
    PALMER against DE WITT.
    
      New York Superior Court; Special Term,
    
    
      December, 1868.
    Injunction. — Literary Property.— Uncopyrigiited Drama.
    The common law right of the author of an unpublished manuscript to its exclusive use, pertains only to the unpublished work; and after unrestricted publication to the world, neither the author, whether a foreign or a domestic writer, nor his assignee, can assert an exclusive right to property, in its future use and publication.
    After an uncopyrighted drama has been, with the sanction of the author, represented upon the stage, without any restrictions or conditions imposed upon the spectators, the court will not, at the suit either of the author or of his assignee, enjoin from reproducing the same drama, other persons who have obtained copies by seeing and hearing such representation.
    
    Motion to dissolve an injunction.
    This action was brought by Henry D. Palmer against Robert M. De Witt to restrain the defendant from printing and selling printed copies of a comedy called “ Play,” of which the plaintiff claimed to be proprietor, by virtue of an assigment from the author.
    The motion was made upon the complaint and answer. It was alleged in the complaint, “that prior to the 1st of Febuary, 1868, one T. W. Robertson, of London, England, an eminent author, was the composer of a comedy called ‘Play,’ and assigned to the plaintiff the exclusive right of enacting, representing upon the stage, printing and publishing, or causing, licensing or permitting to be enacted, performed, represented or produced upon the stage throughout the United States, in and to the said comedy, together with all the author’s rights and privileges therein and thereto throughout the United States, and all benefits and advantages to be derived therefrom.” That at the time of such assignment, purchase and sale, the said Robertson had a great reputation as a- dramatic author, having produced some of the finest comedies introduced on the modern stage ; among them the comedies “Caste,” “ Ours,” and “ Society” had been eminently successful. •
    It was also alleged that any new comedy from such an author was of very great value to the exclusive proprietor thereof, and the plaintiff, in the purchase of the comedy of “Play,” anticipated great pecuniary advantage from and by reason of the celebrity and popularity of its author. And the plaintiff averred that at the túne of the purchase of “ Play,” on Feb. 1,1868, the said comedy was an unpublished composition, adapted and designed for scenic representation, and was of great literary and dramatic merit; that it had never been at that time, nor had been since, printed or published in print by the plaintiff or its author, or by any one under his sanction, permission or consent, or that of either of them, and at that time had never been represented upon any stage; that its first performance upon any stage was on February 15, 1868, in the city of London, at the Prince of Wales’ Theatre, and under the sanction of the author, but that the author did not thereby confer upon or abandon to the defendant, or to any other person, the right or privilege of printing his comedy, or otherwise interfering with his right of property therein ; that the plaintiff, nor the author, had never consented to the printing and publishing, or sale thereof; that on or about February 10, plaintiff received a full and complete manuscript copy of the said comedy, and still owned the same, and kept it unprinted and unpublished, and was now engaged in licensing the right to perform and enact the same; that on February 18, 1868, he published in the New York Herald a notice of his right of ownership in said play, and had the same repeated in said newspaper tri-weekly during the months of February and March; that about March 25, 1868, the defendant, a publisher in the city of New York, without the knowledge or consent of the plaintiff, and in willful disregard of his rights as proprietor of said play, did print, publish and sell printed copies of the said play, and still continued to do so, to the plaintiff’s damage ; and the plaintiff alleged that copies of the play so printed and sold were identical with the comedy purchased by the plaintiff from the author; that the plaintiff was liable to sustain irreparable injury by reason of the facility which defendant had afforded to managers and actors to produce said comedy by means of such printed copies.
    The answer denied the plaintiff’s proprietorship, and any willful intention to injure the plaintiff; claimed that the play was publicly represented upon the stage in Lon-' don a great number of times, and that the defendant obtained the play from those who saw and heard the represention as spectators, and that there was no prohibition in the theatres where the same was heard, nor upon the tickets of entry, against carrying away the same in the memory by those who saw and heard it.
    A temporary injunction having been granted, the defendant now moved to dissolve it.
    
      Ira D. Warren, for the motion.
    
      William D. Booth, opposed.
    
      
       Compare Keene v. Wheatley, 9 Am. Law Reg., 44; and Roberts v. Myers, 13 Law Reporter, 400, 401; and Daly v. Palmer, an unreported case, of which we give the substance in note on page 134, post.
      
    
   Garvin, J.

