Opinion of the court.

There would certainly be great difficulty in assenting to the proposition that patent and copy rights, held under the laws of the United States, are subject to seizure and sale on execution. Not to repeat what is said on this subject in 14 Howard, 531, it may be added that these incorporeal rights do not exist in any particular State or district; they are coëxtensive with the United States. There is nothing in any act of Congress, or in the nature of the rights themselves, to give them locality anywhere, so as to subject them to the process of courts having jurisdiction limited by the lines of States and districts. That an execution out of the Court of Common Pleas for the county of Bristol, in the State of Massachusetts, can be levied on an incorporeal right subsisting in Rhode Island or New York, will hardly be pretended; that by the levy of such an execution, the entire right could be divided, and so much of it as might be exercised within the county of Bristol sold, would be a position subject to much difficulty.

These are important questions, on which we do not find it necessary to express an opinion, because in this case neither the copyright, as such, nor any part of it, was attempted to be sold. The return of the officer on the execution is, that he seized and sold "one copperplate for the map of the State of Rhode Island." The defendants must therefore stand upon the second position assumed by their counsel, that the right to print and publish the map passed by the execution sale with the plate.

There are no special facts in this case to distinguish it from any case of a sale on execution of copper or stereotype plates. It appears that the plaintiff owned the plate; whether he made it, or caused it to be made, or purchased it after it had been made, does not appear.

Nor should the case be confounded with one where the owner of copper or stereotype plate sells them. What rights would pass by such a sale would depend on the intentions of its parties, to be gathered from their contract and its attendant circumstances. In this case, the owner of the copyright made no contract of sale, and necessarily had no intention respecting its subject-matter.

The sole question is whether the mere fact that the plaintiff owned the plate attached to it the right to print and publish the map, so that this right passed with the plate by a sale on execution.

And upon this question of the annexation of the copyright to the plate, it is to be observed, first, that there is no necessary connection between them. They are distinct subjects of property, each capable of existing, and being owned and transferred, independent of the other. It was lawful for any one to make, own, and sell this

Opinion of the court.

copper-plate. The manufacture of stereotype plates is an established business, and the ownership of the plates of a book under copyright may be, and doubtless in practice is, separated from the ownership of the copyright. If an execution against a stereotype founder were levied on such plates which he had made for an author, and not delivered, the title to those plates would be passed by the execution sale, and the purchaser might sell them; but clearly he could not print and publish the book for which they were made. The right to print and publish is therefore not necessarily annexed to the plate, nor parcel of it.

Neither is the plate the principal thing, and the right to print and publish an incident or accessory thereof. It might be more plausibly said that the plate is an incident or accessory of the right, because the sole object of the existence of the plate is as a means to exercise and enjoy the right to print and publish.

Nor does the rule, that he who grants a thing grants impliedly what is essential to the beneficial use of that thing, apply to this case. A press, and paper, and ink are essential to the beneficial use of a copper-plate. But it would hardly be contended that the sale of a copper-plate passed a press, and paper, and ink as incidents of the plate, because necessary to its enjoyment.

The sale of a copper-plate passes the right to such lawful use thereof as the purchaser can make, by reason of the ownership of the thing he has bought; but not the right to a use thereof, by reason of the ownership of something else which he has not bought, and which belongs to a third person. If he has not acquired a press, or paper, or ink, he cannot use his plate for printing, because each of these kinds of property is necessary to enable him to use it for that purpose. So if he has not acquired the right to print the map, he cannot use his plate for that purpose, because he has not made himself the owner of something as necessary to printing as paper and ink, or as clearly a distinct species of property as either of those articles. He may make any other use of the plate of which it is susceptible. He may keep it till the limited time during which the exclusive right exists shall have expired, and then use it to print maps. He may sell it to another, who has the right to print and publish; but he can no more use that right of property than he can use a press or paper which belongs to a third person.

The cases mentioned at the bar, in which incorporeal rights have been held to pass with corporeal property, do not apply.

By the levy of an execution on a mill, the incorporeal rights actually annexed to the mill, and necessary to its use, pass with the mill. So

Opinion of the court.

does what is parcel of the mill, though temporarily removed from it; as, a mill-stone which has been taken from its place to be picked. These and many other such cases are collected in Broome's Legal Maxims, 198, 205.

But the right in question is not parcel of the plate levied on, nor a right merely appendant or appurtenant thereto, but a distinct and independent property, subsisting in grant from the government of the United States, not annexed to any other thing, either by the act of its owner or by operation of law.

For these reasons, as well as those stated in 14 Howard, our conclusion is, that the mere ownership of a copper-plate of a map by the owner of the copyright does not attach to the plate the exclusive right of printing and publishing the map, held under the act of Congress, or any part thereof; but the incorporeal right subsists wholly separate from and independent of the plate, and does not pass with it by a sale thereof on execution.

The next question is whether the complainant can have a decrec in accordance with the prayer of his bill, for the penalties imposed by the seventh section of the act of February 3, 1831. The bill prays specifically for a decree for these penalties. We speak of the forfeiture of the printed copies, as well as of the sum of one dollar for each sheet unlawfully printed, as penalties; for, under the laws of the United States, it is clear that the complainant can have no title to either of them, except by way of penalty.

