are obviously copied are inextricably interwoven with the parts about which no positive proof of copying is presented, and the defendant has made no effort to separate the same. Probably, if it wished to do so, it could not." Per Platt, J., in Hartford Printing Co. v. Hartford Directory, etc., Co., 146 Fed. 332 335. (4) "In such a condition of affairs, where by the misconduct of defendant's employés a part of complainant's copyrighted work has been ap-motion may call upon the court in propriated by defendant, and so mingled with original matter contained in its publication that no one except its own employés who did the wrong can segregate the pirated from the original matter, and they do not make such segregation, the whole work, or so much of it as is tainted by the workmanship of the unfair users, should be enjoined and accounted for." West. Pub. Co. v. Lawyers' Co-op. Pub. Co., 79 Fed. 756, 772, 25 CCA 648, 35 LRA 400 [quot Frank Shepard Co. v. Zachary P. Taylor Pub. Co., supra].

55. Dam v. Kirk la Shelle Co., 166 Fed. 589 [aff 175 Fed. 902, 99 CCA 392, 20 AnnCas 1173]; Social Regis

[a] Construction of act of 1897."In my judgment, it was not the purpose of this statute to deal with the question of locality, as affecting the jurisdiction of the court, but it was enacted, among other things, for the purpose of authorizing the service of, and to make operative, injunctions, in such cases, anywhere in the United States, and to confer jurisdiction upon the circuit court of any district to hear motions to dissolve and set aside such injunctions; and in such cases the court hearing the

which the suit was brought, and the injunction granted, to transmit 'a certified copy of all the papers on which the injunction was granted.' When a suit is brought and an injunction is granted, the process may be served anywhere in the United States, and shall be operative anywhere in the United States; but the defendants may, in any circuit in which they may be performing or representing the dramatical or musical composition, move to discharge the injunction, and will not be compelled to go to the court in which the suit was brought." Lederer V. Rankin, 90 Fed. 449.

62. See Injunctions [22 Cyc 971].

injunctions in copyright cases are enforceable by proceedings in contempt or otherwise by any other court or judge possessing jurisdiction of defendant. Enforcement by contempt proceedings is governed by the ordinary rules.64

63

66

[353] D. Accounting for Profits-1. Right to Accounting. The right to an accounting and recovery of defendant's profits is an equitable remedy and exists independently of express statutory authorization.65 This equitable right to an account of profits is incident to the right to an injunction,& and where the case for an injunction fails, the right to recover the infringer's profits also fails, because it is only the right to an injunction which supports the jurisdiction in equity, the accounting being incidental and given under the power to afford complete relief in cases of which equity otherwise has jurisdiction.67 A bill will not lie solely for an accounting of profits.68 The theory of the equitable remedy is that the infringer has made the profits by the appropriation and use of another's property, and therefore holds them as a trustee ex maleficio for the true owner.69 Ordinarily where infringement is found and an injunction granted, an accounting of

63. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 36). 64. Eisfeldt v. Campbell, 171 Fed. 594; Encyclopædia Britannica Co. v. American Newspaper Assoc., 130 Fed. 493 (where the unintentional violation of temporary injunction by agents of defendants acting in violation of instructions was held not to render defendants guilty of contempt); Colliery Engineer Co. V. Ewald, 126 Fed. 843 (where defendant was held to have purged his book of infringement, and a motion to punish for contempt was therefore denied); Cartwright v. Wharton (No. 3), 6 DomLR 890, 4 OntWN 210, 23 OntWR 214. See Contempt 13 C. J. p 1; Injunctions [22 Cyc 1009].

"The injunction will be continued pendente lite, and the question of contempt reserved to the final hearing." Eisfeldt v. Campbell, 171 Fed. 594.

