the equitable jurisdiction in copyright cases as it had in patent cases. 28 But there is nothing in the statutes impairing the power of courts of equity to do justice by allowing plaintiff compensation in damages in lieu of equitable relief by way of injunction and accounting for profits, in cases where equitable relief, although it might be given, is for some satisfactory reason withheld;29 and there are equity cases in which the judges have assumed to award damages in addition to equitable relief, some of which are explainable on the theory that "profits" have been miscalled "damages.'' 30 ent statute damages in addition to profits may be Under the pres28. West Pub. Co. v. Thompson Co., 176 Fed. 833, Edward CCA 303 [mod 169 Fed. 833]; Social 100 Register Assoc. v. Murphy, 129 Fed. 148 (where the Copyright Act, Rev. St. § 4964 is distinguished from the Patent Act, Rev. St. § 4921); Chapman v. Ferry, 12 Fed. 693, 8 Sawy. 191. See also Patents [30 Cyc 1024]. 29. West Pub. Co. Thompson Co., 184 Fed. 749; West V. Edward Pub. Co. v. Edward Thompson Co., 176 Fed. 833, 100 CCA 303 [mod 169 Fed. 833]. ac [a] Rule applied and explained."But we also think that the court can give damages in this case by way of compensation. Because Rev. St. U. S. § 4921 (U. S. Comp. St. p 3395), entitles complainants in equity suits arising out of patents 'to recover in addition to the profits counted for by the defendant the to be damages the complaint [complainant] has sustained' by the infringement, and there is no similar provision as to equity suits arising out of copyrights, it is sometimes said that damages cannot be awarded in the latter. We think this a misunderstanding of the statute. It applies to all patent causes without distinction and permits damages to be assessed when equitable relief is granted in addition to profits. should not be construed to impair This the power of courts of equity to do justice by allowing the complainant compensation in damages equitable relief, though it might be where given, is for some satisfactory reason withheld. In such a damages are not given in addition case the to profits as provided by section 4921. It does not seem to us right to turn the complainant over to a court of law after over 5,000 pages of testimony have been taken in this cause, showing that its rights have been violated to some extent, especially considering that a jury trial would not furnish an adequate remedy in the sense of being adapted to determining the amount of the copying and paraphrasing. The bill asks for an injunction and for damages as well as for an accounting. court, having obtained jurisdiction of the cause and having the power to grant an injunction, has the right to do justice between the parties end to dispose of it finally, even if this involves withholding injunctive relief and awarding damages." Pub. Co. v. Edward Thompson Co., 176 Fed. 833, 838, 100 CCA 303 [mod 169 Fed. 833]. This West [b] As to the power of a court of equity to award damages for infringement in lieu of an accounting of profits see Dam v. Kirk la Shelle Co., 175 Fed. 902, 911, 99 CCA 392, 20 AnnCas 1173 [aff (where the court, without deciding 166 Fed. 589] the question, said: "The awards profits, and decree ant expressly disclaims any desire to the complainrecover damages. We know of no principle upon which equity can compel a complainant to a court of take damages, instead of when he insists upon the latter"). profits, 30. Social Register Assoc. v. Murphy. 129 Fed. 148; Scribner v. Clark, 50 Fed. 473 [aff 144 U. S. 488, 12 SCt 734, 36 L. ed. 514]: Chase v. awarded in an equitable suit.31 33 [§§ 357-358 [§ 358] 2. Under Act of 1909 as Amended-a. In General. The provisions of the present copyright statute in regard to the damages recoverable for infringement are radically new, and so awkwardly expressed as to be difficult of interpretation.32 The omission of the required notice of copyright from published copies will prevent the recovery of damages from an innocent infringer who has been misled by the omission of the notice.3 and insufficient notice is equivalent to no notice A defective within this rule,34 as where the notice is so small as not to be reasonably legible.35 Liability for damSanborn, 5 F. Cas. No. 2,628, 4 Cliff. I have been foreseen, the entire sum injunction and accounting considered 306 (where Clifford, J., on a bill for the allowance of damages as though it were possible to award them). "This point was not involved in 144 U. S. 488, 12 SCt 734, 36 L. ed. the decision of Belford v. Scribner, 514. The decree simply awarded profits, and no distinction was made between profits and damages. While in some cases the profits to be accounted for are spoken of as damages, yet in no case that has been presented is it held that damages, as distinct from profits, can be decreed in equity in a or additional to copyright case, as in patent causes. decrees, While the word 'damages' is used in it is used synonymously with 'profits.' ages,' Confusion avoided by omitting the word 'damcan be since the cial Register Assoc. v. Murphy, 129 word more accurate, and sufficient." 'profits' is Fed. 148. So31. