a com thor and publisher, the author may write and publish,81 and the publisher may issue,82 a peting work on the same subject. But an express covenant against doing so will be enforced by injunction.83 Rescission of a contract of sale is governed by ordinary considerations.84 sufficient ground for rescission,85 but mere improviFraud is a dence is not.88 Persons dealing with literary property are bound by equities of which they have notice.8 87 But on the principle that an assignee stands in his assignor's shoes, and takes no better title than his assignor had,88 it has been held that, 23 NE 369; Ward v. Beeton, L. R. 19 Eq. 207; Stiff v. Cassell, 2 Jur. N. S. 348 (agreement to write exclusively for plaintiff's publication for term of one year enforced by injuncthe tion); Morris v. Colman, 18 Ves. Jr. 437, 34 Reprint 382; Ainsworth v. Bentley, 14 Wkly. Rep. 630. generally Contracts § 418; MonopoSee also lies [27 Cyc 888]. [a] Agreement not to publish particular class of work.-An agreement by a publisher not to publish in the future a magazine of a particular description is analogous to an agreement by a tradesman not to deal in a particular article, and like this latter agreement is not void as a too general restraint of worth v. Bentley, 14 Wkly. Rep. 630. trade. Ains80. See infra § 62. 81. 158. Rooney v. Kelley, 14 Ir. C. L. [a] Illustration.-A bookseller having agreed with an author for an edition of a history to be written by the latter in four volumes, and having obtained subscriptions for all that could fall within his edition, was held not entitled to prevent the author from publishing a continuation of the history which embraced part of the period, and also some of the matter contained in the last of the four volumes. Blackie v. Aikman, 5 Shaw 671. 82. Hogg v. Kirby, 8 Ves. Jr. 215, 32 Reprint 336 (per Lord Chancellor Eldon). 83. Ward v. Beeton, L. R. 19 Eq. 207; Barfield v. Nicholson, 2 Sim. & St. 1, 1 EngCh 1, 57 Reprint 245 (against publisher, with second work). notice of See also infra § 62 text and note 95. 84. See Cancellation of Instruments 9 C. J. p §§ 620-691; Sales [35 Cyc 127]. 1154; Contracts 85. Hackett v. Walter, 80 Misc. 340, 142 NYS 209 (where evidence in a playwright's action to enjoin the production of a play which was the joint work of defendant and himself was held insufficient to show that he had been induced by fraud to part with his interest in such play). 86. Hackett v. Walter, 80 Misc. 340, 142 NYS 209. [a] Consideration for sale of play. -That a playwright may have used poor judgment in selling his interest in a play, which subsequently proved very profitable to the buyer, entitles him to no relief from the courts. Hackett v. Walter, 80 Misc. 340, 142 NYS 209. 87. Harms v. Stern, 222 Fed. 581 [aff 231 Fed. 645, 145 CCA 531 (and vacating order on reh 229 Fed. 42, 49, 145 CCA 2)]; Maurel v. Smith. 220 Fed. 195; Frohman v. Fitch, 164 App. Div. 231, 149 NYS 633; Murphy v. Christian Press Assoc. Pub. Co., 38 App. Div. 426, 56 NYS 597; Stern v. Carl Laemmle Music Co., 74 Misc. 262, 263, 133 NYS 1082 [aff 155 App. Div. 895 mem, 139 NYS 1146 mem]. "Title to the song through a contract with Solman by is claimed which plaintiffs acquired the exclusive right to every song composed by him wholly or in part for a certain period of years. period the song was composed, and Within this [§ 39 where an author makes a valid contract to assign future works not yet written or composed, a subsequent assignee under an assignment made after the work comes into existence takes subject to the prior equity, whether he took with or without notice.& 89 As such a contract is, at most, only an equitable assignment,90 it is difficult to reconcile this holding with the long established rule that, where equities are equal, the legal title will prevail.91 To be valid, a contract for rights in an author's future works must be supported by a valuable consideration,9 92 and be limited as to time." There must be the defendant, with knowledge of the 88. Harms v. Stern, 231 Fed. 645, "The plaintiffs in this suit who cessive assignments can have succeeded to his rights by sucthis court claim in no greater rights than Romberg the assignor could himself assert. If Romberg, having entered into this valid agreement to sell and assign to these defendants musical production herein involved, the and taken out a copyright in his own and having repudiated his agreement equity to obtain an injunction as name, had then come into a court of against these defendants, restraining them from publishing the song, could he have succeeded? the plaintiffs in this suit are not enIf he could not, titled to an injunction for they stand rights are subject to the equities of in his shoes. these defendants as against Romberg As assignees their the assignor." Harms v. Stern, supra. 89. Harms v. Stern, 229 Fed. 42, 145 CCA 2 [order vacated on reh 231 Long, [1906] 2 Ch. 550. Fed. 645. 145 CCA 531]; Ward v. same [a] Rule applied.