65. Stevens v. Gladding, 17 How. (U. S.) 447, 15 L. ed. 155; Falk v. Gast Lith., etc., Co., 54 Fed. 890, 4 CCA 648.

66. Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514; Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547; Stevens v. Gladding, 17 How. (U. S.) 447, 15 L. ed. 155; Falk v. Gast Lith., etc., Co., 54 Fed. 890, 4 CCA 648; Fishel V. Lueckel, 53 Fed. 499; Sanborn Map, etc., Co. v. Dakin Pub. Co., 39 Fed. 266; Gilmore v. Anderson, 38 Fed. 846; Chapman v. Ferry, 12 Fed. 693, 8 Sawy. 191; Pierpont v. Fowle, 19 F. Cas. No. 11,152, 2 Woodb. & M. 23; Stevens v. Cady, 23 F. Cas. No. 13.395, 2 Curt. 200; Hole v. Bradbury, 12 Ch. D. 899; Barry v. Stevens, 31 Beav. 258.54 Reprint 1137; Colburn v. Simms, 2 Hare 543, 24 EngCh 543, 67 Reprint 224; Smith v. London, etc., R. Co., 23 L. J. Ch. 562; Baily v. Taylor, 1 Russ. & M. 73, 5 EngCh 73, 39 Reprint 28, Taml. 295, 12 EngCh 295, 48 Reprint 118; Sweet V. Maugham, Sim. 51, 34 EngCh 51, 59 Reprint 793; Delondre v. Shaw, 2 Sim. 237, 2 Eng Ch 237, 57 Reprint 777; Grierson v. Eyre, 9 Ves. Jr. 341. 32 Reprint 634; Hogg v. Kirby, 8 Ves. Jr. 215, 32 Reprint 336; Kelly v. Hooper, 1 Y. & Coll. 197, 20 EngCh 197, 62 Reprint 852; Beauchemin v. Cadieux, 22 Que. Super. 482 [aff 31 Can. S. C. 370].

11

"The right to an account of profits is incident to the right to an injunction in copy and patent-right cases." Stevens v. Gladding, 17 How. (U. S.) 447. 455, 15 L. ed. 155.

67. See cases in preceding note. 68. See cases supra note 66. But

The statute now provides that an infringer shall be liable to pay to the copyright proprietor, in addition to damages, "all the profits which the infringer shall have made from such infringement."" It is not entirely clear to what extent, if at all, this provision confers an absolute right to recover an infringer's profits, and deprives the court of the right to deny an accounting upon purely equitable considerations.75 The omission of the notice of copyright by accident or mistake does not bar a recovery of profits, although it does bar recovery of damages. Innocence of intent is no defense to a recovery of profits."

76

see Huebsch v. Arthur H. Crist Co.,
209 Fed. 885 (where such a bill was
apparently maintained without objec-
tion).

[§ 354] 2. Extent and Elements of Recovery. tiff's assumption that the statute always rigidly requires an accounting is shown by that case to be without warrant. The delay was of 16 years in that case, but the infringing publication took that long to appear, and the principle is as well illustrated in the case at bar as it was there. Equity will control its peculiar remedy of an account of profits according to its own sense of justice. It must be obvious to every one familiar with equitable principles that it is inequitable for the owner of a copyright, with full notice of an intended

69. Dam v. Kirk la Shelle Co., 175 Fed. 902, 99 CCA 392, 20 AnnCas 1173 [aff 166 Fed. 589]. See also Patents [30 Cyc 1024]; Trade-Marks, TradeNames, and Unfair Competition [38 Cyc 909].

70. Huebsch v. Arthur H. Crist Co., 209 Fed. 885; Dam v. Kirk la Shelle Co., 189 Fed. 842; Dam v. Kirk la Shelle Co., 175 Fed. 902, 99 CCA 392, 20 AnnCas 1173 [aff 166 Fed. 5891; Hartford Printing Co. v. Hart-infringement, to stand inactive while ford Directory, etc., Co., 146 Fed. 332; Morrison v. Pettibone, 87 Fed. 330.

71. Haas v. Leo Feist, Inc., 234 Fed. 105.

72. Haas v. Leo Feist, Inc., 234
Fed. 105; West Pub. Co. v. Edward
Thompson Co., 176 Fed. 833, 100 CCA
303 [mod 169 Fed. 833]. See also
supra § 348.