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 §§ 25 (b), 26, patch Printing Co., 233 Fed. 609, 147 27); L. A. Westermann Co. v. DisCCA 417. the to 32. S. E. Hendricks Co., Inc. v. as copyright proprietor from such inof such damages recoverable by the fringing maker and his agencies for infringing motion picture shall not the distribution to exhibitors of such exceed the sum of five thousand doland fifty dollars, and such damages lars nor be less than two hundred sum of five thousand dollars nor be shall in no other case exceed the and fifty dollars, and shall not be less than the sum of two hundred regarded as a penalty. going exceptions shall But the forethe copyright proprietor of any other not deprive remedy given him under this law, nor shall the limitation as to the amount of recovery apply to infringements occurring after the actual notice to a defendant, either by service of process in a suit or other written notice Act March 4, 1909 (35 U. S. St. at served upon him." L. 1075 c 320 § 25 (b)), as amended by Act Aug. 24, 1912 (37 U. S. St. at L. 488). The words quoted are followed by an enumeration of different amounts as the sums recoverable for different classes of infringements. 33. See infra §§ 361, 362. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 20); Alfred Printing, etc., Co., 220 Fed. 977. See Decker Cohn Co. v. Etchison Hat Co., 225 Fed. 135; Strauss v. Penn also supra § 194. asmuch as section 20 provides that [a] "In lieu of damages."—“Incircumstances such as ery of damages,' they preclude the this case 'shall prevent the are found in recovrecovery of 'such damages as to the court shall appear to be just' under section 25, as there is no provision tion between 'damages' and 'profits' that such damages shall be assessed in lieu of profits alone. The distincJudge Gray in Sharpless is pointed out in the opinion of rence, 213 Fed. 423, 130 CCA 59." V. Law220 Fed. 977, 980. Strauss v. Penn Printing, etc.. Co., §§ 360-362. See also infra 34. Alfred Decker Cohn Etchison Hat Co., 225 Fed. Co. V. Strauss v. Penn Printing, etc., Co., 135; 220 Fed. 977. [a] Defective notice illustrated.— Where, in place of the copyright notice permitted by the Copyright Act of March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 18), consisting of the mark, not conveying to the mind the letter "C" inclosed within a circle, there was a blurred and indistinct idea of a copyright notice, there was Printing, etc., Co., 220 Fed. 977. 979 an omission of the notice within§ 20 as to damages. Strauss V. Penn (where the court said: "Counsel for the complainant contends that there is no omission,' as the notice was present, although in distorted form. As the mark accompanying the picture in the Press does not resemble the letter 'C' within a circle, would not give notice to it not having notice otherwise, and as any one the act is explicit as to the form of the notice prescribed, and no letter 'C' and no círcle present. it there is follows that there was an of the prescribed notice"). omission 35. Alfred Decker Cohn Etchison Hat Co., 225 Fed. 135 title, page and note number 36 ages is not affected by innocence of intent.30 All who united in the infringement are jointly and severally liable for the damages regardless of the profits realized by them.37 [359] b. Actual Damages. By express provision of the statute plaintiff is entitled to recover the actual damages suffered by him due to the infringement in all classes of copyrights.38 The amount of such damages recoverable depends on the proof,39 as in other cases where compensatory damages are sought.40 Probably there is no limit to the amount recoverable on proper proof, although it is quite possible that the clause of the statute limiting the damages in certain cases to the sum of five thousand dollars applies, not only to the discretionary damages given in lieu of actual damages and profits but also to the actual damages the recovery of which is authorized by the statute.12 But if this provision for a maximum applies to, and limits, the actual damages recoverable, the provision for a minimum recovery of two hundred and fifty dollars also applies, with the result that nominal damages are abolished in copyright cases." This is probably the practical effect of the statute, at least in any case where the actual damages fail to appear so clearly and so fully as to preclude resort to the "in lieu" clause,46 as the very cases which usually call for an award of only nominal damages are those which call for resort to the discretionary "in lieu" damages, that is, cases where it is impossible to prove any definite amount of actual damages." Nevertheless it has been held that the court is not bound to award the statutory minimum in all cases.49 The better view seems to be that the maximum and minimum limitation of the statute has no applica 36. 45 Haas v. Leo Feist, Inc., 234 Fed. 105. 37. Gross V. Van Dyk Gravure Co., 230 Fed. 412, 144 CCA 554. 38. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 & 25 (b)) (quoted supra § 358 note 32 [a]). 39. Proof of damages see infra § 431. 40. See Damages [13 Cyc 22]. 41. See statute (quoted supra note 32 [a]). And see infra § 362. See infra § 362. 42. 43. See statute § 358 note 32 [a]). (quoted supra 44. Nominal damages see generally Damages [13 Cyc 14]. 45. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. But see infra 362. 46. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 47. 48. 49. See Damages [13 Cyc 14]. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849 [aff 241 Fed. 360]; Woodman v. Lydiard-Peterson Co., 192 Fed. 67 [aff 204 Fed. 921, 123 CCA 243 (reh den 205 Fed. 900, 126 CCA 434)]. in 50. [a] The report of the committee on patents, made to congress when the copyright bill was pending, supports this view. In it Mr. Currier said: "The provision that lieu of actual damages and profits such damages shall be awarded as shall appear to the court just, not exceeding the sum of $5,000 is a modification of existing law, decreasing instead of increasing the amount which may be obtained in this way. There have been actions brought under existing law where the penalty would have been $30,000." Report No. 7083 to House of Representatives, 59th Congress, 2d Session, Jan. 30, 1907. 51. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25), as amended by Act Aug. 24, 1912 (37 U. S. St. at 47 43 48 tion where the recovery is for actual and proved damages, but applies only to discretionary damages given "in lieu of actual damages and profits.'' 50 [360] C. In Lieu of Actual Damages-(1) In General. By express provision of the statute an infringer is liable for actual damages and profits, or, in lieu of such damages and profits, for such damages as to the court shall appear to be just, within specified maximum and minimum limits.51 This contemplates an election or discretionary choice between actual damages and profits on the one side, and on the other an assumed or somewhat arbitrary award of such damages as may be just.52 It is not clear whether the copyright proprietor is entitled to make this election, and to plant his action arbitrarily and absolutely on one theory or the other, or whether such election or discretionary choice is to be made by the court upon the trial, although this question has arisen.53 Such damages cannot be given in lieu of profits only, but must be in lieu of both actual damages and profits. Where it is impossible to make any accurate proof of actual damages, and defendant has made no profits, the case is one calling for an award of damages under the "in lieu" provisions of the statute.55 Such damages, by express direction of the statute, are not to be regarded as a penalty.56 [ 361] (2) Amount (a) In General. In assessing damages in lieu of actual damages and profits the court may in its discretion award any amount within the statutory maximum and minimum limits57 which appears to the court to be just in view of all the circumstances of the case.58 It is not necessary that such award shall be based on specific evidence.5 L. 488) (quoted supra § 358_note_32 [a]); Mail, etc., Co. v. Life Pub. Co., 192 Fed. 899. 113 CCA 377. [a] Construction of statute.-(1) "As is well known, the language of this section is a growth of years, resulting from the efforts of Congress to avoid that strictness of construction which historically attaches to any statute inflicting penalties, and to confer upon an injured copyright owner some pecuniary solace, even when the rules of law render it difficult, if not impossible (as it often is). to prove damages or discover profits." S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37, 41. (2) "While the language of the provision quoted is somewhat obscure, we do not think that by the use of the word 'court' it is required that the judge acting by himself shall assess the damages when a case is presented calling for an award under the minimum damage clause. We think it the better view that the statute permits him to direct the jury to assess the damages within the prescribed limits. But if this is not the correct interpretation of the statute, we fail to see how the defendant was harmed by the action of the judge in this case. It is evident that he considered that the case was one in which an award of actual damages proven would not have been just and if he had himself fixed the damages under the statute he could not have awarded less than the minimum amount." Mail, etc.. Co. V. Life Pub. Co., 192 Fed. 899, 901, 113 CCA 377. 52. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 53. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417 (where plaintiff claimed the right of election, and sued directly for the "in lieu" damages, but the facts were such that the court would have made the same election as 59 as plaintiff did the point was not decided). "We entertain no doubt that it was the intention of Congress (1) to preserve the right of a plaintiff to pursue damages and profits by the historic methods of equity if he chooses so to do; and (2) to give the new right of application to the court for such damages as shall appear to be just,' in lieu of actual damages." S. E. Hendricks Co., Inc. v. Thomas Pub. Co.. 242 Fed. 37, 41. 54. Strauss v. Penn Printing, etc., Co, 220 Fed. 977. 55. S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37; L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 56. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25). See also infra & 363. 57. See infra § 362. 58. S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37. [a] Amount allowed.