Sweet v. Cater 1841 (original) (raw)
11 Sim. 572.
February 3rd, 1841 [S. C. 5 Jur. 68]
Piracy - Copyright - Agreement - Construction
By an agreement between an author and a bookseller, after reciting that the author had prepared a new edition of one of his works, and that the bookseller was desirous of purchasing it; it was agreed that Messrs. H. (printers) should print 2500 copies of the work, in type and page corresponding with another of the author's works, at the sole cost of the bookseller, and that the latter should pay to the former for the said edition a certain sum by instalments, the first to be paid as soon as the edition was ready for publication, &c.; the work to be divided into three volumes, and to be sold to the public at £3.
Held, that the bookseller was not merely a purchaser of 2500 copies of the work, but was, in equity, an assign of the copyright of it, to the extent that he was to be the sole publisher of it, until the whole edition, consisting of 2500 copies, should be sold; and consequently, that a bill by him to restrain a piracy of the work was not demurrable.
Held, also, that notwithstanding some of the passages alleged to have been pirated were contained in the prior editions as well as in the new edition of the work, the Plaintiff was entitled to rely upon them, in aid of his title to the relief prayed.
The injunction having been granted on the Plaintiff undertaking to try his right at law, and the author declining to allow the Plaintiff to bring the action in his name, the Defendant was ordered to admit at the trial that the Plaintiff was the legal proprietor of the pirated work.
The bill stated that, for some years past, the Plaintiff had carried on, and still carried on, the business of a law bookseller and publisher in Chancery Lane; that in 1805 the Defendant, the Right Honourable Edward Sugden, composed and caused to be printed and published a work called, "A Practical Treatise of the Law of Vendors and Purchasers of Estates;" that, at different times subsequent to that year, eight successive editions of the work were printed and published, and that Sir E. Sugden made various alterations in and additions to the work, in each of the successive editions; that in 1839 Sir E. Sugden was the owner of and legally entitled to the copyright of the work and of the several [573] editions thereof; that in the beginning of that year he prepared a 10th edition for publication, and in that edition he made very extensive alterations and additions to the work, and increased the same to nearly double the size of the 9th edition; that in March 1839 the Plaintiff agreed with him for the purchase of the right of publishing the 10th edition, for the consideration and upon the terms and conditions after mentioned; that the agreement was reduced into writing, and on the 28th of March 1839 was signed by Sir E. Sugden and the Plaintiff, and was as follows:-
"The Right Hon. Sir Edward Sugden having prepared a new edition (the 10th) of the Treatise of the Law of Vendors and Purchasers, and S. Sweet being desirous of purchasing the same, it is agreed that Messrs. Hansard shall print 2500 copies of the work, in type and page corresponding with the 6th edition of the Treatise of Powers, at the sole cost of S. Sweet, and S. Sweet shall pay to Sir E. Sugden for the said 10th edition the sum of (The sum to be paid and the instalments by which it was to be paid were then mentioned. The first instalment was to be paid in cash, as soon as the edition was printed and ready for publication; the second instalment by an approved bill payable four months after date; and the last instalment by an approved bill payable eight months after date; and both bills to be dated at the time the edition was ready for publication). The work to be divided into three volumes, and to be sold to the public for £3 in boards; but should it exceed 111 sheets or 1776 pages, a proportionate increase is to be made in the charge to the public, and a proportionate addition made to the consideration to be paid by S. Sweet to Sir E. Sugden. Fifteen copies in boards to be delivered to Sir Edward, free from all charge or expence."