[a] Nature of work to be consid-
ered.-"A few weeks' delay in the
case of a song so ephemeral as this
may have the same effect as 16 years,
when the publication is a legal en-
cyclopedia in 30 volumes."
Haas v.
Leo Feist, Inc., 234 Fed. 105, 108.
73. West Pub. Co. V. Edward
Thompson Co., 176 Fed. 833, 100 CCA
303 [mod 169 Fed. 833].

74. Act March 4, 1909 (35 U. S. St.
at L. 1075 c 320 § 25 (b)).

75. Haas v. Leo Feist, Inc., 234 Fed. 105.

the proposed infringer spends large sums of money in its exploitation, and to intervene only when his speculation has proven a success. Delay under such circumstances allows the owner to speculate without risk with the other's money; he cannot possibly lose, and he may win. If the defendant be a deliberate pirate, this consideration might be irrelevant, and I think it such as to Piantadosi; but it is no answer to such inequitable conduct, if the defendant Feist is innocent, to say that its innocence alone will not protect it. It is not its innocence. but the plaintiff's availing himself of that innocence to build up a success at no risk of his own, which the court of equity should regard." Haas v. Leo Feist, Inc., 234 Fed. 105, 107.

76. Strauss v. Penn Printing, etc., Co., 220 Fed. 977, 979.

"It is apparent from the language of the act, however, that damages alone are excluded from recovery, and not the infringer's profits, as section 25 of the act provides that the person infringing shall be liable (a) to an injunction and (b) to 'such damages as the copyright proprietor may have suffered due to the infringement, as well as all the profits which the infringer shall have made from such infringement.'" Strauss v. Penn Printing, etc., Co., supra.

Damages where notice omitted see infra 357.

[a] Construction of statute-(1) While injunctions are required to be "according to the course and principles of courts of equity" (see supra § 336 note 95 [a], §§ 341, 343) there is no such statutory requirement in regard to the recovery of profits (see Act March 4, 1909 [35 U. S. St. at L. 1075 c 320 §§ 25 (b), 36]). But since injunctions may be granted "on such terms as said court or judge may deem reasonable" (see Act March 4, 1909 [35 U. S. St. at L. 1075 c 320 § 36]), doubtless, in granting an injunction, the court has power to deny profits by way of imposing terms. But where the injunction is denied on equitable grounds, although infringement is found, may the court [a] Rule applied.-"Although the still deny profits, and limit plaintiff defendant and its immediate assignor to damages? (2) "It does not neces- purchased the play from the playsarily follow, however, that the ac- wright, Paul Armstrong, in entire counting shall be exempt from the good faith and without notice of the usual principles of equity. Indeed, complainant's rights, it is subject to the conduct of the plaintiff may have the hard rule of having to account a controlling effect upon it. West for all the profits it made by prePub. Co. v. Edward Thomson Co., 176 senting it."' Dam v. Kirk la Shelle Fed. 833, 100 CCA 303. The plain- | Co., 189 Fed. 842.

77. Haas v. Leo Feist, Inc., 234 Fed. 105; Dam v. Kirk la Shelle Co., 189 Fed. 842.

bill by the proprietor of the copyright.85 Profits made by the printer and binder of an infringer's book may be recovered.86 Profits are to be ascertained by deducting from gross receipts all legitimate elements of cost,87 including losses.88 The necessary cost of producing and selling the copies. sold is a proper credit.89 This does not include the cost of making stereotype plates,90 the cost of editorial work done on the infringing volume," 91 the additional cost of producing more copies than were sold, or unreasonable payments made without consideration to third persons. While an infringing corporation may be allowed credit as an expense for reasonable salaries paid to its officers, and agents or employees, an individual infringer is not entitled to an allowance for the value of his time that it is supported by the author-facturing cost." Callaghan v. Myers, ities." 128 U. S. 617, 665, 9 SCt 177, 32 L. ed. 547.

while engaged in committing the infringement.95 Thus the amount paid to different members of a firm in the way of salaries for their services cannot be credited as a part of the expense of conducting the business during the period of infringement.96 Where the infringement was only part of defendant's business, defendant is entitled to credit for such proportion of its general expenses as is fairly to be appropriated to the infringing part of the business.