—The plaintiff in this action claims to be the assignee, purchaser and sole, and exclusive owner and proprietor throughout the United States of a comedy written by T. W. Robertson, an eminent English dramatic author, entitled “Play.” The plaintiff purchased the comedy on or about February 1, 1868, and received the copy of said play in manuscript on or about February 10, and alleges the same has never been printed or published with the consent of the plaintiff or the author. That it was represented for the first time on the stage in London, at the Prince of Wales’ Theatre,' on February 15, 1868. That during the latter part of February and the whole of March, the plaintiff had a notice published in the New York Herald tri-weekly, of his right of ownership in the play. That the defendant, on March 25, in willful disregard of the rights of plaintiff, and without Ms consent, published and sold identical copies of “Play,” thus owned by the plaintiff, to his great damage arid irreparable injury, and depriving him of all advantages and profits to be made thereby.

It is not pretended, that either the plaintiff or the author had an American copyright in the comedy in question ; neither could either have such a right—a foreign copyright would not avail the plaintiff here. There can be no copyright in a published work at common law ; copyright exists only by statute (Wheaton v. Peters, 8 Pet., 499). The plaintiff must, therefore, stand upon his common law right of literary property in “Play,” as the assignee of the author as to its exclusive proprietorship in the United States, with the right to enforce it as against others who claim to publish and circulate for their own profit and advantage.

Two principles are well settled upon authority: First. The author of an unpublished manuscript has in it at common law an exclusive right of property; the violation of which may justly be protected by injunction. This is the language of the text writers, and the decisions upon the subject are uniform and clear (8 Pet., 591; 4 Duer, 385). Second. This exclusive right pertains only to the unpublislied manuscript, without copyright protection; hut after unrestricted publication to the world, neither the am thor nor his assignee, whether a foreign or domestic writer, can assert an exclusive right to property in the future use and publication of the composition.

The important question in this case is, whether there was a publication or communication of the comedy by the author or his assignee.

Every communication, says Cadwaladeb, in Keene v. Clark, of a knowledge of the contents, unless restricted, of a manuscript, is more or less a publication. And tliis able judge further says, “an act which renders the contents of a manuscript in any mode or degree an addition to the store of human knowledge is a publication.” It has been expressly held by this court, in Keene v. Clark, that at common law “the author or proprietor of an nncopyrightecl literary composition parts with the right to the exclusive use and enjoyment of its contents "by communicating them to others,” without some concomitant reservation expressed, or implied from the circumstances. This is holding, in other words, that an author has no exclusive property in a published work, or one communicated to the public, except under some statute (Wheaton v. Peters, 8 Pet., 591; Bartlett v. Crittenden, 5 McLean, 32). The only question, therefore, is that of publication. As this question is presented, the fact of foreign can make no difference.

There being no copyright interest, plaintiff’s case must rest upon his common law rights. After publication his exclusive right ceases to exist. Such publication may be either by words, by writing, printing in newspapers, magazines, or by lectures, sermons (oral or written), or by dramatic representation. If, in any of these modes, the public become possessed of the contents of a manuscript, without restrictions, express or implied, it must be regarded as such a publication as divests the author of an exclusive property in the work, whatever it may be.

It is averred in the complaint that the comedy in question was represented on the stage on or about the 15th of February, 1868, in London. This one fact brings the case clearly within the rule laid down in the case heretofore referred to in this court. Doubtless, there was a series of representations of the same play. There is no pretense of any restriction upon its use by those who witnessed its representation ; a dramatic representation is publication or communication of the contents. If this is not a publication, copyright would he worthless, compared with the common law property in and perpetual right to exclusive representation of any product of the author. The first is limited to a few years, the latter would he perpetual; copyright is confined to the citizen and resident, the other applies to all. There is no valuable exclusive right in the works of a foreign author that can be enforced, not even in their republication, though by the custom of trade other publishers refrain from publishing rival editions thereof.