The bill further stated that, in pursuance of the agreement, the Plaintiff [574] caused 2500 copies of the 10th edition of the work to be printed by Messrs. Hansard, in three volumes, in the type and form specified in the agreement, and the said 10th edition of the work was published by the Plaintiff on the 8th of December 1839; that the Plaintiff had paid to Sir E. Sugden the purchase-money agreed to be paid for the right of publishing the said 10th edition of the work, pursuant to the terms and provisions of the agreement; and had already sold a considerable number of the copies of the said 10th edition, but that a large number of the copies of such edition still remained in his hands unsold; that in November 1840 the Defendants, Cater & Maddox, who were partners as booksellers and publishers at Launceston in Cornwall, published a work intituled: "A Practical Treatise of the Law Relative to the Sale and Conveyance of Real Property, with an Appendix of Precedents, Comprising Contracts, Conditions of Sale, Purchase and Disentailing Deeds, &c., by William Hughes, Esq., of Gray's Inn, Barrister-at-Law;" that the Plaintiff had lately discovered (as the fact was) that the greater part of the last-mentioned work had been copied, word for word or with some colourable alterations, from the 10th edition of Sir E. Sugden's work, and without Sir Edward's knowledge or consent; that, although some of the passages which had been so copied were acknowledged to have been taken from Sir E. Sugden's work, yet by far the greater portion of them were copied without any such acknowledgment; that the printing and publishing of the passages which had been so copied was a piracy on the part of the Defendants, Cater & Maddox, of the 10th edition of Sir E. Sugden's work published by the Plaintiff; that the Defendants, Saunders and Benning, who were partners as law booksellers and publishers in Fleet Street, were the [575] London agents of Cater & Maddox, and as such agents had published and sold Hughes's work in London; that the legal interest in the copyright of Sir E. Sugden's work so as aforesaid purchased and published by the Plaintiff had never been duly assigned to the Plaintiff, and the same was still vested in Sir E. Sugden as the author; and that Cater & Maddox and Saunders & Benning insisted, as the Plaintiff was advised the fact was, that Sir E. Sugden was, therefore, a necessary party to the suit.
The bill prayed that an account might be taken of all the copies of Hughes's work containing passages copied from the 10th edition of Sir E. Sugden's work published by the Plaintiff, which had been published and sold by Cater & Maddox and Saunders & Benning respectively, and of the loss and injury which had been sustained by the Plaintiff, by the publication and sale by them respectively of the said work; and that the four last-named Defendants might be respectively decreed to make good and pay to the Plaintiff such loss and injury, or at any rate that an account might be taken of the profits which had been made by them respectively by the publication and sale of Hughes's work; and that the same Defendants might be respectively decreed to pay to the Plaintiff the amount of such profits; and that they might be restrained from publishing, selling, or disposing of, or causing to be published, sold or disposed of, any copies or copy of Hughes's work, and that they might be decreed to deliver up to the Plaintiff to be cancelled all such parts of the copies of the work so published by them which had been copied from the 10th edition of Sir E. Sugden's work as were then in their possession or power.
[576] The Defendants Cater & Maddox demurred to the bill for want of equity.
Mr. Jacob and Mr. Willcock, in support of the demurrer. The bill states that the legal interest in the copyright of Sir E. Sugden's work has never been assigned to the Plaintiff, and that the same is still vested in the author; we, however, contend that the equitable as well as the legal interest in the copyright is still vested in Sir Edward; and that all the Plaintiff has acquired under his agreement is a licence to sell 2500 copies of the work. The Plaintiff has purchased not the copyright, but a mere licence to publish and sell 2500 copies for his own benefit; and there his right ends. He has no exclusive licence for any definite time: there is nothing whatever to preclude Sir E. Sugden from licensing as many more persons as he pleases to sell copies of his work. An author may give an exclusive licence to sell his work for the whole duration of his copyright; which, in substance, would amount to an assignment in equity of the whole interest in the copyright. So an author may grant an exclusive licence to sell his work for two years, or for any other number of years short of the whole term of his copyright; and that would give the licencee the interest in the copyright for the number of years specified. But that is not the case here: the Plaintiff has no exclusive right for any particular term; but only a licence to sell a certain number of copies. He might have had the exclusive right until he had sold the 2500 copies; but he is not entitled even to that under the agreement. If the Plaintiff is supposed to have any exclusive right, for what length of time is that exclusive right to continue? The error in this case has arisen from not distinguishing [577] between a right to copies of a book and a right to the copyright of a book. The Plaintiff, in all probability, has sold copies of the book in question to his customers, and also to other law booksellers; and he has no more right to file this bill than every purchaser of the book has. The language of the Copyright Act (54 Geo. 3, c. 156), makes it quite clear that no one but the author or the proprietor of the copyright of a book can sue in a case of piracy. In this case, the author has not given to the Plaintiff even the right to print the work; for the name of the person by whom the copies are to be printed, and the type and page in which they are to be printed, are expressly prescribed by the agreement. When the copies have been printed by the person and in the manner prescribed by the agreement, then, and not till then, does the Plaintiff acquire any right to them.
Mr. Knight Bruce, Mr. Sharpe and Mr. H. Sugden appeared for the Plaintiff; but THE VICE-CHANCELLOR [Sir L. Shadwell], without hearing them, said: It certainly would be most extraordinary if after Sir Edward Sugden has been engaged in so many publications, and has filled the office of Lord Chancellor of Ireland, he should not be able to make a contract between himself and his bookseller.