-Where it appeared that defendant had sold twenty-eight hundred copies of its infringing work which was sold in competition with plaintiff's work an award of twenty-five hundred dollars as damages was not erroneous. S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37. 59. S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37; Gross v. Van Dyk Gravure Co., 230 Fed. 412, 144 CCA 554. [a] Reason for rule.-"In Gross V. Van Dyk Gravure Co., 230 Fed. 412, 144 CCA 554, Hand, J., in the trial court held that the duty was by this statute laid upon the court to 'estimate damages' in place of the 'old penalties but to estimate them within the sums given, without the limitations of usual legal proof. The whole course of copyright law shows a recognition of the difficulty of making legal proof of damages and in substituting for rigid penalties the discretionary power of the 60 The court may, in its discretion, and subject to the maximum and minimum limitations of the statute, allow the following amounts, namely: In the case of a painting, statue, or sculpture, ten dollars for every infringing copy made or sold by, or found in the possession of, the infringer or his agents or employees.61 In the case of any other work, one dollar for every infringing copy made or sold by, or found in the possession of, the infringer or his agents or employees." In the case of a lecture, sermon, or address, fifty dollars for every infringing delivery.63 63 In the case of a dramatic or dramaticomusical, or a choral or orchestral composition, one hundred dollars for the first and fifty dollars for every subsequent infringing performance; in the case of other musical compositions, ten dollars for every infringing performance." 62 64 [§ 362] (b) Limitations of Amount. The statutory limitations on the amount of damages unquestionably apply to the "in lieu" damages, and as already suggested it may be that they apply also court, we must assume that a plaintiff should not fail for lack of proof.' On appeal from that construction of the statute, this court approved the method pursued." S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37, 41. [b] Illustration of rule.-"Smith swore that he printed 3,000 of the large and 12,000 of the small photographs. Florence Gross said that she saw six piles of nine inches high, and the plaintiff says that this would equal 6,000. Seligman did not contradict this, although he was called. Under section 25b (2), Comp. St. 1913, § 9546, these numbers would exceed the maximum, but I shall not take them as a basis of damages in any event, as I cannot think it has any relation to actual damages. I shall rather try to estimate Gross' actual damages, without observing the rules of evidence, as though the issue had to be proved like other such issues, and allowing myself considerable latitude in speculation. This is, as I understand the duty laid upon the court by section 25b: In place of the old penalties the court is to estimate damages, but to estimate them within the sums given, without the limitations of usual legal proof. I think the whole course of copyright law shows a recognition of the difficulty of making legal proof of damages, and that, in substituting for rigid penalties the discretionary power of the court, we must assume that a plaintiff should not fail for lack of proof. I must assess the damages, all things considered, by the best inference I can make, even when I cannot have much basis for certainty, even when the plaintiff would fail, were the issue tried before a jury. Gross says that his first year's sales were between $800 and $900, his second year's between $300 and $400, and his third year's $200, in spite of his spending between $300 and $400 to push the picture. He also says that such a picture was not fugitive, but, when once popular, held its own for some time. I shall assume that he would have had five years' sale after the first $1,000 a year; I shall take his actual sales at $350 the second year and $200 every other, making $1.150 in all. Therefore I find that his damages are represented by $3,850 gross sales. His profits I must estimate; he says that they are hard to state. If I take them at 20 per cent., I shall do as well as the circumstances warrant. Of course, it is a mere speculation; but, if I am right, the statute requires me to make as fair a speculation as I can. Thus his damages would be $770, to 65 But by express to a recovery of actual damages.66 provision of the statute the limitations as to the amount of recovery do not apply to infringements occurring after actual notice to a defendant, either by service of process in a suit or other written notice served on him.67 In all other cases except newspaper reproductions of copyrighted photographs and innocent infringements by means of moving pictures, the damages cannot exceed the sum of five thousand dollars, nor be less than the sum of two hundred and fifty dollars.68 In every case, under this statute, the court must award at least the minimum amount,69 although this has been denied, and nominal damages have been awarded in some cases.71 In assessing the statutory damages, an infringement will be treated as those acts, whether one or many, constituting a connected and fairly unitary invasion of the proprietor's rights." Under this rule the infringement of several separately registered copyrights by several newspaper publications may be treated as one infringement, 70 which I shall add the extra expense he incurred in pushing his picture unsuccessfully. His damages, therefore, I fix at $1,100, and a decree will go against all the defendants in that Gross v. Van Dyk Gravure sum. Co.. 230 Fed. 412, 413, 144 CCA 554. 