210 U. S.

Argument for Appellant.

The defendant now, after having secured a removal and after having successfully resisted a motion to remand, attempts to deny the jurisdiction of the Circuit Court on the ground that the removal was improper. It is enough to say that that question is not open under the certificate.

Appeal dismissed.

BOBBS-MERRILL COMPANY, v. STRAUS et al., DOING BUSINESS AS R. H. MACY & COMPANY.

APPEAL FROM THE CIRCUIT COURT OF APPEALS FOR THE SECOND CIRCUIT.

No. 176. Argued March 12, 13, 1908.-Decided June 1, 1908.

There are differences between the patent, and the copyright, statutes in the extent of the protection granted by them, and the rights of a patentee are not necessarily to be applied by analogy to those claiming under copyright. At common law an author had a property in his manuscript and might have redress against any one undertaking to publish it without his authority. Copyright property under the Federal law is wholly statutory and depends upon the rights created under acts of Congress passed in pursuance of authority conferred by § 8 of Art. I of the Federal Constitution. The copyright statutes are to be reasonably construed. They will not by judicial construction either be unduly extended to include privileges not intended to be conferred, nor so narrowed as to exclude those benefits that Congress did intend to confer.

The sole right to vend granted by § 4952, Rev. Stat., does not secure to the owner of the copyright the right to qualify future sales by his vendee or to limit or restrict such future sales at a specified price, and a notice in the book that a sale at a different price will be treated as an infringement is ineffectual as against one not bound by contract or license agreement. 147 Fed. Rep. 15, affirmed.

THE facts are stated in the opinion.

Mr. W. H. H. Miller, with whom Mr. C. C. Shirley and Mr. Samuel D. Miller were on the brief, for appellant:

The matter here involved is of statutory copyright alone; no question of common-law rights or property of either the

Argument for Appellees.

210 U.S.

author or publisher is presented. Appellant claims the right to control the price under the provision of the statute which gives the owner of a copyright the "sole" right of "vending," in strict analogy to the right of the owner of a patent to control the price of the patented article under the statutory use of the same word.

The analogy is complete between the case at bar and those numerous patent cases wherein the courts have upheld the right of patentees to impose restrictions upon the sale of the patented article or its products and to exercise a certain control over the thing sold after the completion of the sale. Edison Phonograph Co. v. Kaufmann et al., 105 Fed. Rep. 960; Edison Phonograph Co. v. Pike, 116 Fed. Rep. 863; National Phonograph Co. v. Schlegel et al., 128 Fed. Rep. 733; Heaton-Peninsular-Button-Fastener Co. v. Eureka &c. Co., 77 Fed. Rep. 288; Cortelyou v. Lowe, 111 Fed. Rep. 1005; Victor Talking Machine Co. v. The Fair, 123 Fed. Rep. 424. Numerous other cases might be cited. See also Dickerson v. Tinling, 84 Fed. Rep. 192; Dickerson v. Matheson, 57 Fed. Rep. 524.

The power of the owner of the patent to limit price has been expressly decided by this court. Bement v. National Harrow Co., 186 U. S. 70; National Phonograph Co. v. Schlegel, 128 Fed. Rep. 733; Edison Phonograph Co. v. Pike 116 Fed. Rep. 863. See also: Cortelyou et al. v. Johnson & Co., 138 Fed. Rep. 110; A. B. Dick Co. v. Roper, 126 Fed. Rep. 966; Brodrick Copygraph Co. v. Roper, 124 Fed. Rep. 1019; Cotton Tie Co. v. Simmons, 106 U. S. 89; Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425.

Mr. John G. Carlisle and Mr. Edmond E. Wise for appellees: The right, claimed by appellants, to control the retail price of books which have passed out of their possession, is not granted by the provisions of the statute which gives the owner of a copyright the sole right of vending. Publishing Co. v. Smythe, 27 Fed. Rep. 914; Harrison v. Maynard-Merrill Co., 61 Fed. Rep. 689; Clemens v. Estes, 22 Fed. Rep. 899; Publish

ing Co. v. Smith, 27 Fed. Rep. 914; Werckmeister v. American Lithographic Co., 134 Fed. Rep. 321; Doan v. American Book Co., 105 Fed. Rep. 772; Kipling v. G. P. Putnam's Sons, 120 Fed. Rep. 631; Bobbs-Merrill Co. v. Snellenburg, 131 Fed. Rep. 530.

Owing to the difference both in the theory and the letter of the patent and copyright statutes, the patent cases relied upon by complainant are inapplicable to the question of copyright. here presented.

