RICHARD BONG, Piff. in Err., v. ALFRED S. CAMPBELL ART COMPANY.

This is an action under the copyright statutes to recover penalties and forfeitures for the infringement of a copyright of a painting.

The complaint shows the following facts: Plaintiff in error (as he was plaintiff in the trial court, we shall refer to him hereafter as plaintiff, and to defendant in error as defendant) was a citizen and subject of the German Empire and resident of the city of Berlin, that nation being one which permits to citizens of the United States the benefit of copyright on substantially the same basis as its own citizens. It is a party to an international agreement which provides for reciprocity in the granting of copyright, by the terms of which agreement the United States may, at its pleasure, become a party, the existence of which condition has been determined by the President of the United States by proclamation duly made. 27 Stat. at L. 1021. The defendant is a New Jersey corporation doing business in New York under the laws of the latter state.

In 1899 one Daniel Hernandez painted and designed a painting called 'Dolce Far Niente,' he then being a citizen and subject of Spain, which nation permits the benefit of copyright to citizens of the United States on substantially the same basis as its own citizens, as has been determined by the proclamation of the President of the United States. 29 Stat. at L. 871. Prior to November 8, 1902, plaintiff became the sole proprietor of said painting by due assignment pursuant to law. About said date plaintiff applied for a copyright, in conformity with the laws of the United States respecting copyrights, before the publication of the painting or any copy thereof. Plaintiff inscribed, and has kept inscribed, upon a visible portion of the painting, the words 'Copyright by Rich. Bong.' and also upon every copy thereof. By reason of the premises, it is alleged, plaintiff became and was entitled, for the term of twenty-eight years, to the sold liberty of printing, reprinting, printing, publishing, and vending the painting. A violation of the copyright by defendant is alleged by printing, exposing for sale, and selling, copies of the painting under the name of 'Sunbeam,' by Hernandez, and that defendant has in its possession over 1,000 copies. By reason of the premises, it is alleged, and under § 4965 of the Revised Statutes of the United States, as amended by the act of March 2, 1895 [28 Stat. at L. 965, chap. 194, U. S. Comp. Stat. 1901, p. 3414], defendant has forfeited the plates on which the painting is copied and every sheet thereof copied or printed, and $10 for every copy of the same in its possession and by it sold or exposed for sale, not more, however, than $10,000, whereof one half shall go to plaintiff and the other half to the United States. Judgment of forfeiture is prayed.

Defendant snswered, admitting that it was a corporation, as alleged, and was doing business in New York. It denied, either absolutely or upon information and belief, all other allegations.

The court directed a verdict for the defendant, counsel for the plaintiff having stated in his opening, as it is admitted, that he would offer no evidence to establish the citizenship of Hernandez, and would not controvert the statement made by the defense that he was a citizen of Peru (it was alleged in the complaint that he was a citizen of Spain), as to which country the President had issued no copyright proclamation. It is also admitted that plaintiff never owned the 'physical painting.' There was introduced in evidence a conveyance of the right to enter the painting for copyright protection in America, and the exclusive right of reproduction in colors, and of engraving, etching, lithography in black and in colors. The right of photography and reproduction by all photographic monochrome processes was reserved.

The ruling of the circuit court, and that of the court of appeals sustaining it, were based on the ground that Hernandez, being a citizen of Peru, and not having the right of copyright in the United States, could convey no right to plaintiff. Plaintiff attacks this ruling, and contends that the act of March 3, 1891 [26 Stat. at L. 1106, chap. 565, U. S. Comp. Stat. 1901, p. 3406], 'confers copyright where the person applying for the same as proprietor or assign of the author or proprietor is a subject of a country with which we have copyright relations, whether the author be a subject of one of those countries or not.'

Whatever strength there is in the contention must turn upon the words of the statute conferring the copyright. Section 4952 of the Revised Statutes, as amended by the act of March 3, 1891 [26 Stat. at L. 1107, chap. 565, U. S. Comp. Stat. 1901, p. 3406] (1 U. S. Rev. Stat. Supp. 951), reads as follows:

'The author, inventor, designer, or proprietor of any book, map, chart, . . . painting . . . and the executors, administrators, or assigns of any such person, shall, upon complying with the provisions of this chapter, have the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the same,' etc.

Other sections prescribe the proceedings to be taken to secure copyright, and § 13 provides as follows: 'That this act shall only apply to a citizen or subject of a foreign state or nation when such foreign state or nation permits to citizens of the United States of America the benefit of copyright on substantially the same basis as its own citizens; or when such foreign state or nation is a party to an international agreement which provides for reciprocity in the granting of copyright, by the terms of which agreement the United States of America may, at its pleasure, become a party to such agreement. The existence of either of the conditions aforesaid shall be determined by the President of the United States by proclamation, made from time to time, as the purposes of this act may require.' 1 U. S. Rev. Stat. Supp. 954.