60. See infra § 362. 61. St. at 62. St. at Act March 4, 1909 (35 U. S. L. 1075 c 320 § 25 (b)). Act March 4, 1909 (35 U. S. L. 1075 c 320 § 25 (b)). 63. Act March 4, 1909 (35 U. St. at L. 1075 c 320 § 25 (b)). 64. Act March 4, 1909 (35 U. St. at L. 1075 c 320 § 25 (b)). S. S. v. 65. S. E. Hendricks Co., Inc. Thomas Pub. Co., 242 Fed. 37; L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 66. See supra § 359. 67. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (b)), as amended by Act Aug. 24, 1912 (37 U. S. St. at L. 488). 68. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (b)), as amended by Act Aug. 24, 1912 (37 U. S. St. at L. 488) (quoted supra § 358 note 32 [a]). 69. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417; Mail, etc., Co. v. Life Pub. Co., 192 Fed. 899, 113 CCA 377. See Haas v. Leo Feist, Inc., 234 Fed. 105 (where two hundred and fifty dollars damages were awarded against an innocent infringer). [a] Where obvious and substantial damage has been caused, but is difficult of exact admeasurement, the sum of two hundred and fifty dollars is the minimum award, regardless of whether or not the statute precludes nominal damage in any case. S. E. Hendricks Co., Inc. v. Thomas Pub. Co., 242 Fed. 37, 42 (where the court said: "If it had appeared that, instead of distributing 2,800 copies, defendant had issued but the technical infringement would still have existed, and the question been presented whether plaintiff must have $250 or nothing. Such a has never been before us, and in the present cause experience informs the court that $250 would not and could not compensate plaintiff for a damage obvious, but difficult of exact admeasurement"). one, case 70. Woodman v. Lydiard-Peterson Co., 192 Fed. 67 [aff 204 Fed. 921, 123 CCA 243 (reh den 205 Fed. 900, 126 CCA 434)1. [a] Discretion of court.-(1) "That the court may in lieu of actual damages and profits in its discretion allow such damages as shall appear to be just; yet it apparently requires such damages in this case to be $250. But it cannot be possible that, where the court is of the opinion that there were no damages at all, it still is bound to allow $250, and that, where the court is of the opinion that it would be a matter of injustice to allow even $1, it would be compelled by law to allow $250. Some other construction must be given to that provision. I think it means that where the court is satisfied that there are substantial damages, but the evidence is incomplete or insufficient, so that the court cannot determine just what the damages are, then it may allow them on that basis. But wherever the court is of the opinion that the damages cannot be more than $50 or $100, it should not allow $250." Woodman v. Lydiard-Peterson Co., 192 Fed. 67, 71 [aff 204 Fed. 921, 123 CCA 243 (reh den 205 Fed. 900, 126 CCA 434)]. (2) "Damages are allowed for infringing, pirating, or copying it. It provides for a minimum and maximum allowance of damages, and also for costs, and for attorney's fees in the discretion of the court, in favor of the party owning the copyright. Whether this allowance of damages is discretionary or not is not entirely clear. The court is inclined to think that the interpretation of section 25 of the act leaves it within the discretion of the court to allow or refuse damages entirely. But it is not necessary to determine that question." Alfred Decker Cohn Co. v. Etchison Hat Co., 225 Fed. 135, 136. (3) "That the statute limits the discretion of the court to a minimum award of $250 and a maximum of $5,000 in lieu of actual damages has also been held in L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. In Woodman v. Lydiard-Peterson Co., 192 Fed. 67 [aff on another point 204 Fed. 921, 123 CCA 243 (reh den 205 Fed. 900, 126 CCA 434)], Alfred Decker Cohn Co. v. Etchison Hat Co., 225 Fed. 135, and F. A. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849, several District Courts have asserted a larger discretion; so that, where little or no injury appeared. even nominal damages have been awarded for proven infringement. There may be circumstances under which discretion revolts from any award, by reason of the trivial nature of the thing copyrighted, or the slight success of attempted infringement; but the facts in this case present no such E. problem." S. Hendricks Co., Inc. v. Thomas Pub. Co.. 242 Fed. 37, 41. 71. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849 [aff 241 Fed 3601. 72. L. A. Westermann Co. v. Dis for which only a single award of statutory damages will be made.73 In case of a newspaper reproduction of a copyrighted photograph such damages cannot exceed the sum of two hundred dollars, nor be less than the sum of fifty dollars.74 This limitation is confined to "photographs" in the established meaning of the term.75 It does not apply to newspaper reproductions of pen and ink drawings." 