The plaintiff avers a representation on the stage in London, and the defendant insists in his answer that “Play ” was publicly represented upon the stage, in London, a great number of times, and that the defendant obtained it from those who saw and heard the representation as spectators, and that there was no prohibition in the theatre where the same was heard, nor upon the tickets of entry, against carrying it away in the memory. The defendant also denies any willful intention to injure the plaintiff. We must, therefore, assume the defendant possessed himself of “Play” by means not unlawful in themselves, through those who saw and heard it represented in London, and published it in this country. If the defendant had obtained a copy from a printed book, magazine or newspaper, there can be no doubt of his legal right to multiply copies and sell them to the public. How can there be any doubt of the same right in cases where he obtains the contents from those who learn and carry away in memory a comedy or play from seeing and hearing its unrestricted and unconditional representation upon the stage %

All our national legislation, as well as that proposed for the benefit of foreign authors, proceeds upon the conceded principle that the work of a foreign author brought here may be appropriated by any person without any compensation whatever being made to the author. This was conceded by the committee of the senate in the report made in 1837, by its distinguished chairman, Mr. Clay, when an attempt was made to confer the benefits of our laws upon the British and French authors. A bill accompanied the report, which failed. The enactments of Congress, passed in 1831, declared in effect that' the only-person entitled to copyright shaH be such authors as are citizens and residents, and their assignees, “ and if the assignee takes his title before the author has come to reside, he takes from a person who is not within the privilege of the statute, and has nothing to confer” (Curtis on Copyright, 143). The ninth section of the same act prohibits the publication of manuscripts without consent, and authorizes the courts by injunction to restrain such publication of any manuscript; but the eighth section expressly excludes that section from any application to works written or composed by any person not a citizen nor resident of the United States f thus recognizing the principle in this country that when the foreign author communicates, without restrictions, the contents of his manuscript or work to others, he divests himself of his exclusive property in it. In other words, “the statute has taken away the common law rights derivable from a non-resident alien as soon as the work is published ” (Curtis on Copyright, 148). All the title the assignee can have is the common law title to an unpublished manuscript, but in one lawfully made public lie has no other title than such as the author posessed after publication.

The main question in this case was substantially decided by this court in the case of Keene v. Clark (5 Rob., 38); there it was expressly held, “where the spectators of a public performance have not entered into some express or implied understanding with its proprietor, limiting the use they may make of the knowledge derived from being present at such performance, they cannot be restrained as to the use by them of so much of it as they can retain and carry away in their memory.”

I do not see how this case can be distinguished in principle from that rule thus laid down. The plaintiff has failed to make a case for the interference of the court by injunction. Courts must administer the law as they find it. This may be a case of great hardship for the plaintiff, but the remedy is to be found in national legislation. The same difficulty exists in relation to the republication of the uncopyrighted works of those who have enriched the world by their contribution to the literature of the republic of letters, as well as to those who publish editions of foreign authors ; yet these defects in the legislation of the country have continued for many years. In the absence of any international law of copyright it is difficult to see how foreign authors, their assignees, or publishers of foreign literature, can be protected.

The injunction order in this case must be dissolved, with $10 costs. 
      
       In the case of Daly against Palmer (United States Circuit Court, Southern District of NeivYorh, inequity, December, 1868), it was—Held, that a, written work consisting wholly of directions set in order for conveying the ideas of 'an author on a stage by actors, is as much a dramatic composition, within the protection of the copyright act, as if language or dialogue were used; and that the author, having a copyright in his drama, was entitled to protection in respect to a substantial, material, original part thereof, although the act of 1856,—providing- for copyright of dramatic composition,—does not, like the act of 1831, uso the words “ in whole or in part and that the sale as well as the representation of the drama, might be enjoined.
      The cause came before the court on a motion for an injunction.
      The action was brought by Augustin Daly against Henry D. Palmer and Henry 0. Jarrett, to restrain the defendants from the public performance and representation, and from the sale for dramatic representation, of a scene called the “ railroad scene ” in a play called “ After Dark." The plaintiff was by profession a dramatic author, his business being to compose, write and produce on the theatrical stage dramatic compositions, commonly called plays. The defendants were the managers of a public place of theatrical amusement, in the city of Hew York, called Hiblo’s Garden. Before August 1, 1867, the plaintiff composed and wrote a dramatic composition called “ Under the Gaslight," and on that day he took the proper steps to secure to himself a copyright for the composition, under the provisions of the act of February 3,1831 (4 U. S. Stat. atL., 436), by depositing before publication a printed copy of the title of the composition, as author and proprietor, in the clerk’s office of the district court of the southern district of Hew York, where he resided at the time. The composition was afterward printed and published, and within three months from its publication he caused a copy of it, as printed and published, to be delivered to said clerk. He also gave information of copyright being secured by causing to be printed and inserted in the several copies published the words prescribed by the fifth section of the act.
      The plaintiff’s bill alleged that Dion Boucicault, another dramatic author, had procured a copy of plaintiff’s drama, and had plagiarized the railroad scene in a play prepared by him under the title of “After Dark,” and that the defendants were about to perform such play, and the defendant Palmer was about to sell copies to other managers in the United States.
      