MR. JUSTICE DAY delivered the opinion of the court.

The complainant in the Circuit Court, appellant here, the Bobbs-Merrill Company, brought suit against the respondents, appellees here, Isidor Straus and Nathan Straus, partners trading as R. H. Macy & Company, in the Circuit Court of the United States for the Southern District of New York, to restrain the sale of a copyrighted novel, entitled "The Castaway," at retail at less than one dollar for each copy. The Circuit Court dismissed the bill on final hearing. 139 Fed. Rep. 155. The decree of the Circuit Court was affirmed on appeal by the Circuit Court of Appeals. 147 Fed. Rep. 15.

The appellant is the owner of the copyright upon "The Castaway," obtained on the eighteenth day of May, 1904, in conformity to the copyright statutes of the United States. Printed immediately below the copyright notice on the page in the book following the title page is inserted the following notice:

"The price of this book at retail is one dollar net. No dealer is licensed to sell it at a less price, and a sale at a less price will be treated as an infringement of the copyright.

"THE BOBBS-MERRILL COMPANY."

Macy & Company, before the commencement of the actio purchased copies of the book for the purpose of selling the san at retail. Ninety per cent of such copies were purchased by them at wholesale at a price below the retail price by about

forty per cent, and ten per cent of the books purchased by them were purchased at retail, and the full price paid therefor. It is stipulated in the record:

Defendants, at the time of their purchase of copies of the book, knew that it was a copyrighted book and were familiar with the terms of the notice printed in each copy thereof, as above set forth, and knew that this notice was printed in every copy of the book purchased by them.

The wholesale dealers, from whom defendants purchased copies of the book, obtained the same either directly from the complainant or from other wholesale dealers at a discount from the net retail price, and at the time of their purchase knew that the book was a copyrighted book and were familiar with the terms of the notice printed in each copy thereof, as described above, and such knowledge was in all wholesale dealers through whom the books passed from the complainants to defendants. But the wholesale dealers were under no agreement or obligation to enforce the observance of the terms of the notice by retail dealers or to restrict their sales to retail dealers who would agree to observe the terms stated in the notice.

The defendants have sold copies of the book at retail at the uniform price of eighty-nine cents a copy, and are still selling, exposing for sale and offering copies of the book at retail at the price of eighty-nine cents per copy, without the consent of the complainant.

Much of the argument on behalf of the appellant is based upon the alleged analogy between the statutes of the United States securing patent rights to inventors and the copyright acts securing rights and privileges to authors and others. And this analogy, it is contended, is so complete that decisions under the patent statutes in respect to the rights claimed in this suit under the copyright act are necessarily controlling.

In the main brief submitted by the learned counsel for the appellant it is said:

"All of the argument has been upon the assumption that

the very numerous decisions of the Circuit Courts and Circuit Courts of Appeals, such as the Heaton-Peninsular case [ButtonFastener case], 77 Fed. Rep. 288, the Victor Talking Machine case, 123 Fed. Rep. 424, and others along the same line, as well as the Cotton Tie case in this court, upholding this restriction, with reference to sales of patented articles, express the law; and we have been especially confident that such must be the case, for the reason that this court, in Bement v. National Harrow Company, 186 U. S. page 70, has given its sanction to the broad doctrines laid down in the Heaton-Peninsular case, 77 Fed. Rep. 288."

The present case involves rights under the copyright act. The facts disclose a sale of a book at wholesale by the owners of the copyright, at a satisfactory price, and this without agreement between the parties to such sale obligating the purchaser to control future sales, and where the alleged right springs from the protection of the copyright law alone. It is contended that this power to control further sales is given by statute to the owner of such a copyright in conferring the sole right to "vend" a copyrighted book.

A case such as the present one, concerning inventions protected by letters patent of the United States, has not been decided in this court, so far as we are able to discover. In the so-called Cotton Tie case (Cotton Tie Co. v. Simmons, 106 U. S. 89), the complainant company owned patents for improvements in metallic cotton-bale ties, and these cotton-bale ties were manufactured by the patentee, and stamped in the buckles were the words: "Licensed to use once only." After the bands had been severed at the cotton mill the respondent bought them and the buckles as scrap iron, rolled and straightened the pieces of the bands, and rivetted their ends together. He then cut them into proper lengths and sold them, with the buckles, to be used as ties.

The report of this case in the Circuit Court for the District of Rhode Island is found in 3 Banning & Arden, 320; S. C., 1 Fed. Cases, No. 293, p. 623. The report shows that Judge