-"That contract provided that defendants should have rights for all operettas, musical comthe sole and exclusive production edies, farces with music, etc., which Mr. Romberg may write during the course of the next five years.' also provided that defendants should It have the 'sole and exclusive publishing rights of all compositions which period. The contract bound the dehe may write during' the fendants to defendants allege that the musical pay Romberg specific royalties on the publications. composition was written within the The five-year period named in the contract, and that the plaintiff in the Wintergarden Company, before the respective assignments to them of of the contract and of defendants' this composition, had full knowledge right thereunder, and took subject thereto. That the plaintiff and the denied. plaintiff's assignor had notice is not But the fact of the notice is unimportant. would take subject to the equities the assignees whether with or This principle, however, would not without notice. prevent the vesting of the legal title to the composition in the plaintiff. right vests in the person in whose Moreover, the legal title to a copyname the copyright is taken out. may, however, be held by him in question of true ownership is one of trust for the true owner, and the fact, dependent upon the stances circumof [order vacated on reh 231 Fed. 645, the case." Stern, 229 Fed. 42, 45, 145 CCA 2 Harms V. 145 CCA 531]. as It Licenses under copyright see infra § 259. Agreement to assign copyright see infra 251. 90. 93 Harms v. Stern, 229 Fed. 42, 145 CCA 2; Ward v. Long, [1906] 2 Ch. 550 (per Kekewich. J.). See also generally Assignments § 17. V. [a] Equitable assignment.-(1) A contract to assign the copyright in a work to be written is a good equi[1906] 2 Ch. 550. (2) "The contract table assignment. Ward v. Long, 'sold, assigned, and transferred' the right to print, publish, and sell' all compositions which Romberg 'might write' during a period of five years from the date of agreement. an agreement could not operate at Such law to vest the legal title in the defendants to these compositions, for the reason that the compositions were not at the time in existence. without effect at law as a contract of But, while the contract was agreement to sale, it operated as an executory sell. Whitehead Root, 2 Metc. (Ky.) 584, 587; Parsons on Contracts, vol. 1, p. 439; 35 Cyc. 46. And while the agreement could not be specifically enforced, it imposed upon Romberg an obligation to Stern, 229 Fed. 42, 49, 145 CCA 2 [cit perform it, and the breach of the agreement could be redressed in an action for Cyc]. damages." Harms V. 91. See Equity [16 Cyc 138]. should be noted that in Harms v. It Stern. 229 Fed. 42. 49, 145 CCA 2, no affirmative relief was granted in merely stayed its hand and refused aid of the prior equity. The court an injunction in aid of the subsequent equity as an exercise of discretion. The parties were left free to assert their respective legal rights at law. 92. Harms v. Stern, 229 Fed. 42. 145 CCA 2 [vacating order on reh 231 Fed. 645, 145 CCA 531]. 93. Harms v. Stern, 229 Fed. 42, Fed. 645, 145 CCA 531]. 145 CCA 2 [vacating order on reh 231 on an a [a] Validity of contract for future mutuality of obligation." [40] E. Publication-1. Effect of Publication -a. At Common Law. It seems to be established that by the early law of England an author's right of property in his literary productions was not limited to his unpublished works, and that prior to 1710, when the statute of Anne95 became a law, an author of a literary composition, and his assigns, had by the common law the sole right of multiplying copies and publishing the same in perpetuity.98 of property in his work, but that the statute of Anne which declared that an author should have the sole right of publishing his intellectual productions for a specified period and gave a remedy against piracy, was only cumulative, merely giving additional remedies for the violation of the right." But later English decisions establish the doctrine that, whatever may have been the rights of an author prior to the enactment of the statute of Anne, the rights of an author to his published works could not, after the passage of that act, be asserted on his common-law right, but only by virtue of and for the time limited by the statute.98 [41] b. Under Copyright Legislation. At one time it was held in England that not only did an author have an original perpetual common-law right limited in time. We do not, how- | Copyright pp 37-42. (5) The excluever, decide any of these questions now, and it is not important to the defendants how this court might have decided them if the defendants were not estopped from presenting them by the New York judgment." Harms v. Stern, 229 Fed. 42, 48, 145 CCA 2 [order vacated on reh 231 Fed. 645, 145 CCA 531]. 94. Harms v. Stern, 231 Fed. 645, 145 CCA 531. Mutuality: Specific Co. V. Generally see Contracts §§ 179-192. [a] Early common law. (1) Between the years 1735 and 1752, the court of chancery granted at least five injunctions restraining the piracy of printed books which were not under the protection of the statute. Eyre v. Walker [cit Millar v. Taylor, 4 Burr. 2303, 2325, 98 Reprint 201]; Motte v. Faulkner [cit Millar v. Taylor, supra]; Walthoe v. Walker [cit Millar v. Taylor, supra]; Tonson v. Walker, 3 Swanst. 672, 675, 676, 36 Reprint 1017 [cit Millar v. Taylor, supra]; Eyre v. Walker [cit Tonson v. Walker, supra]; Motte v. Faulkner [cit Tonson v. Walker, supra]; Walthoe v. Walker [cit Tonson v. Walker, supra]. (2) These decisions are vividly and entertainingly reviewed by Mr. Birrell in his account of the Stationers' struggle to establish copyright as property instead of a prívilege. His conclusion is that copyright did not exist at common law. Birrell Copyright p 99 et seq. (3) In the case of Millar v. Taylor, 4 Burr. 2303, 98 Reprint 201, decided in 1769, the question of what property an author had in his literary work at common law came squarely before the court of king's bench. The copyright secured by the statute of Anne had expired. Three of the four judges were of the opinion that not only did an author have an original perpetual common-law right of property in his literary work, which property was not lost by