pression it would seem clear that the author of the opinion was familiar with the doctrine announced in the Delafield Case, so that the opinion in that respect could not have been based upon any misapprehension. To our minds it is squarely in point and its reasoning sound. Besides, it is in harmony with sound principles of justice, and we are disposed to follow it rather than adopt the rule that we are bound by the decisions of the English courts made under their statute. The judgment of the Appellate Court will therefore be reversed, and the decree of the Superior Court affirmed. Judgment reversed.1 214. HARPER & BROTHERS v. KALEM COMPANY UNITED STATES CIRCUIT COURT OF APPEALS, SECOND CIRCUIT. 1909 169 Fed. 61 APPEAL from the Circuit Court of the United States for the Southern District of New York. Drury W. Cooper and Frank L. Dyer, for appellant. Dittenhoefer, Gerber & James (David Gerber, of counsel), for appellees Klaw & Erlanger. John Larkin, for appellees Harper & Bros. and L. Wallace. WARD, Circuit Judge. The late Gen. Lew Wallace wrote a story called "Ben Hur," the copyright of which belongs to the complainants Harper & Bros. The complainants Klaw & Erlanger caused the story to be dramatized, and Harper & Bros. duly copyrighted the dramatization and thereupon granted Klaw & Erlanger the sole right of producing the same upon the stage. The defendant the Kalem Company also employed a writer to read the story, without having any knowledge of 1 [PROBLEMS: Messrs. Gilbert and Sullivan wrote in England the opera of "Iolanthe," consisting of a libretto of words, voice music for singing, and an orchestral arrangement of music for accompaniment; the composers' rights were assigned to the plaintiff. The orchestration of the music remained in manuscript. But a full libretto of the words, a full score of the voice, and a piano arrangement of the accompaniment, were published by the composers' license, without registration, in the United States. The defendant caused the piano score to be re-written for orchestral instruments, and performed the opera by this means. Can the performance with orchestral music be enjoined? (1883, Carte v. Ford, 15 Fed. 439.) The plaintiff owned and performed an uncopyrighted play called "Sherlock Holmes." The defendant prepared and performed a similar play entitled "Sherlock Holmes the Detective." Can the defendant's performance be prevented? (1903, Hopkins Amusement Co. v. Frohman, 202 Ill. 541, 67 N. E. 391.)] [ESSAYS: Edward S. Rogers, "Dramatic Copyright." (M. L. R., I, 102, 179.) "Dramatic compositions." (C. L. R., VIII, 589.)] the copyrighted drama, and to write a description of certain portions of it. It then produced persons and animals, with their accoutrements, to perform the actions and motions so described. During this performance a film of celluloid was rapidly moved across the lens of a highspeed camera, on which a series of negative photographs were taken, from which a positive film suitable for exhibition purposes was reproduced. These positive photographs were contained on one film, about 1,000 feet long, which, being driven at great speed across the lens of an exhibiting machine, projects all the motions of the original actors and animals in succession upon a screen. The defendant advertises this film as suitable for giving public exhibitions of the story of Ben Hur, and sent advertisements to, among other persons, proprietors of theatoriums. At least 500 exhibitions have been given in such theatoriums; an entrance fee being charged. The defendant did not reproduce the whole story, but only certain of the more prominent scenes, such as the wounding of the Roman procurator, Ben Hur in the galleys, the chariot race, and others. It does not itself give any public or private exhibitions, but simply sells or licenses the use of the films. A final decree granting a perpetual injunction was entered in the Court below, from which this appeal is taken. Section 4952, Rev. St. U. S., gives the author of a book, and his assigns, not only the sole right of printing, but also the sole right of dramatizing it, and in case of a dramatic composition the sole right of performing or representing it publicly. Section 4964 subjects any one who shall dramatize a copyrighted book without the written consent of the proprietor to the payment of damages. Section 4966 provides that any one who publicly performs or represents a copyrighted dramatic composition without the owner's consent shall be liable for damages not less than $100 for the first and $50 for every subsequent performance, and if his conduct be willful and for profit he shall also on conviction be imprisoned for not exceeding one year. Two questions are raised: First. Did the defendant, by taking this series of photographs, dramatize Ben Hur, in violation of Harper & Bros.' sole right to dramatize the book under section 4952? Second. Is the exhibition of these photographs