76 Motion pictures. In the case of the infringement of an undramatized or nondramatic work by means of motion pictures, where the infringer shows that he was not aware that he was infringing, and that such infringement could not have been reasonably foreseen, such damages cannot exceed the sum of one hundred dollars.77 And under like conditions, in the case of the infringement of a copyrighted dramatic or dramatico-musical work by a maker of motion pictures and his agencies for distribution thereof to exhibitors, the entire sum of such damages recoverable by the copyright proprietor from such infringing maker and his agencies for the distribution to exhibitors of such infringing motion picture cannot exceed the sum of five thousand dollars, nor be less than two hundred and fifty dollars." 78 [§ 363] 3. Under Prior Statutes. Under the early copyright acts, no provision was made for the recovery of damages for infringement of copyright, patch Printing Co., 233 Fed. 609, 147 CCA 417. 73. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. But see Mail, etc., Co. v. Life Pub. Co., 192 Fed. 899, 113 CCA 377 (holding that the court did not err in charging the jury to award at least two hundred and fifty dollars damages for each infringement). Compare Journal Pub. Co. v. Drake, 199 Fed. 572, 118 CCA 46 (holding, under a former statute, that the penalty of one dollar for every sheet of copyrighted matter found in defendant's possession accrues for every separate and distinct infringement printed, although a single sheet may contain a number of infringements). 74. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (b)), as amended by Act Aug. 24, 1912 (37 U. S. St. at L. 488). 75. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417. 76. L. A. Westermann Co. v. Dispatch Printing Co., 233 Fed. 609, 147 CCA 417 (holding that the minimum of two hundred and fifty dollars was applicable). 77. the only legal remedy given being a forfeiture of infringing copies,79 and a qui tam action for the statutory penalties.80 Except for the remedy in equity by injunction,81 and accounting,82 these statutory remedies were exclusive.83 Manuscripts. From the very beginning the copyright statutes have provided a remedy by action for damages for the unauthorized publication of manuscripts.84 But this provision has always been limited to unpublished manuscripts, and has never applied to copyrighted works.8 85 Dramatic performance. The first statute authorizing damages for infringement of copyright was the Dramatic Copyright Act of 1856,8 86 which extended copyright so as to include the exclusive right of public performance, and gave a remedy by action. for damages, such damages to be assessed at such sum, not less than one hundred dollars for the first, and fifty dollars for every subsequent performance, as to the court appeared to be just. This provision was carried forward unchanged through subsequent acts until the enactment of the present law.87 Under this statute damages were recoverable only for an unauthorized public performance of a dramatic composition. The damages authorized by this provision of the statute were remedial and compensatory and not in the nature of a penalty, although before the supreme court settled the question some 88 But as this statute gave an exclusive right to the proprietor, and provided no remedy to him, doubtless an action at common law for damages was available. See Beckford v. Hood, 7 T. R. 620 [expl and dist Globe Newspaper Co. v. Walker, 210 U. S. 356, 28 SCt 726, 52 L. ed. 1096]. 81. See supra § 341. Thornton v. Schreiber. 124 U. S. 612, 8 SCt 618, 31 L. ed. 577; Walker v. Globe Newspaper Co., 130 Fed. 593 [rev 140 Fed. 305, 72 CCA 77, 2 LRANS 913, 5 AnnCas 274, but in effect affirmed on direct appeal from final decree 210 U. S. 356, 28 SCt 726, 52 L. ed. 1096]; Ohman v. New York, 168 Fed. 953. See also supra §§ 339, 340. 84. Act May 31, 1790 (1 U. S. St. at L. 124 c 15 § 6); Act Febr. 3, 1831 (4 U. S. St. at L. 436 c 16 § 9); Act July 8, 1870 (16 U. S. St. at L. 198 c 230 § 102); U. S. Rev. St. (1873) § 4976; Act March 3, 1891 (26 U. S. St. at L. 1106 c 565 § 9); Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 2); Thornton v. Schreiber, 124 U. S. 612, 8 SCt 618, 31 L. ed. 577. See supra note 84. See also 85. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (b)), as supra § 61. amended by Act Aug. 24, 1912 (37 U. S. St. at L. 1075 c 320). 78. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (b)), as amended by Act Aug. 24, 1912 (37 U. S. St. at L. 488). 79. Thornton v. Schreiber, 124 U. S. 612, 8 SCt 618. 31 L. ed. 577. Forfeiture of infringing copies see infra §§ 368-369. 80. Act March 31, 1790 (1 U. S. St. at L. 124 c 15 § 2); Act April 29, 1802 (2 U. S. St. at L. 171 c 36 § 3); Act Febr. 3, 1831 (4 U. S. St. at L. 436 c 16 § 6); Bolles v. Outing Co., 175 U. S. 262, 20 SCt 94, 44 L. ed. 156; Thornton v. Schreiber, 124 U. S. 612, 8 SCt 618, 31 L. ed. 577; Ohman v. New York, 168 Fed. 953; Stevens v. Cady, 23 F. Cas. No. 13,395, 2 Curt. 200. Penalties for infringement see infra § 371. [a] In the case of prints (1) the remedy by qui tam action given by the act of 1802 was not given specifically to the proprietor of the copyright, but "to any person who shall sue for the same." Act April 29, 1802 (2 U. S. St. at L. 171 c 36 § 3). (2) 86. Act Aug. 18, 1856 (11 U. S. St. at L. 1138). 