Dramatic infringement. In cases of infringement by dramatic performance the profits or losses should be ascertained for each theatrical season separately; losses of one season may not be charged against the profits of another.98 In addition to receipts from its own production of the play,99 defendant is properly charged with amounts received for licenses of the play.1 He is also entitled to

and I will follow him in this respect, Fed. 842.
with some doubt."
Shelle Co., supra.
Dam v. Kirk la

95. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547 [aff 24 Fed. 6361.

96. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547.

ex

[a] Rule applied.-"It is also contended, that both of the erred in disallowing a credit to the masters defendants for the amount paid to the different members of their firm for their services, in the salaries, as a part of the expense of way of conducting their business, being the amount of about $12,000 a year during the period in controversy. amounts were drawn by the defendThese ants under the partnership agreement, as family and personal penses. We do not think that the value of the time of an infringer, or the expense of the living of himself or his family, while he is engaged in violating the rights of the plaintiff, is to be allowed to him as a credit, and thus the plaintiff be compelled to pay the defendant for his time and expenses while engaged in infringing the copyright. If the defendants, instead of employing others to do the work, had chosen to do it themselves, they might as well have made a charge, and claimed to have been credited for it, of so much a month or a year for their services in preparing the infringing volumes. Elizabeth V. American Nicholson Pavement Co., 97 U. S. 126, 24 L. ed. 1000. The case stands on a different footing from that of the salaries of the managing officers of a corporation, as in Providence Rubber Co. v. Goodyear, 9 Wall. 788, 19 L. ed. 566." Callaghan v. Myers, 128 U. S. 617, 663, 9 SCt 177, 32 L. ed. 547.

97. Dam v. Kirk la Shelle Co., 189 Fed. 842.

ascer

98. Dam v. Kirk la Shelle Co., 189 Fed. 842. [a] Theatrical season "The next question is whether the as unit. defendant's profits shall be tained by treating the whole period of presentation as one, or by resting at the end of each season, or of each week, or of each presentation. special master fixed each season as The a unit, and I think he was right in doing so. The defendant made its contracts for the season third finding of fact), and kept its (twentyaccounts in the same way. the natural way of ascertaining profThis is its or losses. There might be cases, such as the building of costly separate machines, where each transaction could and should be considered separately. But the general business custom is to ascertain profits and losses annually." Dam v. Kirk la Shelle Co., 189 Fed. 842, 843.

99. Dam v. Kirk la Shelle Co., 189 Fed. 842. Dam v. Kirk la Shelle Co., 189

1.

2

[§§ 354-355

credit for all the direct expenses of the presentation of the play, such as the cost of scenery, etc.3 But the purchase price of the infringing play may not be charged as an expense against profits;* only the reasonable value of an exclusive license for the time the play was presented may be allowed as a credit.5

Pirated and innocent matter not separable. Although the entire copyrighted work is not copied in an infringement, but only portions thereof, if such portions are so intermingled with the rest of the piratical work that they cannot well be distinguished from it, the entire profits realized by defendant will be given to plaintiff.

6

[§ 355] 3. Reference. The usual mode of ascertaining profits is by reference to a master to take evidence and report. 7

2. Dam v. Kirk la Shelle Co., 189
Fed. 842.
3. Dam v. Kirk la Shelle Co., 189
Fed. 842.

Fed. 842.
4. Dam v. Kirk la Shelle Co., 189

5. Dam v. Kirk la Shelle Co., 189
Fed. 842, 844.

"I think the purchase of the play
was, so to speak, a capital charge,
and that only a fair charge for the
use of it should be deducted from its
exclusive license should be allowed
earnings. The reasonable value of an
for the times the play
sented."
supra.

was

Dam v. Kirk la Shelle Co.,
pre-

6. Belford v. Scribner, 144 U. S. 488, 12 SCt 734, 36 L. ed. 514; Cal177, 32 L. ed. 547; Dam v. Kirk la laghan 'v. Myers, 128 U. S. 617. 9 SCt Shelle Co., 175 Fed. 902, 99 CCA 392, 20 AnnCas 1173 [aff 166 Fed. 589]; Hartford Printing Co. v. Hartford Directory, etc., Co., 146 Fed. 332; West Pub. Co. v. Lawyers' Co-operative Pub. Co., 64 Fed. 360, 25 LRA 756, 25 CCA 648, 35 LRA 400]; Far441 [rev on other grounds 79 Fed. mer v. Elstner, 33 Fed. 494; Mawman v. Tegg, 2 Russ. 385, 3 EngCh 385. 38 Reprint 380. See also infra § 432.

