
    Orlando D. Hastings et al., App’lts, v. The Giles Lithographic Co., Resp’t.
    
      (Supreme Court, General Term, First Department,
    
    
      Filed January 28, 1889.)
    
    1. Copyright—Plaintiff in action for slandering title must succeed ON HIS OWN TITLE.
    The plaintiff to succeed in an action for slandering his title to a copyright, must do so on the strength of his own asserted title, and not on any infirmity of the defendants, arising from kindred violations of the law of copyright.
    2. Same—Supposed owner has right to issue notices warning against INFRINGEMENT.
    A party believing himself to have the exclusive use of a copyright, has the right to issue notices warning others against an invasion of his rights.
    Appeal from a judgment in favor of the defendant dismissing the complaint upon the merits.
    The 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 Fuller & Warren Co., of Chicago, sent to them in February, 1885, as sample cards of their work, and had stated a price for them. The Fuller & Warren Co. 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, Fridenstein, Hardy & Go. and West Side Tailoring Co.
    
      On April 23, the said Clarke wrote to the White Sewing Machine Co., 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 Co. 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.
    New York, May 20, 1885.
    
      Messrs. Hastings & Todd:
    
    Gentlemen—We understand that you are using and disposing of an advertising card containing the picture of a little boy in a red fez cap, known 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 Company, 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 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 cards 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, that the copyrights of the Hargreaves Manufacturing Company were valid, that de-* fendants 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 their counsel,, gave the notice complained of to plaintiff’s 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 defendant’s licenses; 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-, twenty-four hours.
    Defendant’s attorneys replied, suggesting an amicable-arrangement of the matter.
    Plaintiff’s 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 defendant’s 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 Co without'the copyright notice required by the U. S. ¡statutes imprinted thereon, and that they had sent two sample cards to the Warren & Fuller Company in February, 1885, without such copyright notice thereon.
    All this the defendants 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.
    No evidence was introduced to show that the Hargreaves Manufacturing Company did not own copyrights of the two pictures “ Alberta ” and “Little Turk.”
    Nor was any evidence introduced to establish that the ■defendants did not hold an exclusive license from the Hargreaves Mfg. Co. to reproduce these pictures for advertising purposes; in fact the plaintiff, Hastings, said that he ¡presumed the defendants had such a paper.
    No 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.
    
      F. B. Candler, for app’lts; John Frankenheimer, for resp’t.
   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; Kendal v. Stone, 5 N. Y., 14, 18; Hovey v. Rubber Tip Pencil Co., 57 id., 119; Celluloid Mfg. Co. v. Goodyear, 13 Blatch., 375; Burnett v. Tak, 45 L. T., 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. Rubber Tip 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 hable to an action.”

If the falsity of the settlement 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 he 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. D., 514; affirmed, 19 Ch. D., 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 idemnity in this action from the prior-improper infringment 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, U. S. R. 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 defendants’ 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 thé 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.

Van Brunt, Ch. J., and Daniels, J., concur.  