publication, but that this common-law right was not taken away by the statute. (4) In the case of Donaldson v. Beckett, 2 Bro. P C. 129, 145, 1 Reprint 837 [cit Millar v. Taylor, supra], on an appeal to the house of lords, the judges were called upon for their opinions on five questions, the fourth of which was as follows: "Whether the author of any literary composition, and his assigns, had the sole right of printing and publishing the same in perpetuity by the common law?" This question was answered in the affirmative by seven of the eleven judges. See comments on this case in Boosey v. Jefferys, 6 Exch. 580, 592, 155 Reprint 675 [rev 4 H. L. Cas. 815, 10 Reprint 681]; and Drone sive right of multiplying copies "was once, and the court of king's bench were about to take the opinion of all the judges, when they discovered that the suit had been brought by collusion, to try the question, and it was dismissed. This question was brought before the house of lords, in the case of Donaldson v. Beckett, 2 Bro. P. C. 129, 1 Reprint 187 [cit Millar v. Taylor, 4 Burr. 2303, 2408, 98 Reprint 201]. Lord Mansfield, hecacy, declined giving any opinion. The eleven judges gave their opinions on the following points. 1st. Whether common law, an author of any at book 97. Holmes v. Hurst, 174 U. S. 82, 19 SCt 606, 43 L. ed. 904; Millar v. Taylor, 4 Burr. 2303, 2325, 98 Reprint 201; Osborne v. Donaldson, 2 Eden 327, 28 Reprint 924 (point held tooing a peer, through feelings of delidoubtful for injunction and sent to law); Eyre v. Walker [cit Millar v. Taylor, supra]; Motte V. Falkner [cit Millar v. Taylor, supra]; Walthoe v. Walker [cit Millar v. Taylor, supra]; Tonson v. Walker, 3 Swanst. 672, 36 Reprint 1017 [cit Millar v. Taylor, 4 Burr. 2303, 2325, 98 Reprint 201]. See also Tonson v. Collins, W. Bl. 301, 96 Reprint 169 (an action on the case where all the early decisions are reviewed. It was argued by Wedderburn, Thurlow, Blackstone, and Yates before Lord Mansfield who reserved it for argument before all the judges. It was ultimately dismissed without decision, because found to be a collusive action); Drone Copyright p 8 et seq; "Is Copyright Perpetual?" 10 AmLR 16. Article by Judge James O. Pierce, 5 So. L. Rev. N. S. 420. "Notwithstanding this act, however, the chancery courts continued to hold that, by the common law and independently of legislation, there was a property of unlimited duration in printed books. This principle was affirmed so late as 1769 by the Court of King's Bench in the very carefully considered case of Millar v. Taylor, 4 Burr. 2303, 98 Reprint 201, in which the right of the author of "Thompson's Seasons,' to a monopoly of this work, was asserted and sustained." Holmes v. Hurst, 174 U. S. 82, 85, 19 SCt 606, 43 L. ed. 904. [a] Millar v. Taylor; Donaldson v. Beckett.-"Perhaps, no topic in England has excited more discussion, among literary and talented men, than that of the literary property of authors. So engrossing was the subject, for a long time, as to leave few neutrals, among those who were distinguished for their learning and ability. At length, the question, whether the copy of a book or literary composition belongs to the author at common law, was brought before the court of king's bench, in the great case of Millar v. Taylor, 4 Burr. 2303, 98 Reprint 201. This was a case of great expectation; and the four judges, in giving their opinions, seriatim, exhausted the argument on both sides. Two of the judges, and Lord Mansfield, held, that, by the common law, an author had a literary property in his works; and they sustained their opinion with very. great ability. Mr. Justice Yates, in an opinion of great length, and with an ability, if equalled, certainly not surpassed, maintained the opposite ground. Previous to this case, injunctions had issued out of chancery to prevent the publication of certain works, at the instance of those who claimed a property in the copyright, but no decision had been given. And a case had been commenced, at law, between Tonson and Collins, on the same ground and was argued with great ability, more than or literary composition, had the sole right of first printing, and publishing the same for sale; and might bring an action against any person who printed, published and sold the same, without his consent? On this question, there were eight judges in the affirmative, and three in the negative. 2d. If the author had such right, originally, did the law take it away, upon his printing and publishing such book or literary composition; and might any person, afterwards, reprint and sell, for his own benefit, such book or literary composition, against the will of the author? This question was answered in the affirmative, by four judges, and in the negative by seven. 3d. If such action would have lain, at common law, is it taken away by the statute of 8 Anne; and is an author, by the said statute, precluded from every remedy, except on the foundation of the said statute, and on the terms of the conditions prescribed thereby? Six of the judges, to five, decided that the remedy must be under the statute. 4th. Whether the author of any literary composition, and his assigns, had the sole right of printing and publishing the same in perpetuity, by the common law? Which question was decided in favor of the author, by seven judges to four. 5th. Whether this right is any way impeached, restrained or taken away, by the statute of 8 Anne? Six to five judges, decided that the right is taken away by the statute. And the lord chancellor seconding Lord Camden's motion to reverse, the decree was reversed. It would appear from the points decided, that a majority of the judges were in favor of the common-law right of authors, but that the same had been taken away by the statute." Wheaton v. Peters, 8 Pet. (U. S.) 591. 