There being no common law of copyright in this country, whatever rights are possessed by the proprietor of the copyright must be derived from some grant thereof in some act of Congress, either nominatim or by a satisfactory implication; and looking to the act of Congress applicable to this subject-matter, it appears that the rights claimed by this bill are expressly conferred by way of forfeiture. Its language is: "Then such offender shall forfeit the plate or plates on which such map, &c., shall be copied, and also all and every sheet thereof so copied or printed as aforesaid, to the proprietor or proprietors of the copyright thereof; and shall further forfeit one dollar for every sheet of such map, &c., which may be found in his or their possession, printed, &c., contrary to the true intent and meaning of this act, the one moiety thereof to the proprietor or proprietors, and the other moiety to the use of the United States, to be recovered in any court having competent jurisdiction thereof."

In the case of Colburn v. Simms, 2 Hare, 554, Mr. Vice-Chancellor Wigram came to the conclusion, that, since the decision of the House of Lords in the case of Miller v. Taylor, the right to a decree for the

Opinion of the court.

delivery up of copies must be rested by the complainant upon some statute provision; and that inasmuch as courts of equity do not enforce forfeitures by an exercise of their ordinary jurisdiction, such a jurisdiction also must be derived from an act of Parliament; and though the eighth section of the act of 1 and 2 Vict., ch. 59, as well as the preceding act of 54 George III, ch. 156, sec. 4, allows the forfeited copies to be recovered in "any court of record in which an action at law or a suit in equity shall be commenced by such author or authors, or other proprietor or proprietors," &c., yet it was admitted, in Colburn v. Simms, that no such order had ever been made, in invitum, in a court of equity. It is a significant fact, that Congress, in legislating on this subject, though manifestly acquainted with the phraseology of the act of George III, and though in some particulars it adopted that phraseology, yet omitted to confer upon courts of equity power to enforce either of the forfeitures provided for, but left them to be recovered "in any court having competent jurisdiction thereof"; and the only equitable jurisdiction, as to copyright, conferred upon the courts of the United States, is by the act of February 15, 1819, which gives original cognizance to the courts of the United States, as well in equity as at law, of cases arising under any law of the United States granting to authors or inventors the exclusive right to their respective writings, inventions, and discoveries; and upon any bill in equity filed by any party aggrieved in any such case, shall have authority to grant injunctions according to the course and principles of courts of equity, to prevent the violation of the rights of any authors or inventors secured to them by any laws of the United States, on such terms as the said courts may deem fit and reasonable. Though the substance of this enactment is incorporated into the seventeenth section of the Patent Act of July 4, 1836, so far as it related to inventors, and so far as it related to the subject of patent-rights, is no longer in force, proprio rigore, yet so far as it gave cognizance to the courts of the United States of cases of copyright, it still remains in force, and is the only law conferring equitable jurisdiction on those courts in such cases; for the ninth section of the act of February 3, 1831, protects manuscripts only.

There is nothing in this act of 1819 which extends the equity powers of the courts to the adjudication of forfeitures, it being manifestly intended that the jurisdiction therein conferred should be the usual and known jurisdiction exercised by courts of equity for the protection of analogous rights. The prayer of this bill for the penalties must therefore be rejected.

The remaining question is whether there ought to be a decree for

Syllabus.

an account of the profits. The complainant has not prayed for such an account, nor have the defendants stated one in their answer; but the bill does pray for general relief.

The right to an account of profits is incident to the right to an injunction, in copy and patent right cases. Colburn v. Simms, 2 Hare, 554; 3 Dan. Ch. Pr., 1797. And this court has held, in Watts et al. v. Waddle et al., 6 Peters, 389, that where the bill states a case proper for an account, one may be ordered under the prayer for general relief. See, also, 2 Pet., 612; 14 Id., 156; 16 Id., 195; 9 How., 405.

The decree of the Circuit Court must be reversed, and the cause remanded to the Circuit Court, with directions to award a perpetual injunction, as prayed for in the bill, and to take an account of the profits received by the defendants from the sales of the map.

ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Rhode Island, and was argued by counsel; on consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, reversed with costs; and that this cause be, and the same is hereby, remanded to the said Circuit Court, with directions to award a perpetual injunction, as prayed for in the bill filed in this case, and to take an account of the profits received by the defendants from the sales of the map, and for such further proceedings, in conformity to the opinion of this court, as to law and justice shall appertain.

REVERSED WITH COSTS.

EDWIN C. LITTLE AND OLIVER SCOVILL, APPELLANTS, v. LEVI W. HALL, ANTHONY GOULD, DAVID BANKS, WILLIAM GOULD, AND DAVID BANKS, JR.

(18 Howard, 165.)

1. On the 27th of December, 1847, George F. Comstock was appointed State reporter, under a statute of the State of New York, which office he held until the 27th of December, 1851.

2. During his term of office, viz., in 1850, he, in conjunction with the comptroller and Secretary of the State, acting under the authority of a statute, made an agreement with certain persons, that for five years to come they should have the publication of the decisions of the Court of Appeals, and the exclusive benefit of the copyright.