by means of an exhibiting machine in theatoriums, where an entrance fee is charged, a public performance or representation of a dramatic composition, in violation of the rights of Harper & Bros., as owners of the copyright of the book and of the dramatic composition, and of the rights of Klaw & Erlanger, as owners of the performing right, under section 4966? There may be several dramatizations of the same story, each capable of being copyrighted. Harper & Bros., having given Klaw & Erlanger the sole right of performing the particular copyrighted drama, can give some one else the sole right of performing a different dramatic composition of the story (Drone on Copyright, p. 597); whereas, Klaw & Erlanger, who are the owners only of the right publicly to perform the particular copyrighted drama, have no right to make another dramatization. Consequently infringing the copyrighted drama is a different thing from infringing the owner's right to dramatize the copyrighted book. Answering the first question: The series of photographs taken by the defendant constitutes a single picture, capable of copyright as such (Edison v. Lubin, 122 Fed. 240, 58 C. C. A. 604; American Mutoscope Co. v. Edison [C. C.] 137 Fed. 262); and as pictures only represent the artist's idea of what the author has expressed in words (Parton v. Prang, 3 Cliff. 537, Fed. Cas No. 10,784), they do not infringe a copyrighted book or drama, and should not as a photograph be enjoined. This distinction between infringement of a copyright of a book and of the performing rights is like the distinction in respect to an infringement between perforated music rolls and sheet music discussed in the case of White-Smith Co. v. Apollo Co., 209 U. S. 1, 28 Sup. Ct. 319, 52 L. Ed. 655, where the court said: "There is no complaint in this case of the public performances of copyrighted music, nor is the question involved whether the manufacturers of such perforated music rolls, when sold for use in public performances, might be held as contributory infringers." Coming now to the second question: When the film is put on an exhibiting machine, which reproduces the action of the actors and animals, we think it does become a dramatization, and infringes the exclusive right of the owner of the copyrighted book to dramatize it, as well as his right as owner of the copyrighted drama, and of Klaw & Erlanger's right as owners of the performing right publicly to produce it. In other words, the artist's idea of describing by action the story the author has written in words is a dramatization. It is not necessary that there should be both speech and action in dramatic performances, although dialogue and action usually characterize them. Judge Blatchford said on this point, in Daly v. Palmer, 6 Blatchf. 256, Fed. Cas. No. 3,552: "To act, in the sense of the statute, is to represent as real, by countenance, voice, or gesture, that which is not real. A character in a play who goes through with a series of events on the stage without speaking if such be his part of the play is none the less an actor in it than one who, in addition to motions and gestures, uses his voice. A pantomime is a species of theatrical entertainment, in which the whole action is represented by gesticulation, without the use of words." And this Court, in the case of Daly v. Webster, 56 Fed. 483, 4 C. C. A. 10, said: "Upon the main point of the case, namely, whether the combination or series of dramatic events (apart from the dialogue) which makes up the particular scene or portion of the play claimed to be infringed is a dramatic composition, and as such entitled to protection under the copyright laws, it is necessary to add but little to the exhaustive opinion of Judge Blatchford, reported in Daly ". Palmer, 6 Blatchf. 256, Fed. Cas. No. 3,552. The same scene in the same play is elaborately discussed by him, and in his conclusion that it is a dramatic composition we concur. In plays of this class the series of events is the only composition of any importance. The dialogue is unimportant, and as a work of art trivial. The effort of the composer is directed to arranging for the stage a series of events so realistically presented, and so worked out by the display of feeling or earnestness on the part of the actors, as to produce a corresponding emotion in the audience. Such a composition, though its success is largely dependent upon what is seen, irrespective of the dialogue, is dramatic. It tells a story which is quite as intelligible to the spectator as if it had been presented to him in a written narrative." It can hardly be doubted that, if the story were acted without dialogue, the performance would be a dramatization of the book; and we think that, if the motions of the actors and animals were reproduced by moving pictures, this would be only another form of dramatization. If the defendant had taken a series of moving pictures of the play as actually