87. Act July 8, 1870 (16 U. S. St. at L. 198 c 230 § 101); U. S. Rev. St. (1873) § 4966; Act Jan. 6, 1897 (29 U. S. St. at L. 481); Suderman v. Saake, 166 Fed. 815; Brady v. Daly, 83 Fed. 1007, 28 CCA 253 [aff 175 U. S. 148, 20 SCt 62, 44 L. ed. 109]. [a] Single scene infringed.-The unauthorized performance of a single scene in a copyrighted play, such as the railroad scene in Daly's "Under the Gaslight." may constitute a "dramatic composition," in the meaning of Rev. St. § 4966, giving damages of one hundred dollars for the first and fifty dollars for every subsequent performance of "any dramatic composition" for which a copyright has been obtained; and such damages may be recovered, although no other part of the play is taken. Brady v. Daly, 83 Fed. 1007, 28 CCA 253 [aff 175 U. S. 148. 20 SCt 62, 44 L. ed. 109, and foll Daly v. Webster, 56 Fed. 483. 4 CCA 101; Brady v. Daly, 83 Fed. 1007, 28 CCA 253 [aff 175 U. S. 148, 20 SCt 62, 44 L. ed. 109]. 89 [b] Willfulness of infringement."The statute, however, provides that 'any person publicly performing or representing,' etc., shall be liable for the damages therein fixed. It does not make willfulness an essential element of the offense, and no authority to which we are referred calls for such a construction." Brady v. Daly, 83 Fed. 1007, 1012, 28 CCA 253 [aff 175 U. S. 148, 20 SCt 62, 44 L. ed. 1091. 88. Thornton v. Schreiber, 124 U. S. 612, 8 SCt 618, 31 L. ed. 577. Infringement of dramatic works see supra §§ 313-318. Persons liable see supra § 333. Brady v. Daly. 175 U. S. 148, 20 SCt 62, 44 L. ed. 109. [a] Remedial or penal nature of remedy.-"The idea of the punishment of the wrongdoer is not SO much suggested by the language used in the statute as is a desire to provide for the recovery by the proprietor of full compensation from the wrongdoer for the damages such proprietor has sustained from the wrongful act of the latter. In the face of the difficulty of determining the amount of such damage in all cases, the statute provides a minimum sum for a recovery in any case, leaving it open for a larger recovery upon proof of greater damage in those cases where such proof can be made. The statute itself does not speak of punishment or penalties, but refers entirely to damages suffered by the wrongful act. The person wrongfully performing or representing a dramatic composition is, in the words of the statute, liable for damages therefor.' This means all the damages, that are the direct result of his wrongful act. The further provision in the statute, that those damages shall be at least a certain sum named in the statute itself, does not change the character of the statute and render it a penal instead of a remedial one. The whole recovery is given to the proprietor, and the statute does not provide for a recovery by any other person in case the proprietor himself neglects to sue. has nothing in the nature of a qui tam action about it, and we think it provides for the recovery of neither a penalty nor a forfeiture. Where the statute provides in terms, as the one before us does, for a recovery of damages for an act which It courts had held such statute to be a penal statute, and the damages to be a penalty or forfeiture.90 Musical performance. Damages for an unauthorized public musical performance were first authorized in 1897 when musical compositions were coupled with dramatie compositions and brought under the same rule.91 This act continued in force until superseded by the present law. Books. Damages, as distinguished from penalties, for infringement of the copyright of books were first authorized by the act of 1870 which provided that the infringer of a book should "forfeit and pay such damages as may be recovered in a civil action" by the proprietor.92 The statute continued in this form through subsequent revisions and amendments until the enactment of the present law.93 Substantial damages could not be allowed where it appeared that the matters charged had not worked any prejudice to plaintiff;94 or where the evidence left the amount wholly speculative.95 99 97 [§ 364] 4. Under English and Canadian Statutes. Under the present and former English statutes damages are recoverable for all classes of infringements,96 including infringements of books, engravings and prints,98 paintings, drawings, and photographs, and playright or performing rights.1 Ignorance of the existence of copyright in the work infringed is made a defense to the claim for damages. It was otherwise under former statutes.3 The damages are "at large" and their amount is discretionary with the court.