Plaintiff urges that he is 'the 'assign' of the author and proprietor of the painting . . . and being himself a 'citizen or subject of a foreign nation' with which we have copyright relations,' the condition of the statute is satisfied, and his copyright is valid, though Hernandez was not such citizen or subject. In other words, though the author of a painting has not the right to copyright, his assignee has if he is a citizen or subject of a foreign state with which we have copyright relations, these being, it is contended, the conditions expressed in § 13. Counsel's argument in support of this contention is able, but we are saved from a detailed consideration of it by the decision of this court in American Tobacco Co. v. Werckmeister, 207 U. S. 284, 52 L. ed. 208, 28 Sup. Ct. Rep. 72, 2 A. & E. Ann. Cas. 595. In that case we said that 'the purpose of the copyright law is not so much the protection and control of the visible thing as to secure a monopoly, having a limited time, of the right to publish the production, which is the result of the inventor's thought.' In considering who was entitled to such right under the statute, we defined the word 'assigns,' as used in the statute. We said: 'It seems clear that the word 'assigns,' in this section is not used as descriptive of the character of the estate which the 'author, inventor, designer, or proprietor' may acquire under the statute, for the 'assigns' of any such person, as well as the persons themselves, may, 'upon complying with the provisions of this chapter,' have the sole liberty of printing, publishing, and vending the same. This would seem to demonstrate the intention of Congress to vest in 'assigns,' before copyright, the same privilege of subsequently acquiring complete statutory copyright as the original author, inventor, designer, or proprietor,' and there was an explicit definition of the right transferred as follows: 'While it is true that the property in copyright in this country is the creation of statute, the nature and character of the property grows out of the recognition of the separate ownership of the right of copying from that which inheres in the mere physical control of the thing itself, and the statute must be read in the light of the intention of Congress to protect this intangible right as a reward of the inventive genius that has produced the work.' In other words, an assignee within the meaning of the statute is one who receives a transfer, not necessarily of the painting, but of the right to multiply copies of it. And such right does not depend alone upon the statute, as contended by plaintiff, but is a right derived from the painter and secured by the statute to the assignee of the painter's right. Of this the opinion leaves no doubt, for it is further said: 'We think every consideration of the nature of the property and the things to be accomplished supports the conclusion that this statute means to give to the assigns of the original owner of the right to copyright an article [italics ours] the right to take out the copyright secured by the statute independently of the ownership of the article itself.' The same idea was repeated when the court came to consider whether the exhibition of the painting, which was the subject-matter of the case, in the Royal Gallery, constituted a general publication which deprived the painter, as the owner of the copyright, of the benefit of the statutory provision. It was said: 'Considering this feature of the case, it is well to remember that the property of the author or painter in his intellectual creation is absolute until he voluntarily parts with the same.' And the painter had the right of copyright, he being a subject of Great Britain, that country having copyright relations with the United States. His assignee, Werckmeister, was also a citizen of a country having copyright relations with us. But it was the right of the painter which was made prominent in the case and determined its decision.

It was not an abstract right the court passed on, one that arose simply from ownership of the painting. It was the right given by the statute, and which, when transferred, constituted the person to whom it was transferred an assignee under the statute and of the rights which the statute conferred on the assignor. 'It is the physical thing created, or the right of printing, publishing, copying, etc., which is within the statutory protection.' It is this right of multiplication of copies that is asserted in the case at bar, and it is not necessary to consider what right plaintiff might have had under the common law 'before he sought his Federal copyright and published the painting.' See White-Smith Music Pub. Co. v. Apollo Co. 209 U. S. 1, 52 L. ed. 655, 28 Sup. Ct. Rep. 319.

It is next contended that Hernandez, as a subject of Peru, was entitled to a statutory copyright in his own right, because, as it is further contended, Peru belongs to the Montevideo International Union. This contention is based on the words of § 13, supra, which gives the right of copyright to a citizen or subject of a foreign state or nation when such state or nation 'is a party to an international agreement which provides for reciprocity in the granting of copyright, by the terms fof which agreement the United States of America may, at its pleasure, become a party to such agreement.' If this were all there were in the statute, the contention of the plaintiff might have some foundation. The statute, however, provides that the existence of such condition 'shall be determined by the President of the United States by proclamation, made from time to time, as the purposes' of the 'act may require.' It is insisted, however, that this provision is directory, and a right is conferred independent of the action of the President, his proclamation being only a convenient mode of proving the fact. We cannot concur in this view, nor do the cases cited by plaintiff sustain it. In Morrill v. Jones, 106 U. S. 466, 27 L. ed. 267, 1 Sup. Ct. Rep. 423; Campbell v. United States, 107 U. S. 407, 27 L. ed. 592, 2 Sup. Ct. Rep. 759; Williamson v. United States, 207 U. S. 425, 52 L. ed. 278, 28 Sup. Ct. Rep. 163, this court decided that where the Secretary of the Treasury or Secretary of the Interior is authorized to make regulations in aid of the law, he cannot make regulations which defeat the law. In Buttfield v. Stranahan, 192 U. S. 470, 48 L. ed. 525, 24 Sup. Ct. Rep. 349, a regulation of the Secretary of the Treasury fixed the primary standard of imported tea, and was sustained as an 'executive duty to effectuate the legislative policy declared in the statute.'

It is admitted that the decision of the state department is adverse to the contention, and it is asserted by defendant, and not denied by plaintiff, that the Librarian of Congress has always construed the statutes as denying to citizens of Peru copyright protection. We think, besides, the statute is clear, and makes the President's proclamation a condition of the right. And there was reason for it. The statute contemplated a reciprocity of rights; and what officer is better able to determine the conditions upon which they might depend than the President?

On the record, we think there was no error in directing a verdict on the opening statement of counsel. We agree, however, with plaintiff, that it is better to let a case be developed by evidence. In Hoffman House v. Foote, 172 N. Y. 348, 65 N. E. 169, it was pertinently said: 'The practice of disposing of cases upon the mere opening of counsel is generally a very unsafe method of deciding controversies where there is or was anything to decide.'

Judgment affirmed.