performed by Klaw & Erlanger, the exhibition of them would certainly be an infringement of the dramatic composition, because it would tell the story as they tell it, within the decision of Daly v. Palmer and Daly v. Webster, supra. It is next objected that the defendant cannot be held as a contributory infringer, because its films are capable of innocent use; e. g., exhibitions for private amusement. This fact only compels the complainants to prove that the defendant does promote a guilty use of them. Inasmuch as it advertises the films as capable of producing a movingpicture spectacle of Ben Hur, and sends its advertisements to proprietors of theatoriums with the expectation and hope that they will use them for public exhibitions, charging an entrance fee, and inasmuch as many of these proprietors have so used them, the defendant is clearly guilty of contributory infringement. Finally, the defendant relies upon section 8, article 1, of the Constitution, that Congress shall have the power "to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” It is argued from this that, as these moving pictures only express the artist's conception of the author's ideas as expressed in the words of the copyrighted book or dramatic composition, they cannot be said to infringe the author's rights. But the history of the copyright law does not justify so narrow a construction of the word "writings." The first copyright law of 1790 (Act May 31, 1790, c. 15, 1 Stat. 124), included maps and charts as well as books. In 1802 (Act April 29, 1802, c. 36, 2 Stat. 171) copyright was extended to engravings, etchings, and prints. In 1856 (Act Aug. 18, 1856, c. 169, 11 Stat. 138) it was extended in the case of copyrighted dramatic compositions to the right of publicly performing the same. In 1870 (Act July 8, 1870, c. 230, 16 Stat. 212) it was extended to paintings, drawings, chromos, statues, models, designs, photographs, and the negatives thereof, and authors were also allowed to reserve the right to dramatize their works. In 1891 (section 4952, Rev. St. U. S.) authors and their assigns were given the exclusive right to dramatize their copyrighted works. The construction of the word "writings" to cover these various forms of expression, and also to cover the right of giving public performances, has been acquiesced in for over 50 years. In view of this fact, we have no difficulty in concluding that moving pictures would be a form of expression infringing not the copyrighted book or drama, but infringing the author's exclusive right to dramatize his writings and publicly to perform such dramatization. Decree affirmed.1 Topic 5. Diversion of the Relation by Multiplication of SUB-TOPIC A. USE OF TRADE SECRETS (AT COMMON LAW) 215. WILLIAM C. ROBINSON. The Law of Patents for Useful Inventions. (1890. Vol. II, §§ 867-873, in part.) Whatever rights an inventor may possess in his unpatented invention vest in him by virtue of his inventive act alone. The conception of an idea of means makes that idea the absolute and exclusive property of its conceiver, until in some manner he communicates it to others. Although he embodies it in tangible materials and reduces it to practical operation it still belongs to him, unless its embodiment or operation discloses its essential characteristics to his fellow-men. In this condition of affairs the security of the inventor's property depends upon his preservation of his secret. While he successfully conceals the principle of his invention, it is incapable of imitation, and his exclusive enjoyment of the fruits of his inventive skill must be as perfect and as certain as if sheltered under the most rigorous provisions of positive law. . . . As the rights of an inventor to his secret invention, and to a remedy for the wrongs by which his property therein is injured, are not dependent upon the provisions of Patent Law, they exist equally whether the invention is or is not in its nature patentable. It must indeed be the product of inventive skill, for otherwise no title to it could vest in its inventor. But numerous products of inventive skill lie outside the field of those six classes of inventions which the Patent Law has undertaken to protect, and these are often as meritorious and valuable as those for which a patent can be legally granted. If the creator of these unpatentable inventions chooses to preserve his secret he has a right to do so, as also to communicate it confidentially under such restrictions as he deems expedient, and for an invasion of his rights he has the same redress 1 [PROBLEMS: May the owner of a copyright in a painting prevent the representation of the painting's subject by living-picture reproductions? (1894, Hanfstaeng v. Empire Palace, 1894, 2 Ch. 1.) NOTES: "Dramatization, right of: infringement by moving pictures." (C. L. R., IX, 549.) "Infringement: living pictures representing copyrighted paintings." (H. L. R., VIII, 176.)] |