654, 8 L. ed. 1055. 98. Caird v. Sime, 12 App. Cas. 326; Macmillan V. Kahn Bahadur Shamsul Ulama M. Zaka. [1895] 19 Indian L. R. (Bombay) 557; Donaldson v. Beckett, 2 Bro. P. C. 129, 1 Reprint 837 [cit Millar v. Taylor, 4 Burr. 2303, 2408, 98 Reprint 2011; Reade v. Conquest, 9 C. B. N. S. 755, 99 ECL 755, 142 Reprint 297; Osborne v. Donaldson, 2 Eden 327, 28 Reprint 924; Colburn v. Simms, 2 Hare 543, 24 EngCh 543, 67 Reprint 224; Jefferys v. Boosey, 4 H. L. Cas. 815, 10 Reprint 681; Rooney v. Kelley, 14 Ir. C. L. 158; Chappell v. Purday, 14 M. & W. 303, 153 Reprint 491; Cadell v. Robertson, 5 Paton App. Cas. 493; Beckford v. Hood, 7 T. R. 620, 627, 101 Reprint 1164. "In Beckford v. Hood, supra, Lord Kenyon says, 'All arguments in the support of the rights of learned men In the United States, although there was some con- [§ 42] c. Present Rule (1) General Publication. Whenever a literary or other intellectual work in their works, must ever be heard with great favor by men of liberal minds to whom they are addressed. It was probably on that account, that when the great question of literary property was discussed, some judges of enlightened understanding went the length of maintaining, that the right of publication rested exclusively in the authors and those who claimed under them, for all time; but the other opinion finally prevailed, which established that the right was confined to the times limited by the act of parliament; and, that, have no doubt, was the right decision.'" Wheaton v. Peters, 8 Pet. (U. S.) 591, 656, 8 L. ed. 1055. [a] In Scotland it was held as early as 1748 that copyright in a published book did not exist by the common law independently of the statute of Anne. Midwinter v. Hamilton, 10 Morison Dict. of Dec. 8295 [rev on other grounds 1 Paton App. Cas. 488]. To same effect Hinton v. Donaldson, 10 Morison Dict. of Dec. 8307; Cadell v. Robertson, 5 Paton App. Cas. 493. 99. Bobbs-Merrill Co. V. Straus, 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086; Wheaton v. Peters, 8 Pet. (U. S.) 591, 8 L. ed. 1055. [a] Early conflict of opinion in the United States. In an elaborate dissenting opinion by Mr. Justice Thompson, in Wheaton v. Peters, 8 Pet. (U. S.) 591, 8 L. ed. 1055, the claim was made that the common law in this country recognizes the perpetual right of authors to their literary productions, and that the copyright statutes which had been enacted in the United States were merely cumulative, and intended only to secure the common-law right. 1. U. S.-Caliga v. Inter Ocean Newspaper Co., 215 U. S. 182, 30 SCt 38, 54 L. ed. 150; Globe Newspaper Co v. Walker, 210 U. S. 356, 28 SCt 726, 52 L. ed. 1096; American Tobacco Co. v. Werckmeister, 207 U. S. 284, 28 SCt 72, 52 L. ed. 208, 12 Ann Cas 595; Holmes v. Hurst, 174 U. S. 82, 19 SCt 606, 43 L. ed. 904 [aff 80 Fed. 514, 25 CCA 610]; Banks v. Manchester, 128 U. S. 244, 9 SCt 36, 32 L. ed. 425; Stevens v. Gladding, 17 How. 447, 15 L. ed. 155; Wheaton v. Peters, 8 Pet. 591, 8 L. ed. 1055 [rev 29 F. Cas. No. 17,486, 8 Pet. 725 appendix, 8 L. ed. 1106 appendix]; Saake v. Lederer, 174 Fed. 135, 98 CCA 571; Bobbs-Merrill Co. V. Straus, 147 Fed. 15, 77 CCA 607, 15 LRANS 766 [aff 139 Fed. 155, and aff 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086]; Werckmeister V. American Lith. Co., 134 Fed. 321. 69 CCA 553, 68 LRA 591 [rev 126 Fed. 244]; Boucicault v. Wood, 3 F. Cas. No. 1,693, 2 Biss. 34; Pulte v. Derby, 20 F. Cas. No. 11,465, 5 McLean 328; Stowe v. Thomas, 23 F. Cas. No. 13.514. 2 Wall. Jr. 547. 94. D. C.-Stern v. Rosey, 17 App. 562. is published generally and without restriction, by or with the consent of the author or proprietor, all common-law rights therein forthwith terminate, the work falls into the public domain, becomes dedi cated to the public, and any person may thereafter publish and use it for his own benefit without let or hindrance by the original proprietor, regardless tled law of this country and England | 2 Paine 382; Crowe v. Aiken, 6 F. that the right of an author to a monopoly of his publications is measured and determined by the copyright act-in other words, that while a right did exist by common law, it has been superseded by statute." Holmes v. Hurst, 174 U. Š. 82, 85, 19 SCt 606, 43 L. ed. 904. [a] Common-law property and 3. U. S.-Caliga v. Inter Ocean Cas. No. 3,441, 2 Biss. 208; Parton D. C.-Stern v. Rosey, 17 App. 562. Ill.-Frohman V. Ferris, 238 111. 430, 87 NE 327, 128 AmSR 135, 43 LRANS 639 [aff 223 U. S. 424, 32 SCt 263, 56 L. ed. 492]; Rees v. Peltzer, 75 Ill. 475; Ockenholdt v. Frohman, 60 I11. A. 300. Me.-Carter v. Bailey, 64 Me: 458, 18 AmR 273. Mass.-Tompkins v. Halleck, 133 Mass. 32, 43 AmR 480; Keene v. Kimball, 16 Gray 545, 77 AmD 426. Minn.-Banker v. Caldwell, 3 Minn. 94. Nebr.-State v. State Journal Co., 77 Nebr. 752, 110 NW 763 [den reh 75 Nebr. 275, 106 NW 434, 9 LRANS 174, 13 AnnCas 254]. N. J.-Aronson v. Baker, 43 N. J. Eq. 365, 12 A 177 ("Erminie"). N. Y.-Jewelers' Mercantile Agency v. Jewelers' Weekly Pub. Co., 155 N. Y. 241, 49 NE 872, 63 AmSR 666, 41 LRA 846 [rev 84 Hun 12, 32 NYS 41]; Palmer v. De Witt, 47 N. Y. 532, 7 AmR 480 [aff 32 N. Y. Super. 530, 40 HowPr 293]; Wright v. Eisle, 86 App. Div. 356, 83 NYS 887; Daly v. Walrath, 40 App. Div. 220, 57 NYS 1125; Potter v. McPherson, 21 Hun 559; Keene v. Clarke, 28 N. Y. Super. 38; Taft v. Smith, 76 Misc. 283, 134 NYS 1011; Stern v. Carl Laemmle Music Co., 74 Misc. 262. 