
    Hastings et al. v. Giles Lithographic Co.
    
      (Supreme Court, General Term, First Department.
    
    January 28, 1889.)
    Libel and Slander—Slander of Title—Infringement of Copyright.
    The fact that the licensee of a copyrighted design had, before obtaining the license, infringed the copyright, does not make a notice sent by him to other infringers, on advice of counsel, warning them to desist, give up the infringing articles in their hands, and account for those disposed of, a slander of title, though it would be a good defense to an action for infringement. The representations not being false, there is no question of malice to go to the jury.
    Appeal from circuit court, Hew York county.
    Action by Orlando B. Hastings and another against the Giles Lithographic Company, for damages for slander of title. A motion to dismiss was made at the end of plaintiffs’ case, and was granted by Mr. Justice Beach. The plaintiffs’ evidence established the following facts: That about March, 1885, the plaintiffs received a letter from a customer in Chicago, named Clarke, inclosing one of a set of two lithographic cards made by the defendants, and requesting the plaintiffs to see the defendants, and make a bargain with them for 150,000 to 200,000 of the two designs. The card inclosed was merely a sample, or what is called in the printing trade a “draft.” The one card represented the head of a little girl in a Mother Hubbard cap, and the other card represented the head of a little boy in a Turkish fez. The first card was called “Alberta,” and the other “Little Turk.” These cards the defendants had, at the request of the Fuller & Warren Company, of Chicago, sent to them in February, 1885, as sample cards of their work, and had stated a price for them. The Fuller & Warren Company delivered the cards to Clarke, to be imitated by him, and Clarke forwarded them to plaintiffs, with the request to see the defendants as aforesaid. Instead of seeing the defendants, plaintiffs offered to furnish the cards themselves, and on March 18, 1885, they received an order from Clarke for 200,000 of these two designs at the lump price of $340. Plaintiffs thereupon imitated defendants’ cards, which the plaintiff Hastings testified he considered it honorable to do, and printed 224,000 for Clarke. These cards were shipped to Clarke. In addition to the 200,000 made for Clarke, plaintiffs printed an additional quantity of 169,000, which they sold prior to May 20, 1885, to Cassell & Co.,-McCann, Friedenstein, Hardy & Co., and West Side Tailoring Co. On April 23, 1885, the said Clarke wrote to the White Sewing Machine Company, customers of defendants, for whom they had made in the fall of 1884 the cards in question, offering to let them have a lot of the same cards at a reduced price. The White Sewing Machine Company wrote to defendants on April 27,1885, complaining of this. Thereupon, on May 20, 1885, the defendants caused the following letter to be sent by their attorneys to plaintiffs Clarke and Fuller & Warren :
    “Frankenheimer & Rosenblatt, Counselors at Law, Equitable Building, 120
    Broadway.
    “Hew York, May 20th, 1885.
    