* 2 [365] G. Impounding Pendente Lite-1. In General. Under the act of 1909, a defendant charged with infringement may be compelled to deliver up on oath, to be impounded during the pendency of the action, on such terms and conditions as the court may prescribe, all articles alleged to infringe a copyright. There was no corresponding provision in any prior copyright act, the nearest analogous proceeding under former statutes being an action in the nature of replevin to enforce the statutory forfeitures.8 [366] 2. Procedure. On the institution of any action, suit, or proceeding, or at any time thereafter, and before the entry of final judgment or decree therein, plaintiff or complainant, or his authorized agent or attorney, may file with the clerk of any court given jurisdiction under the act, an affidavit stating, on the best of his knowledge, information, and belief, the number and location, as near as may be, of the alleged infringing copies, records, plates, molds, matrices, etc., or other means for making the copies alleged to infringe the copyright, and the value of the same, and with such affidavit shall file with the clerk a bond executed by at least two sureties and approved by the court or a commissioner thereof. Such bond shall bind the sureties in a specified sum to be fixed by the court, but not less than twice the reasonable value of such infringing copies, plates, records, molds, In Canada, where the only statutory remedy is violates the rights of the plaintiff, | Gavin, [1902] 1 Ch. 631; Baschet v. | did and gives the right of action solely to him, the fact that it also provides that such damages shall not be less than a certain sum, and may be more, if proved, does not, as we think, transform it into a penal statute. Although punishment, in a certain and very limited sense, may be the result of the statute before us so far as the wrongdoer is concerned, yet we think it clear such is not its chief purpose, which is the award of damages to the party who had sustained them, and the minimum amount appears to us to have been fixed because of the inherent difficulty of always proving by satisfactory evidence what the amount is which has been actually sustained." Brady v. Daly, 175 U. S. 148, 154, 156, 157. 20 SCt 62, 44 L. ed. 109. not establish his right as London Illustrated Standard Co., against all those who infringed [1900] 1 Ch. 73; Muddock v. Blackupon it.' This does not look as if wood, [189811 Ch. 58; Novello v. Sud- that statute were regarded by the low, 12 C. B. 177, 74 ECL 177, 138 English courts as one of a penal naReprint 869 (where it was held that ture, but on the contrary as one of an action would lie, although the a remedial kind providing for the recopies were not printed, and were covery of the damages sustained by made for gratuitous distribution and the plaintiff, and providing for the rot for sale or hire); Lamb v. Evans, recovery of a minimum sum for the [1895] W. N. 156. reason, as stated by the court, of the difficulty of proving with definiteness in all cases the amount of damages which plaintiff really had suffered." Brady v. Daly, 175 U. S. 148, 157, 20 SCt 62, 44 L. ed. 109. 90. Wheeler v. Cobbey, 70 Fed. 487; Daly v. Brady, 69 Fed. 285. 91. U. S. Rev. St. 4966, as amended by Act Jan. 6, 1897 (29 St. at L. 481); Thornton v. Schreiber, 124 U. S. 612, 8 SCt 618, 31 L. ed. 577. S. 92. Act July 8, 1870 (16 U. St. at L. 198 c 230 § 99); U. S. Rev. St. § 4964, as amended by Act March 3, 1891 (26 St. at L. 1106); Thornton v. Schreiber, 124 U. S. 612, 8 SCt 618, 31 L. ed. 577; West Pub. Co. v. Edward Thompson Co., 169 Fed. 833 [mod on other grounds 176 Fed. 833, 100 CCA 303]. 93. U. S. Rev. St. (1873) § 4964; Act March 3, 1891 (26 U. S. St. at L. 1106 c 565 § 7). 94. Chase v. Sanborn, 5 F. Cas. No. 2,628, 4 Cliff. 306 (which, however, was a bill in equity, and of little value as an authority on the question of damages). 95. D'Ole V. Kansas City Star Co.. 94 Fed. 840. Required certainty of damages see Damages [13 Cyc 37]. 96. Roworth v. Wilkes, 1 Camph. 94; Cadell V. Robertson, 5 Paton App. Cas. 493; Beckford v. Hood, 7 T. R. 620, 101 Reprint 1164. 97. Kelly's Directories, Ltd. V. 98. Cooper V. Whittingham, 15 Ch. D. 501; Murray v. Heath, 1 B. & Ad. 804, 20 ECL 698, 109 Reprint 985; West v. Francis, 5 B. & Ald. 737, 7 ECL 402, 106 Reprint 1361; Gambart v. Sumner, 5 H. & N. 5, 157 Reprint 1078; Moore v. Clarke, 9 M. & W. 692, 152 Reprint 293. 99. Tuck v. Priester, 19 Q. B. D. 629; Baschet v. London Illustrated Standard Co., [1900] 1 Ch. 73. 'An 2. Copyright Act, 1911 (1 & 2 Geo. Vc 46 § 8); Byrne v. Statist Co., [1914] 1 K. B. 622; E. W. Savory, Ltd. V. The World of Golf, Ltd., [1914] 2 Ch. 566. [a] Failure to recall copies from dealers after notice of the infringement may charge defendant with liaE. W. Savory, Ltd. v. The World of Golf, Ltd., [1914] 2 Ch. 566. 1. Adams v. Batley, 18 Q. B. D. 3. West v. Francis, 5 B. & Ald. 737, 7 ECL 402, 106 Reprint 1361; Gambart v. Sumner, 5 H. & N. 5. 157 Reprint 1078 (engravings and prints). 4. Fenning Film Service, Ltd. v. Wolverhampton, [1914] 3 K. B. 1171; Carte v. Dennis, 5 Terr. L. 30. 5. See supra § 338. a work belonging to a plaintiff, while at the same time his work might be seriously depreciated if he 6. Bernard v. Bertoni, 14 Que. L. 219 (holding that defendant's profits was the measure of plaintiff's damages a view difficult to accept) 7. Act March 4, 1909 (35 U. S. St. at L. 1075 c 320 § 25 (c)); Universal Film Mfg. Co. v. Copperman, 218 Fed. 577, 134 CCA 305 [aff 212 Fed. 301]; Crown Feature Film Co. v. Bettis Amusement Co., 206 Fed. 362; Universal Film Mfg. Co. v. Copperman, 206 Fed. 69 [app dism 212 Fed. 301 (aff 218 Fed. 577, 134 CCA 305)]. Procedure for impounding see infra § 366. 8. See infra §§ 368, 369. Supreme Court Copyright Rules (Copyright Office Bul. No. 14) rule 3. 9. |