        Blatciifórd, J., in rendering the opinion of the court, stated the law in the following language :
      “ The act of 1S31 (4 U. S. St at. atL., 436), confers upon the author and proprietor of a dramatic composition, duly copyrighted, the sole right of printing, reprinting, publishing and vending such composition, in whole or in part, for the term of twenty-eight years from the time of recording the title of such composition, in the manner directed by the act. The act of August 18, 1856 (11 U. S. Stat. atL., 138), provides that any copyright thereafter granted under the laws of the United States ‘ to the author or proprietor of any dramatic composition, designed or suited for public representation, shall be deemed and taken to confer upon the said author or proprietor, his heirs or assigns, along with the sole right to print and publish the said composition, the sole right also .to act, perform or represent the same, or cause it to be acted, performed or represented, on any stage or public place during the whole period for which the copyright is obtained.’
      * ** * *
      “ The first inquiry is, what is meant by the act of 1856 by a ' dramatic composition;’ what is meant by the ‘public representation ’ of a dramatic composition, and what is meant by the right to ‘act, perform or represent' a dramatic composition, on a ‘ stage or public place.’ The act of 1856 confers on the author or proprietor of a copyrighted 1 dramatic composition, designed or suited for public representation,’ the sole right of acting, performing or representing the same on a stage or public place, in addition to the sole right to print and publish such composition. The latter right must be considered as being conferred by the act of 1831, for although that act only speaks of a copyright for a ‘ book or books, map, chart, musical composition, print, cut or engraving,’ yet, under the language of the act of 1856, a 1 dramatic composition, designed or suited for public representation,’ must be regarded as embraced within the act of 1831.
      “A composition, in the sense in which that word is used in the act of 1856, is a written or literary work invented and set in order. A dramatic composition is such a work in which the narrative is not related, but is represented by dialogue and action. When a dramatic ■ composition is represented in dialogue and action by persons who represent it as real, by performing or going through with the various parts or characters assigned to them severally, the composition is acted, performed or represented; and if the representation is in public, it is a public representation. 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 it play, who goes through with a series of events on the stage without speaking—if such be his part in 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. A written work, consisting wholly of directions set in order for conveying the ideas of the author on a stage or public place by means of characters who represent the narrative wholly by action, is as much a dramatic composition designed or suited for public representation, as if the language or dialogue were used in it to convey some of the ideas.
      “The 1 railroad scene ’ in the plaintiff’s play is undoubtedly a dramatic composition. Those parts of it represented by motion or gesture, without language, are quite as much a dramatic composition as those parts of it which are represented by voice. This is true also of the 1 railroad scene ’ in f After Dark.’ Indeed, on an analysis of the two scenes in the two .plays, it is manifest that the most interesting and attractive dramatic effect in each is produced by what is done by movement and gesture, entirely irrespective •of anything that is spoken. The important dramatic effect in both plays is produced by the movements and gestures which are prescribed and set in order so as to be read, and which are contained within parentheses. The spoken words in each are of but trifling consequence to the progress of the series of events represented and communicated to the intelligence of the spectator by those parts of the scene which are directed to be represented by movement and gesture.
      “ The series of events so represented and communicated by movement and gesture alone to the intelligence of the spectator, according to the directions contained in parenthesis in the two plays in question here, embraces the confinement of A. in a receptacle from which there seems to be no feasible means of egress; a railroad track with the body of B. placed across it in such manner as to involve the apparently certain destruction of his life by a passing train; the appearance of A. at an opening in the receptacle, from which A. can see the body of B.; audible indications that the train is approaching; successful efforts by A., from with the receptable, by means of an implement found within it, to obtain egress from it upon the track, and the moving of the body of B. by A. from the impending danger, a mo- t. ment before the train rushes by.
      “ In both of the plays the idea is conveyed that B. is placed intentionally on the track with the purpose of having him killed. Such idea is in tire plaintiff’s play conveyed by the joint medium of language and movements which are the result of prescribed directions, while in Boucieault’s play it is conveyed solely by language uttered. The action, the narrative, tiie dramatic effect and impression, and the series of events in the two scenes are identical. Both are dramatic compositions, designed or suited for public representations.
