Heine v. Appleton

11 F. Cas. 1031, 4 Blatchf. 125, 1857 U.S. App. LEXIS 590

• Court: U.S. Circuit Court for the District of Southern New York
• Decided: December 24, 1857
• Status: Published

Opinion

INGEItSOLL, District Judge.

[The view I take of this case renders it' unnecessary to consider it in some of the aspects in which it has been presented. It can be satisfactorily disposed of by considering two questions only: First. Was the plaintiff, at the time he obtained a certificate of copyright, entitled to the exclusive right to the prints and illustrations in question, as author and proprietor? Second. Admitting that he was, are there any faots in the case, which should restrain the court from granting the injunction prayed for?

That the plaintiff made the original sketches and drawings of the prints and illustrations in question, admits of no doubt. But, notwithstanding this, he was not an author or proprietor of the prints and illustrations, in such a sense as to be capable of acquiring an exclusive right to the same, at the time the certificate of copyright was granted. This appears very clear by the affidavits introduced on the part of the defendants. Previous to the sailing of the expedition to Japan, the plaintiff applied to Commodore Perry, to be employed as an artist, and to accompany the expedition, as such. He was informed by the commodore, that congress had made no provision for an artistic or scientific department, and that he could not be employed. He renewed his application, and finally the commodore consented to receive him in the capacity of a master’s mate, on condition that he should sign the shipping articles as such master’s mate, and do whatever duties might be required of him, and be subject to all the rules and regulations of the squadron. When the commodore consented that the plaintiff might join the expedition, he informed him that all the sketches and drawings which should be made by any one attached to the expedition were to be the exclusive property of the government of the United States, and that no one could appropriate to his own use any sketch or drawing that might be made. To this the plaintiff gave his assent, and he joined the expedition as master’s mate, and received pay as such, with the distinct understanding that the sketches and drawings which he might make were to be the exclusive property of the government of the United States. Although the plaintiff was shipped as master’s mate, his chief duty was to make sketches and drawings for the government. Upon the return of the expedition to this country, the. sketches and drawings which the plaintiff made, were, with his assent, incorporated in the report made by the commodore to the secretary of the navy, and were placed at the disposal of congress; and congress, long before the certificate of copyright was obtained by the plaintiff, ordered a large number of copies of the report, containing the prints and engravings made from the original sketches and drawings, to be published for distribution. Under these circumstances, the plaintiff was not such author of the prints and engravings in question, as to be able to acquire an exclusive right to the same as author or proprietor, Dy virtue of the certificate of copyright which he obtained. The sketches and drawings were made for the government, to be at their disposal; and congress, by ordering the report, which contained those sketches and drawings, to be published for the benefit of the public at large, has thereby given them to the public.

But, even if the plaintiff had an exclusive right to the prints and engravings in question, by virtue of the certificate of copyright which he obtained, there are certain facts which have appeared in evidence, which would restrain the court from granting the preliminary injunction now asked for. The certificate of copyright was obtained by the plaintiff early in the summer of the year 1856. The several works of the defendants, now sought to be enjoined, were published by them in the summer of the year 1856, and soon after the plaintiff obtained his certificate of copyright. One of these works is a quartp edition of the Expedition to Japan, the same as published by order of congress. Another is an octavo edition of the same work. As early as January, 1856, the plaintiff met, by appointment, the Rev. Dr. Hawks, who -wrote the narrative of the Expedition to Japan, for the purpose of selecting sketches to appear in the octavo edition of the work, then about to be published by the defendants. No mention was made by the plaintiff of any claim to copyright on his part; and it was understood by Dr. Hawks, that any of the drawings which should be selected were to be used for the octavo edition of the defendants’ work. At a subsequent period, the plaintiff was employed by the defendants, to reduce several drawings from the size of the quarto edition to that of the octavo edition, for which service he was to be paid by the defendants, and there is no complaint that he never was paid. The plaintiff thus aided in the publication of some of the works of the defendants. When he thus aided in their publication, he made no claim of copyright. It would be inequitable now to permit him, when he has been paid to aid in their publication and sale, and has thus aided in their publication, with a view to their sale, to stop their sale, even if he had a valid copyright in them. By aiding in their publication, he agreed to their publication, and, by agreeing that they might be published, he agreed that they might be sold; and he cannot now, with success, ask that the defendants may be restrained from doing that which he has agreed they may do. The motion for a preliminary injunction must, therefore, be denied.