      “Messrs. Hastings c6 Todd—Gentlemen: We understand that you are using and disposing of an advertising card containing the picture of little boy in a red fez cap, know as ‘A Little Turk.’ The original of this picture,—a certain crayon drawing entitled * A Young Turk,’—was duly copyrighted by the Hargreaves Manufacturing Company, of Detroit, Michigan. This company has duly granted the sole right to reproduce this picture for advertising purposes to our clients, the Giles Lithographic Co., of this city, who are the sole licensees of the right of reproduction. We desire herewith to give you formal notice of this fact, and to notify you to refrain from using or in any way disposing of said cards, or any print, publication, or display containing a copy or reproduction of said drawing or picture. You are also notified to surrender the cards in your possession to our clients, and also to account to them •for such cards as you may have used or disposed of. Unless we hear from you at once, we shall proceed against you to the utmost extent of the law.
    “We remain, yours, respectfully,
    “Frankenheimer & Rosenblatt. ”
    The plaintiff Hastings thereupon had several interviews with Mr. Giles, the manager of the defendants, with a view to arranging a settlement, and several letters bearing upon the same subject passed between the attorneys of the parties. In the course of his negotiations with Mr. Giles the plaintiff Hastings was informed by Giles that the defendants had made in 1884 their lithographic copies of the “Alberta” and “Little Turk” cards from two colored photographs which they had purchased without knowledge of the' fact that the pictures were copyrighted; that in the fall of 1884 they had printed a large lot of these caids for the White Sewing Machine Company for advertising purposes; that long after these cards had been delivered to the White Sewing Machine Company, the defendants were notified by the Hargreaves Manufacturing Company, of Detroit, that the “Alberta” and “Little Turk” pictures had been copyrighted by the latter company, and that the cards which the defendants had printed for the White Sewing Machine Company constituted an infringement of these copyrights; that the defendants had thereupon consulted their counsel, and had been advised by him, after a full examination of the facts, tiiat the copyrights of the Hargreaves Manufacturing Company were valid; that defendants had no good defense, and that they should settle with the Hargreaves Company upon the best terms possible; that in pursuance of this advice the defendants settled with the Hargreaves Company, paid them $600, and received from them an exclusive license to reproduce the Alberta and Little Turk pictures for advertising purposes; that thereafter the defendants, acting under the advice of their9 counsel, gave the notice complained of to plaintiffs’ customers. Hastings testified he had no reason to doubt this statement that defendants were so acting under advice of counsel, and that it was a self-evident fact. Hastings further testified that he never asked to see the defendants’ license; and that he presumed the defendants had some paper to that effect. On June 4, 1885, plaintiffs, through their attorneys, wrote to the defendants, threatening to-sue them for $10,000 damages, unless they withdrew their unlawful notices within 24 hours. Defendants’ attorneys replied, suggesting an amicable arrangement of the matter. Plaintiffs’ attorneys were informed by letter from defendants’ attorneys, dated June 8, 1885, that no cards without the copyright notice had been disposed of by defendants since the acquisition by them of the exclusive license; that prior to the acquisition of the exclusive license the defendants had printed a lot of cards for the White Sewing Machine Company without knowledge of the copyright of the Hargreaves Manufacturing Company; that the defendants were compelled to pay for this infringement, and had obtained an exclusive license to reproduce the pictures for advertising purposes; and that, if plaintiffs had obtained any cards with the defendants’ impress thereon, they must be cards printed before the license was obtained. The negotiations for a settlement fell through, and on July 10, 1885, plaintiffs began the present suit. The plaintiffs sought to establish the allegation of the complaint, that defendants’ claim to an exclusive license to reproduce the said pictures for advertising purposes was unfounded, by proving that in the fall of 1884 the defendants had printed these cards for the White Sewing Machine Company, without the copyright notice required by the United States statutes imprinted thereon; and that they had sent two sample cards to the Warren & Duller Company in February, 1885, without such copyright notice thereon. All this the defeñdants admitted they had done, both by the letter of their attorneys and by oral admission made by Giles to Hastings; but at the same time they informed plaintiffs, before this action was begun, that this was done without knowledge of the fact that the pictures were copyrighted, and before the defendants had acquired their exclusive license, and that defendants had to pay dearly for their infringement of the copyright. Ho evidence was introduced to show that the Hargreaves Manufacturing Company did not own copyrights of the two pictures “Alberta” and “Little Turk.” Hor was any evidence introduced to establish that the defendants did not hold an exclusive license from the Hargreaves Manufacturing Company to reproduce these pictures for advertising purposes; in fact, the plaintiff Hastings said that he presumed the defendants had such a paper. Ho evidence was introduced to establish that the defendants had issued any of the cards in question without the statutory copyright notice thereon, or had done anything to dedicate the cards to the public, after they had acquired their exclusive license. The complaint was dismissed- on the merits, and plaintiffs appeal.
    Argued before Van Brunt, P. J., and Brady and Daniels, JJ.
    