is, as a practical matter, entitled to no pecuniary recovery at all. It is manifestly impossible for the author of a book or story which he has never dramatized to show that he has sustained any actual damage by the dramatization and production of a play based upon it. It is equally portion of the profits accruing to a impossible for him to show the protheatrical company from the use of proportion accruing from the use of a copyrighted theme or plot and the the scenery, the employment of favorite actors, and other sources. If in a case like the present an author cannot hold the theatrical company as his trustee and accountable for necessarily follows that all copyall the profits from the play, then it righted but undramatized books and stories may be appropriated and used with impunity. The right to follow the theatrical country and seek injunctive relief company over the would involve great expense and be of little avail. Notwithstanding the hardships imposed upon the defendant by the decree in this case, we think that no other decree gives effect to the copyright statute, and ties." Dam v. Kirk la Shelle Co., 175 that it is supported by the authori1173 [aff 166 Fed. 589]. Fed. 902, 908, 99 CCA 392, 20 AnnCas

"The rule is well settled, that, although the entire copyrighted work only portions thereof, if such por- volume contains matter to which a be not copied in an infringement, but [b] Copyrighted and uncopyrighted matter in same volume.-"If the tions are so intermingled with the copyright could not properly extend. rest of the piratical work that they incorporated with matter proper to cannot well be distinguished from it, the entire profits realized by the de- necessarily going together when the be covered by a copyright, the two fendants will be given to the plain-volume is sold, as a unit, and it being by this court in Callaghan v. Myers, tiff. This was the rule laid down impossible to separate the profits on 128 U. S. 617, 9 SCt 177, 32 L. ed. the one from the profits on the other, 547 following Mawman v. Tegg, 2 and the lawful matter being useless Russ. 385, 3 EngCh 385, 38 Reprint fendants who are responsible for without the unlawful, it is the de380 and Elizabeth v. American Nich- having blended the lawful with the olson Pavement Co., 97 U. S. 126, 24 L. ed. 1000." Belford v. Scribner, 144 unlawful, and they must abide the U. S. 488, 508, 12 SCt 734, 36 L. ed. consequences, on the same principle 514. that he who has wrongfully proalone suffer. duced a confusion of goods must one of those cases in which the value The present is of the book depends on its completebook, not as the fragments of a book. ness and integrity. It is sold as In such a case, as the profits result the owner of the copyright will be from the sale of the book as a whole, entitled to recover the entire profits on the sale of the book, if he elects that remedy." Callaghan 128 U. S. 617. 9 SCt 177, 32 L. ed. v. Myers, 647.

no

story.-"At the first consideration of
[a] Infringing dramatization of
the subject, it seems most unjust
that the representatives of an author
who was willing to sell his story for
$85, who apparently never thought
tion, if made, might have been wholly
of dramatizing it, whose dramatiza-
unsuccessful-indeed
have been produced-who took
might never
should receive all the profits made by
risks of an unsuccessful venture,
enterprise of producing and present-
the defendant in the venture-some
ing the play-an enterprise involving
the expenditure of time and money
preparation of scenery and costumes,
for the employment of actors, the
the hiring of theatres, advertising
and many other purposes.
other hand, unless the complainant is
On the
entitled to all
from the production of the play, she
the profits arising

a

[c] In trade-mark and patent cases the same rule prevails. See Patents [30 Cyc 1025]: Trade-Marks, TradeNames, and Unfair Competition [38 Cyc 911].

Burden of segregation see infra §

432.

7. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547: Haas v. Leo Feist, Inc., 234 Fed. 105; Gil

9

[356] E. Discovery. In copyright cases, the parties are entitled to a discovery subject to the usual rules. On a bill for infringement, discovery from defendant may be compelled in aid of plaintiff's case.10 Plaintiff is entitled to a full and particular discovery of the original sources from which defendant claims to have derived his work." 11 On the accounting, defendant may be compelled to produce his books and papers12 and to make a full disclosure of all facts relevant to plaintiff's case before the master.1 Plaintiff is not entitled to a discovery from defendant for the purpose of subjecting him to a penalty or forfeiture.Î4 Defendant may be entitled to an inspection of the work alleged to have been pirated by him." And it has been held

13

12

duction of corporate books and papers may be compelled by subpoena duces tecum, and are admissible in evidence in actions for penalties.17 Under the equity rules defendant may be compelled to answer interrogatories as to material facts on which plaintiff has the burden of proof,18 such as facts bearing on plaintiff's copyright19 and defendant's infringement,20 but defendant cannot be compelled to admit or to deny infringement as a legal conclusion.21

[357] F. Damages-1. In General. Under the present statute damages may be recovered for infringement of all classes of copyrights,22 in addition to the recovery of the infringer's profits from the infringement.23 Under the former law the remedy in damages was available in some classes of infringements but not in others.24 While the equitable remedy by injunction,25 and accounting for profits, was available in all cases, damages as distinct from, and additional to, profits could not be decreed in equity,27 the statute not having enlarged suit, defendants are not thus com- | against it, in an action to recover a pelled to produce evidence against themselves in aid thereof. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547.

that the court will permit interrogatories as to the
sale of plaintiff's work to be administered to plain-
tiff for the purpose of ascertaining the amount of
damages sustained, and of enabling defendant to
pay a sufficient sum into court to meet it.16 Pro-
more v. Anderson, 38 Fed. 846, 42
Fed. 267; Myers v. Callaghan, 24 Fed.
636 [mod on other grounds 128 U. S.
617, 9 SCt 177, 32 L. ed. 547]; Fol-
som v. Marsh, 9 F. Cas. No. 4,901, 2
Story 100; Stevens v. Gladding, 23
F. Cas. No. 13,399, 2 Curt. 608.

[a] The usual practice is to enter an interlocutory decree providing for an injunction, and then send the matter to a master to take proof of damages or profits. On the return of the master's report a final decree disposes of the question of damages. Patterson v. J. S. Ogilvie Pub. Co., 119 Fed. 461.

[b] Report of special master as to profits recoverable for infringement of copyrights reviewed. Ginn v. Apollo Pub. Co., 228 Fed. 214. Evidence see infra § 432.

8. See Discovery [14 Cyc 301]. 9. See cases infra this section passim.

[a] Discovery will not be compelled: (1) Where a discovery can be of no use to plaintiff. Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39 (where the discovery was asked in aid of an action of trespass for an infringement). (2) When it is improperly sought. Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39 (where the bill prayed discovery from three defendants in aid of an action at law against one defendant). (3) Two objections may be taken by general demurrer to a bill for infringement of а copyright which seeks a discovery in regard to such infringement in aid of a suit at law: First, that plaintiff sets forth no title in himself to the subject matter of his alleged copyright; second, that the bill lays no legal foundation for the discovery sought. Atwill v. Ferrett, supra. 10. Church Co. v. Zimmerman, 131 Fed. 652; Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39: Kelly v. Wyman, 20 L. T. Rep. N. S. 300; Stephens v. Brett, 10 L. T. Rep. N. S. 231.

26

13. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547.

[a] Interlocutory decree.-"The provision of the interlocutory decree for an examination of the defendants in regard to the subject of inquiry, and for the production by them of their account-books and papers, is the usual provision in an interlocutory decree in a suit in equity for the infringement of a copyright." Callaghan v. Myers, 128 U. S. 617, 663, 9 SCt 177, 32 L. ed. 547.

14. Social Register Assoc. V. Murphy, 129 Fed. 148; Johnson V. Donaldson, 3 Fed. 22, 18 Blatchf. 287; Atwell v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; Farmer v. Calvert Lith., etc., Co., 8 F. Cas. No. 4,651, 1 Flipp. 228; Martin V. Treacher, 16 Q. B. D. 507. See Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547 (holding that this rule does not relieve defendant from producing his books and papers before the master on an accounting for profits).