The question is whether it is not manifest, on the face of the contract, that the Plaintiff has a right in the copyright of the 10th edition of the Treatise on the Law of Vendors and Purchasers. The bill states that, in March 1839, an agreement was made by the Plaintiff, with Sir [578] E. Sugden, by which, after reciting that Sir Edward had prepared a new edition (the 10th) of the Treatise on the Law of Vendors and Purchasers, and S. Sweet being desirous of purchasing the same, it was agreed that Messrs. Hansard should print 2500 copies of the work in type and page corresponding with the 6th edition of the Treatise of Powers, at the sole cost of S. Sweet, and S. Sweet should pay to Sir E. Sugden, for the said 10th edition, the consideration therein mentioned, Then follows the way in which the work is to be sold. It is to be divided into three volumes, and to be sold to the public for £3 in boards; but should it exceed 111 sheets or 1776 pages, a proportionate increase is to be made in the charge to the public, and a proportionate increase to be paid to Sir E. Sugden. Now, by this contract there is an obligation which is binding on both parties. Sweet is to sell at a given price; and, therefore, Sir E. Sugden has bound himself to abstain from doing anything which might at all interfere with that act which Sweet was to do. Suppose that before the 2500 copies, which form the 10th edition, are sold, Sir E. Sugden (to put a hypothetical case) should fancy that he had a right to sell another edition to another bookseller, with the immediate right of publication: I apprehend that this Court would certainly restrain him from doing so on this contract. It is not merely optional with Sweet, whether he will sell or not; but he is bound to sell, and to sell in a given manner. It is most probable that, when Sir E. Sugden drew this agreement, he was looking forward to the time when he might think it right to publish some subsequent edition; and he was taking care to impose an obligation on Sweet to sell; and while he imposes that obligation, he is himself bound, [579] at the same time, to perform his part of the contract, which is, not to interfere with the sale of the book.
I think that, upon the plain construction of this contract, Sweet has obtained a right in the copyright of the work, to the extent that he is to be at liberty to be the sole publisher of it until the whole edition, consisting of 2500 copies, shall be sold. He, therefore, is an assign of the copyright in a limited sense. Consequently the demurrer must be overruled.
The demurrer having been overruled, Mr. Knight Bruce and Mr. Sharpe moved for the injunction. They pointed out several passages in Mr. Hughes's work as having been taken from the tenth edition of Sir E. Sugden's work.
Mr. Jacob and Mr. Wilcock contended that Mr. Hughes's work was of quite a different character from Sir E. Sugden's, and could not be a substitute for it; that treating, as the former work did, of various branches of the law, it was allowable and even necessary to take some parts of it from a standard work like Sir E. Sugden's; and that, in doing so, Mr. Hughes had not transgressed the limits of fair copying; that some of the passages alleged to have been copied were contained in the ninth and other prior editions of Sir E. Sugden's work; and as the Plaintiff sued as the proprietor of the tenth edition only, he was not entitled to rely on those passages in support of his case; and that, at all events, the injunction ought not to be granted unless the [580] Plaintiff would undertake to try his right in an action at law.
THE VICE-CHANCELLOR [Sir L. Shadwell]. In cases of this nature, if the pirated matter is not considerable, that is, where passages, which are neither numerous nor long, have been taken from different parts of the original work, this Court will not interfere to restrain the publication of the work complained of; but will leave the Plaintiff to seek his remedy at law. But in this case it is plain that the passages which have been pointed out have been taken from the Plaintiff's book, and they are so considerable, both in number and length, as to make it right that this Court should interfere.
It was said that, with respect to some of those passages, the Plaintiff has no right to complain, because they were contained in prior editions of Sir E. Sugden's work. But I do not think that that fact at all alters the case; for the entire copyright in all those prior editions was vested in Sir E. Sugden when he made the agreement with the Plaintiff: and my opinion is that the effect of that agreement was to give to the Plaintiff, as against Sir E. Sugden and all persons claiming under him, a right to insist that the matter contained in the 10th edition should not be published whilst he was performing his part of the contract by selling that edition to the public. And, that being my view of the case, I think that, although the passages may be contained in some prior edition, yet, if they are contained in the 10th edition as well, the Court ought to prevent their being copied.
It was said that the injunction ought not to be granted unless the Plaintiff would undertake to try his right at [581] law: and I think, if the Defendants require it, that that term ought to be imposed upon the Plaintiff.
February 12. Sir E. Sugden having declined to permit the Plaintiff to bring the action in his name, the Defendants were ordered to admit at the trial that the Plaintiff was the legal proprietor of the copyright in the 10th edition of Sir E. Sugden's work.
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