133 NYS 1082 [aff 155 App. Div. 895 mem, 139 NYS 1146 mem]; O'Neill v. General Film Co., 152 NYS 599 [aff 171 App. Div. 854, 157 NYS 1028]; Wall v. Gordon, 12 AbbPrNS 349; French v. Maguire, 55 HowPr 471; Kiernan v. Manhattan Quotation Tel. Co., 50 How Pr 194; Oertel v. Jacoby, 44 How Pr 179. Pa.-Gendell v. Orr, 13 Phila. 191; Keene v. Wheatley, 4 Phila. 157. Tex.-Vernon Abstract Co. v. Waggoner Title Co., 49 Tex. Civ. A. 144, 107 SW 919. Eng. Millar v. Taylor, 4 Burr. 2303, 98 Reprint 201. Que. Angers v. Leprohon, 22 Que. Super. 170; Langlois v. Vincent, 18 LCJur 160. See also supra § 41. composition has, by common law, the "The author of a literary work or exclusive right to the first publication of it. He has no exclusive right to multiply or control the subsequent issues of copies by others. The right of an author or proprietor of a literary work to multiply copies of it to the exclusion of others is the creature of statute. This is the right secured by the copyright laws of the different governments." Atlas Mfg. Co. v. Street, 204 Fed. 398, 402, 122 CCA 568, 47 LRANS 1002. [a] Reason for rule.-"It is not by virtue of any statute that it has been decided the publication of a book, either in this country or in England, is a surrender by the author of his common law rights and a dedication to the public unless protected by copyright under the statute. The basis of such decisions is, that by causing the book to be printed without the protection of the copyright the author is deemed to have relinquished all rights, both common law and statutory, and to have dedicated his production to the public; and this applies to books published in foreign countries well as in this country." Frohman v. Ferris, 238 Ill. 430, 440. 87 NE 327, 128 AmSR 135, 43 LRANS 639 as of intent, except so far as protection and control is secured for it under the copyright statutes. The common-law right and a statutory copyright cannot coexist in the same work; the common-law right [aff 223 U. S. 424, 32 SCt 263, 56 L. ed. 492]. [b] Interpolations and additions to a play, technically called "gags," are not entitled to any greater degree of protection after dedication to the public than the body of the play to which they belong. Keene v. Clarke, 28 N. Y. Super. 38. 4. Bamforth V. Douglass Post Card, etc., Co., 158 Fed. 355; Holmes v. Hurst, 80 Fed. 514, 25 CCA 610 [aff 76 Fed. 757, and aff 174 U. S. 82, 19 SCt 606, 43 L. ed. 904]. also infra § 47. See [a] Presumption of intent.-“A photograph, if it be also an artistic production, the result of original intellectual conception on the part of the author, may be copyrighted with the same effect as if it were a book; but, without this protection of the federal statutes, neither the book nor the photograph can continue to be the author's exclusive property, after it has been printed and offered to the public for sale. No authorities need be cited for so plain a proposition. The copyright statutes would have been unnecessary if the author had been able to protect the fruit of his mental efforts in any other way; and, if he declines or omits to avail himself of the protection thus provided, he is conclusively presumed to have presented to the public the product of his creative powers, although he may have had no intention of making such a gift." Bamforth v. Douglass Post Card, etc., Co., 158 Fed. 355, 357. 5. U. S.-Caliga v. Inter Ocean Newspaper Co., 215 U. S. 182, 30 SCt 38, 54 L. ed. 150; Wheaton v. Peters, 8 Pet. 591, 8 L. ed. 1055; Atlas Mfg. Co. v. Street, 204 Fed. 398, 122 CCA 568, 47 LRANS 1002; Hene v. Samstag, 198 Fed. 359; Bamforth V. Douglass Post Card, etc., Co., 158 Fed. 355; Chicago Tribune Co. v. Associated Press, 116 Fed. 126. D. C.-Stern v. Rosey, 17 App. 562. Ill.-Frohman v. Ferris, 238 Ill. 430, 87 NE 327, 128 AmSR 135, 43 LRANS 639 [aff 223 U. S. 424, 32 SCt 263, 56 L. ed. 492]. Nebr.-State v. State Journal Co., 75 Nebr. 275, 106 NW 434, 9 LRANS 174. 13 AnnCas 254. N. Y.-Taft v. Smith, 76 Misc. 283, 134 NYS 1011. Eng. Donaldson v. Beckett, 2 Bro. P. C. 129, 1 Reprint 837 [cit Millar v. Taylor, 4 Burr. 2303, 2408, 98 Reprint 201]. Que.-Angers v. Leprohon, 22 Que. Super. 170; Langlois v. Vincent, 18 LCJur 160. See also cases cited supra note 3. "With voluntary publication the exclusive right is determined at common law, and the statutory copyright is the sole dependence of the author or owner for a monopoly in the future publication." Chicago Tribune Co. v. Associated Press, 116 Fed. 126, 127. "But publication also operates to destroy the common-law rights, whether a copyright be secured or not.' Jewelers' Mercantile Agency v. Jewelers' Weekly Pub. Co., 155 N. Y. 241, 247, 49 NE 872, 63 AmSR 666, 41 LRA 846 [rev 84 Hun 12, 32 NYS 41]. [a] What law governs.-The effect of the publication of a German opera, and offering the same for sale in the United States, with a reservation of the acting right to the heirs of the composer, is to be determined by the laws of the United States. Wagner v. Conried, 125 Fed. 798 (holding that such publication worked a dedication of the opera Parsifal). 