"It is an incontrovertible principle
of Equity law, that a defendant can-
not be compelled to make discoveries
in answer to a bill which seeks to
enforce penalties and forfeitures
against him by means of such dis-
coveries." Per Betts, J., in Atwill
V. Ferrett, 2 F. Cas. No. 640, 2
Blatchf. 39, 44.

[a] Production of books and
plates. In an action for the infringe-
ment of a copyright chromo, defend-
ant cannot be compelled, by means of
a subpoena duces tecum, to produce
his plates and books of account as
evidence. Johnson v. Donaldson, 3
Fed. 22, 18 Blatchf. 287.
[b] "The waiver of forfeiture re-
moves all objection to the examina-
tion of the defendant on the
counting." Social Register Assoc. v.
Murphy, 129 Fed. 148.

ac

15. Graves v. Mercer, 16 Wkly. Rep. 790.

[a] Rule applied. Where, after interrogatories filed, defendants, before answer, offered to submit to an injunction and pay costs, and moved to stay proceedings, it was held that [a] The court will grant an inthe motion was premature and that spection of the work alleged to be plaintiff was entitled to a discovery.pirated in an action of copyright, on Stephens v. Brett, 10 L. T. Rep. N. S. an affidavit that defendant had no 231. recollection of having sold copies thereof, but is desirous of refreshing his memory in order to be able to state positively if he has ever done So. Graves v. Mercer, 16 Wkly. Rep. 790.

11. Kelly v. Wyman, 20 L. T. Rep. N. S. 300.

12. Callaghan v. Myers, 128 U. S. 617, 9 SCt 177, 32 L. ed. 547.

[a] Not in aid of forfeiture.-Defendants may be compelled to produce their books and papers on the accounting before the master, in a suit in equity for an infringement, although complainant has brought replevin against them to forfeit the copies of the infringing works in their possession. Since the forfeiture cannot be enforced in the equity

statutory penalty, of the entries in the corporate books, produced by a corporate officer in obedience to a subpoena duces tecum. American Lith. Co. v. Werckmeister, 221 U. S. 603, 31 SCt 676, 55 L. ed. 873.

[b] Federal statutes construed.(1) Entries in the books of a party, produced in obedience to a subpoena duces tecum, were not rendered inadmissible on the trial, by U. S. Rev. St. § 860, providing that no discovery or evidence obtained from a party or witness by means of a judicial proceeding shall be given in evidence or used against him in a criminal case, or in a proceeding to enforce a penalty or forfeiture, since these provisions manifestly refer to a case where, in some prior judicial proceeding, a discovery had been made or testimony had been given, and the evidence so obtained was sought to be used. American Lith. Co. v. Werckmeister, 221 U. S. 603, 31 SCt 676, 55 L. ed. 873. (2) Compulsory production of the books of a corporate defendant, under a subpœna duces tecum served on an officer of the corporation in an action to recover the penalties prescribed by U. S. Rev. St. § 4965, for printing and selling copies of a copyrighted painting, did not, after the change of the rule as to the incompetency of parties as witnesses, made by § 858, violate any of the rights of the corporation under § 724, providing for the production on notice and motion of a party's books and papers, since this section exclusive procedure. American Lith. cannot be regarded as providing an Co. v. Werckmeister, 221 U. S. 603,

31 SCt 676, 55 L. ed. 873.

18. Rodman Chemical Co. v. E. F. Houghton Co., 233 Fed. 470. 19. Rodman Chemical Co. v. E. F. Houghton Co., 233 Fed. 470. 20. Rodman Chemical Co. v. E. F. Houghton Co., 233 Fed. 470. [a] Illustration.-Under equity rules 30, 33, 58, in suit for infringement of copyright, defendant should answer interrogatories seeking admission of plaintiff's authorship and publication and defendant's publication. Rodman Chemical Co. v. E. F. Houghton Co., 233 Fed. 470.

21. Rodman Chemical Co. v. E. F. Houghton Co., 233 Fed. 470.

22. Pagano v. Chas. Beseler Co., 234 Fed. 963. See infra §§ 358-362. 23. See supra § 353.

24.

See infra § 363.