      F. B. Candler, for appellants. John Frankenheimer, for respondents.
   Brady, J.

It may be said in limine that the plaintiffs’ case would seem to rest substantially on the infringement of the copyright of the Hargreaves Manufacturing Company by the defendants, as admitted by them, before they had acquired any right from that company by an exclusive license. This would, in no legal view that can be presented, sustain an action like this, which depends for success upon two elements, falsity and malice. Steward v. Young, L. R. 5 C. P. 126; Kendall v. Stone, 5 N. Y. 14, 18: Hovey v. Pencil Co., 57 H. Y. 119; Manufacturing Co. v. Goodyear, 13 Blatchf. 375; Burnett v. Tak, 45 L. T. (N. S.) 743.

It seems to have been conceded on the trial that the defendants had what was claimed by them, namely, an exclusive license; and, assuming that to have been established by concession or proof, the first requisite is wanting in the plaintiffs’ case. The statement made by the defendants must therefore be assumed to be true, and what was done to protect the right secured by the license cannot be said to be malicious. Indeed, it was declared in Hovey v. Pencil Co., supra: “If the defendant, believing itself to have an exclusive patent, issued such a notice in good faith as a warning to dealers against an invasion of its rights, it in so doing would only have- discharged a moral obligation, and satisfied the demands of fair dealing. In such a case a mistake on its part as to the validity of its right would not have rendered it liable to an action. ” If the falsity of the statement were established, malice, it is true, might be inferred or pronounced upon facts and circumstances accompanying the act complained of. Here, however, one of the plaintiffs said, in one of the interviews which took place between him and Mr. Giles in relation to the subject of this action, that he never asked to see the exclusive license the defendants claimed to have secured from the Hargreaves Manufacturing Company for the production of the “Little Turk” and the “Alberta” cards for advertising purposes. He presumed, he said, they had some paper to that effect. There is no doubt they had, and that they believed in their ownership of a license. And they proceeded regularly to enforce their rights by the employment of competent counsel, who, after examination of the subject, wrote the letter detailed in the statement of facts, and advised the course pursued by the defendants. The manner in which they sought to protect themselves was cautious, and, under all the circumstances leading to it and distinguishing it, it could not per se create any other just impression than that they were doing what careful business men would do to protect their interests. Indeed, in Halsey v. Brotherhood, L. R. 15 Ch. Div. 514, affirmed L. R. 19 Ch. Div., 386, the right to give notices, the notice being bona fide, is recognized, and declared to be a duty to protect a patent. The rigorous maintenance of a right can never be construed as malicious. The defendants could resort to all the remedies known when their cause was just in a legal sense, and the plaintiffs can gain no right to indemnity in this action from the prior improper infringement by the defendants of the copyright under which they subsequently became licensees. Doubtless this would be a good defense in an action by the defendants for an infringement, (Rev. St. U. S. § 4962; Paper Bag Cases, 105 U. S. 766; Littlefield v. Perry, 21 Wall. 205;) but this is a very different controversy. The plaintiffs seek damages for slandering their title to the cards named as a commercial article, or their right to deal in them; and they have not shown their superior ownership of and right to use them, the falsity of the defendant’s claim to them, or malice in its assertion. The plaintiffs, indeed, must succeed on the strength of their own asserted title, and not on any infirmity of the defendants’ arising from kindred violations of the law of copyright. The result of this review is, therefore, that the court did not err in refusing to leave the question of malice to the jury. There was no falsity shown of which to predicate the right to that procedure, and the dismissal of the complaint was correct for the same reason, if no other existed. The exclusion of the evidence relating to damages, even if improper, could by no possibility prejudice the plaintiffs, inasmuch as the underlying weakness of their case was not removed, and left them powerless to maintain the action as we have seen. There does not seem to spring from the record any reason why the appellant should have a new trial, and the judgment must therefore be affirmed, with costs. All concur.  