6. Ferris v. Frohman, 223 U. S. 424, 32 SCt 263, 56 L. ed. 492; Caliga v. Inter Ocean Newspaper Co., 215 U. S. 182, 30 SCt 38, 54 L. ed 150 6 translation of plaintiff. There was no similarity in the appearance of the catalogues of the respective parties. An injunction was granted restraining defendant from using the catalogue in which he copied the translation made by plaintiff. The court said: "The question involved in this litigation is this: Has a man a right to copy and publish, word for word, the work of another in the translation from the English to a foreign tongue? Can one take the work of another in translation and appropriate it to his own use without consent when the work has been copyrighted? To state the question seems to answer it. Public policy and common honesty should travel side by side, and the theft of one's mental efforts should be protected as much as the work of his hands. It is an unfair competition in trade that equity will reach." It is difficult to support this injunction. The state court had no jurisdiction to grant an injunction under the copyright law, as the jurisdiction of the federal courts in copyright cases is exclusive (see infra§ 381). Apparently the existence of facts constituting unfair competition as ordinarily understood is negatived (see Trade-Marks, Trade-Names, and Unfair Competition [38 Cyc 756].. the translation had been published and copyrighted, the original common-law rights were destroyed. ends where the statutory right begins, at least where copyright involves publication. The effect of recent legislation authorizing copyright in unpublished works has not been determined.' But it has [aff 157 Fed. 186, 188, 84 CCA 634];, lished it. Defendant copied such Bobbs-Merrill Co. v. Straus, 210 Ú. S. 339, 28 SCt 722, 52 L. ed. 1086; Universal Film Mfg. Co. v. Copperman, 218 Fed. 577, 134 CCA 305 [aff 212 Fed. 301]; Photo Drama Motion Picture Co. v. Social Uplift Film Corp., 213 Fed. 374, 376 [aff 220 Fed. 448, 137 CCA 42] ("This necessarily follows from the fact that the book had been itself copyrighted, which involves a publication and the loss of all common-law rights"); West Pub. Co. v. Edward Thompson Co., 169 Fed. 833 [mod on other grounds 176 Fed. 833, 100 CCA 303]; Savage V. Hoffman, 159 Fed. 584; BobbsMerrill Co. v. Straus, 147 Fed. 15, 19, 77 CCA 607, 15 LRANS 766 [aff 139 Fed. 155, and aff 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086]; Werckmeister v. American Lith. Co., 134 Fed. 321, 69 CCA 553, 68 LRÁ 591 [rev 126 Fed. 244]; Frohman v. Ferris, 238 Ill. 430, 87 NE 327, 128 Am SR 135, 43 LRANS 639 [aff 223 U. S. 424, 32 SCt 263, 56 L. ed. 492]; Jewelers' Mercantile Agency v. Jewelers' Weekly Pub. Co., 155 N. Y. 241, 247, 49 NE 872, 63 AmSR 666, 41 LRA 846 [rev 84 Hun 12, 32 NYS 41]; O'Neill v. General Film Co., 171 App. Div. 854, 157 NYS 1028 [mod 152 NYS 5991; Donaldson v. Beckett, 2 Bro. P. C. 129, 1 Reprint 837 [cit Millar v. Taylor, 4 Burr. 2303, 2408, 98 Reprint 2011; Reade v. Conquest, 9 C. B. N. S. 755, 99 ECL 755, 142 Reprint 297; Jefferys v. Boosey, 4 H. L. Cas. 815, 10 Reprint 681. "While publication is withheld, his right of first publication is exclusive. When he voluntarily releases to the public, by general publication, this common-law right of exclusive publication is surrendered. Unless he obtains on or before publication the protection of the statutory copyright, the public is unrestrained in duplications. With the copyright obtained, his right to publish and sell all copies becomes exclusive thereunder for the statutory term. Thus the benefits of the statute are substituted for the imperfect benefits of the common-law ownership by his surrender of the perpetual right to withhold from publica-582-585. By publishing the translation. These rights are separate and not coexistent. The common-law right ends when the statutory right begins." Caliga v. Inter-Ocean Newspaper Co., 157 Fed. 186, 188, 84 CCA 634 [aff 215 U. S. 182, 30 SCt 38, 54 L. ed. 150]. "Where the owner of the commonlaw copyright elects to substitute the protection of the statute for that of the common law, he, upon publication, abandons or surrenders his common-law rights, including said right of limited publication, in exchange for the statutory right, the exclusive right to multiply copies." Bobbs-Merrill Co. v. Straus, 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086. As [b] Motion picture photo play."Where one owning an unpublished play and all rights therein in a foreign language and the work of a foreign author, which could not for that reason be copyrighted here, copyrights a translation thereof or having the dramatization rights, copyrights a drama, it has been held that he forfeits all rights save those preserved by the copyright law, and that others are free to translate cr to dramatize the original work, provided they do not infringe upon the original work of translation in the copyrighted translation. (Shook v. Rankin, 21 F. Cas. No. 12,804, 6 Biss. 477.) See Drone on Copyright, tion or dramatization, which was required as a condition precedent to obtaining the copyright, the owner of the play or of the dramatization rights is deemed to have dedicated the entire play or dramatic rights to the public. In such case it may be presumed, I think, that the translation or dramatization was a substantial reproduction of the original work. Copyrighting a motion picture photoplay of an author's work, however, does not either necessarily or presumptively involve a dedication to the public of the motion picture rights with respect to all the scenes and incidents of the play; and in the case at bar, although the court has found that the copyrighted motion picture photoplay is adapted to present the plaintiff's play by motion pictures, yet it fairly appears that many scenes and incidents in the plaintiff's play, which have never otherwise been dedicated to the public, are not represented in the motion picture films which have been O'Neill V. copyrighted." General Film Co., 171 App. Div. 854, 867, 157NYS 1028. "It, of course, cannot have at the same time the benefit of the copyright statute and also retain its common-law right. No proposition is better settled than that a statutory copyright operates to divest a party of the common-law right." Jewelers' Mercantile Agency v. Jewelers' Weekly Pub. Co., 155 N. Y. 241, 247, 49 NE 872, 63 AmSR 666, 41 LRA 846 [rev 84 Hun 12, 32 NYS 41]. [a] Copyrighting a translation of an unpublished play, the work of a foreign author, waives all the author's rights except those preserved by the copyright of the translation; the original work is thus placed in the public domain. O'Neill v. General Film Co., 171 App. Div. 854. 