      “It is true that in one A. is a woman, and in the other A. is a man; that in one A. is confined in a surface railroad station shed, and in the other A. is confined in a cellar abutting on the track; that in one A. uses an axe, and in the other A. uses an iron bar; that in one A. breaks down a door, and in the other A. enlarges a circular hole; that in one B. is conscious, and is fastened to the rails by a rope, and in the other B. is insensible, and is not fastened; and that in one there is a good deal of dialogue during the scene, and in the other only a soliloquy by A., and no dialogue. But the two scenes are identical in substance as written dramatic compositions in the particulars in which the plaintiff alleges that what he has invented and set in order in the scene has been appropriated by Boucicault.”
      The learned judge then cited at length the views expressed by Lord Lyndhubst, in the case of D’Almaine v. Boosey, 1 Younge & C. (Exch.), 288 (a case of musical copyright), which was cited and approved by Mr. Justice Nelson, in the case of Jollie v. Jaques, 1 Match/., C18-625. Approving these views as being eminently sound and just, and applicable to the case of a dramatic composition designed for public representation, his honor proceeded as follows:—
      “ Such a composition when represented excites emotions and imparts impressions, not merely through the medium of the ear, as music does, but through the medium of the eye as well as the ear. Movement, gesture, and facial expression, which address the eye only, are as much a part of the dramatic composition as is the spoken language, which addresses the ear only; and that part of the written composition which gives direction for the movement and gesture is as much a part of the composition, and protected by the copyright, as is the language prescribed to be uttered by the characters. And this is entirely irrespective of the set of the stage, or of the machinery or mechanical appliances, or of what is called in the language of the stage, scenery, or the work of the scene painter.
      “Now, in consonance with the principles laid down by Lord Lyndhurst, the plaintiff is as much entitled to protection in respect of a substantial and material original part of bis ‘ railroad scene as he is in respect of the whole. Under the act of 1856, construed in connection with the act of 1831, he is entitled to be protected against piracy, in whole or in part, by representation, as well as by printing, publishing and vending. Although the act of 1831, in regard to printing, publishing and vending, uses the words ' in whole or in part,’ and the act of 1856, in regard to representing, does not use those words, yet'the act of 1856, by referring, as it does, to the right conferred by the act of 1831 as the ‘ sole right to print and publish’ the copyrighted composition, when such right is on the face of the act of.1831, the sole right to print and publish ' in whole or in part,’ and by then conferring ' the sole right also to act, perform or represent the same, or cause it to be acted, performed or represented on any stage or public place,’ must he held to confer the right to represent in whole or in part.
      *****
      “ As, in the case of the musical composition, the air is the invention of the author, and a piracy is committed if that in which the whole meritorious part of the invention consists is incorporated in another work, without any material alteration in sequence of bars, so in the case of the dramatic composition, designed or suited for representation, the series of events directed in writing by the author in any particular scene is his invention, and a piracy is committed if that in which the whole merit of the scene consists is incorporated in another work without any material alteration in the constituent parts of the series of events, or in the sequence of the events in the series. The adaptation of such series of events to different characters, who use different language from the characters and language in the first play, is like the adaptation of the .musical air to a different instrument, or the addition to jt of variations or of an accompaniment. The original subject of invention—that which required genius to construct it and set it in order—remains 1 the same in the adaptation. A mere mechanic in dramatic composition can make such adaptation, and it is a piracy if the appropriated series of events when represented on the stage, although performed by new and different! characters using different language, is recognized by the spectator through any of the senses to which the representation is addressed, as conveying substantially the same impression to, and exciting the same emotions in the mind, in the same sequence or order.
      *****
      “ The true test as to whether there is piracy or not is to ascertain whether there is a servile or evasive imitation of the plaintiff’s work, or whether there is a bona fide original compilation, made up from common materials and common sources, with resemblances which are merely accidental, or result from the nature of the subject (Emerson v. Davies, 3 Story O. Gt., 70S, 793). Nothing that has been adduced on the part of the defendants affects the validity of the plaintiff’s copyright on the question of the originality and novelty of the ' railroad scene’ in his play. The sale of Boucicault’s play to other persons, with a view to its public representation, makes the seller a participant in causing the play to be publicly represented.
      “ An injunction must, therefore, issue, restraining the defendants from the public performance or representation, and from the sale for public performance or representation, of the ' railroad scene ’ in the play of After Dark,’ or of any scene in substance the same as the ' railroad scene’ in either of the two plays, as such scene is herein defined.”
     
      
       Reported in 5 Rob., 38. Some other points decided in that case ate reported in 2 Abb. Pr. N. S., 341.
     