157 NYS 1028. (2) In Krygier v. Chrzanowski, 24 Pa. Dist. 870, plaintiff had translated a catalogue printed in English [a] A foreign copyright (1) on into the Polish language, and had an unpublished work, the foreign copyrighted his translation and pub-law not requiring publication, does 7. As copyrights are granted for only a limited time, and for the purpose of promoting the progress of science and useful arts (U. S. Const. art 1 § 8), it may be that by securing a copyright the proprietor thereby consents that, on expiration of the copyright term, the work shall become free. frequently been held that by taking out a statutory copyright, the author or proprietor accepts the statutory rights in lieu of his common-law rights and consents that on the expiration of the copyright his work shall become free to the unrestricted use of the public. After general publication without copyright the author can in no way regulate or con not affect the common-law rights in Film Co., 171 App. Div. 854, 157 NYS 1028 (holding that securing a dramatic copyright covering the performing rights in an unpublished play, under the former English statute, did not dedicate the commonlaw rights in this country). (2) But where the foreign law requires publication as a condition of copyright, a publication and copyright thereunder works a dedication to the public of all common-law rights in this country. O'Neill v. General Film Co., supra. (3) Where a play was not copyrighted as a book in England, but was publicly performed there, and the statutes of that country declared such performance to be equivalent to a publication, and limited the dramatist's exclusive rights to the term of the copyright, the play, at the expiration of that term, is not dedicated to the public in this country, where a public performance is not considered a publication, since otherwise the English law would be given effect in this country. O'Neill v. General Film Co., supra. this country. O'Neill V. General [b] The English statute (1) has abolished the common-law rights in unpublished works and has substituted statutory copyright therefor. See supra § 4. (2) In a case arising under the former law it was said: "The defendants also have in their possession a number of unpublished photographs belonging to the plaintiffs which they threaten and intend to publish. As to these, the plaintiffs retain their common law rights until publication, notwithstanding that they have at the same time a statutory copyright: See Mansell v. Valley Printing Co., [19081 2 Ch. 441, 1 BRC 187, 15 AnnCas 133. opinion, they are under the circumstances entitled to an injunction to protect their common law rights notwithstanding that they have not registered their statutory copyright." Bowden v. Amalgamated Pictorials, [1911] 1 Ch. 386, 392. In my [c] Motion picture films of unpublished drama. Where the owner of the literary and performing rights in an uncopyrighted drama permits a motion picture representation thereof to be copyrighted, he parts with his common-law picture rights in the drama to the extent of the scenes represented by the copyrighted films, but not to scenes in the play not copyrighted in the films. O'Neill v. General Film Co., 171 App. Div. 854, 866, 157 NYS 1028 (where the court said: "But whether all common-law motion picture rights, with respect to scenes and incidents in the play not represented in the copyrighted motion picture films, and not preserved by the substituted statutory right, have been abandoned or lost, is a question not free from difficulty and on which we find no precedent"). 8. Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 137 CCA 42; Universal Film Mfg. Co. v. Copperman, 218 Fed. 577, 134 CCA 305 [aff 212 Fed. 301]. also cases supra note 6. See "The surrender of the perpetual [common-law, right is a condition precedent to the enjoyment of statutory copyright." Bobbs-Merrill Co. v. Straus, 147 Fed. 15, 19, 77 CCA 607. 15 LRANS 766 [aff 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086]. 15 10 trol the manner of republication or use by others." The published and dedicated matter may be republished in whole or in part,11 in the same or in a different grouping or arrangement,12 with or without additions, alterations, or revisions,13 with or withcut the name of the author,14 and with the same or a different title,1 regardless of the wishes of the law right in literary property by vir- | posed after publication cannot affect tue of section 2 of the act. We the public rights acquired by reason think that section is intended only of the fact of publication." Werckto indicate that the statute does not meister v. American Lith. Co., 134 displace the common-law right. Fed. 321, 326, 69 CCA 553, 68 LRA Whoever elects to avail himself of 591 [rev 126 Fed. 244]. the statute, however, must be held to have abandoned his common-law right." Photo-Drama Motion Picture Co. v. Social Uplift Film Corp., 220 Fed. 448, 450, 137 CCA 42. "If such publication be made in print of a work of which no copyright has been obtained, it is a complete dedication thereof for all purposes to the public. If of a work of which a copyright has been obtained, it is so dedicated, subject to the protection afforded by the laws of copyright, the author accepting the statutory rights thereby given in place of his common-law right." Tompkins v. Halleck, 133 Mass. 32, 36, 43 AmR 480. 9. Effect of expiration of copyright see infra § 243. a [a] Mr. Justice Miller's terse dictum.-"When a man takes out copyright, for any of his writings or works, he impliedly agrees that, at the expiration of that copyright, such writings or works shall go to the public and become public property. I may be the first to announce that doctrine, but I announce it without any hesitation. If a man is entitled to an extension of his copyright, he may obtain it by the mode pointed out by law. The law provides a method of obtaining such extension. The copright law gives an author or proprietor a monopoly of the sale of his writings for a definite period, but the grant of a monopoly implies that, after the monopoly has expired, the public shall be entitled ever afterwards to the unrestricted use of the book." Merriam v. Holloway Pub. Co., 43 Fed. 450, 451. 10. Bobbs-Merrill Co. V. Straus, 210 U. S. 339, 28 SCt 722, 52 L. ed. 1086; Bamforth v. Douglass Post Card, etc., Co., 158 Fed. 355; Caliga v. Inter-Ocean Newspaper Co., 157 Fed. 186, 84 CCA 634 [aff 215 U. S. 182, 30 SCt 38, 54 L. ed. 150]; Harper v. Donohue, 144 Fed. 491 [aff 146 Fed. 1023 mem, 76 CCA 678 mem]; Werckmeister v. American Lith. Co., 134 Fed. 321, 69 CCA 553, 68 LRA 591 [rev 126 Fed. 244]; Kipling v. Fenno, 106 Fed. 692; Palmer v. De Witt, 47 N. Y. 532, 7 AmR 480; Daly v. Walrath, 40 App. Div. 220, 57 NYS 1125; Monckton v. Gramophone Co., Ltd., 106 L. T. Rep. N. S. 84; Angers v. Leprohon, 22 Que. Super. 170. "It is a proposition now so well settled as to be almost axiomatic, that, except so far as preserved to him by statute, when the composer of any work, literary, musical, or dramatic, has authorized its publication in print, his control over much as he has so published, and of the use which others may make of it, is at an end." Carte v. Ford, 15 Fed. 439, 442 [quot and applied Daly v. Walrath, 40 App. Div. 220, 222, 57 NYS 1125]. SO "Unrestricted publication, without copyright, is a transfer to the public to do most of the things the author might do, in common with her, except all right of transfer and sale, which remains to the author; but without advantage. since the work has become, by publication, common property." Harper v. Donohue, 144 Fed. 491, 492 [aff 146 Fed. 1023 mem, 76 CCA 678 mem]. "We do not concur in Judge Hand's holding that one who has obtained "Restrictions imposed upon the statutory copyright of a book or use prior to publication protect the play has left in him any common- copyright. Such restrictions im a [a] Reproduction on gramophone record.-The composer of the music of a song has no remedy at common law, after publication, against person who without authorization copies that music on to gramophone records and publishes and sells such records. Monckton v. Gramophone Co., 55 Sol. J. 125. See also infra § 123. 692. 11. Kipling v. Fenno, 106 Fed. 692. 12. Kipling v. Fenno, 106 Fed. [a] Title and arrangement of author's ancopyrighted works.-"Many of complainant's writings are short tales or poems, requiring the grouping together of several to make up a single volume of appropriate size. He has from time to time thus grouped his tales and poems, giving to the volumes which contain such groups titles of his own selection, 'Soldiers Three,' 'Barrack Room Ballads,' and what not. Such groups, thus entitled, have been published with his authority, and, as is conceded for the purpose of this argument, without any copyright protection. Apparently he has himself from time to time made changes, as his own taste varied, in the components of the different groups, though that circumstance is probably immaterial. Baldly stated, the proposition advanced is that an author. whose mental productions, prose, verse, and title, have been given to the world by publication without copyright, so that any one is free to reprint and sell the whole or any part of them, may nevertheless regulate the manner in which such reprinted matter may be grouped and entitled, and may restrain any application of the title he selected otherwise than as he used or uses it. No authority is cited which supports any such proposition, and, in the absence of authority, the question of its adoption by the courts had better be reserved for final hearing. It would seem that the measure of relief which authors may obtain against unauthorized publication of their works must be found in the copyright statutes, which, when availed of, are an abundant protection against such publication.' Kipling v. Fenno, 106 Fed. 692. 693. 13. Carte v. Ford, 15 Fed. 439. See also supra §§ 24, 38. 14. Drummond V. Altemus, 60 Fed. 338: Ellis v. Hurst, 70 Misc. 122, 128 NYS 144 [aff 145 App. Div. 918 mem, 130 NYS 1110 mem (aff 207 N. Y. 661 mem, 100 NE 1126 mem)]. See also supra § 24. [a] Nom de plume.-Where rights in books have been So abandoned one publishing them may state the true name of the author, although the books were originally published under a nom de plume. Ellis v. Hurst, 70 Misc. 122, 128 NYS 144 [aff 145 App. Div. 918 mem, 130 NYS 1110 mem (aff 207 N. Y. 661, 100 NE 1126 mem)]. 15. Bamforth V. Douglass Post Card, etc., Co., 158 Fed. 355; Kipling v. Fenno, 106 Fed. 692; Angers v. Leprohon, 22 Que. Super. 170. [a] Rule applied "Considering that, in so far as her susceptibilities as an author may have been wounded by said change of title, not having taken the means provided by |