Section V Registration
Before Action.—Before an owner of copyright sues for infringement his book must be registered at Stationers’ Hall.226 The omission to register does not affect the copyright in a book, but it is a condition precedent to the right to sue in respect of the infringement thereof.227 At one time it was thought that registration was only a condition precedent to an action for the particular remedies given by the statute, and that whether registration was effected or not the common law right of action for damages lay.228 This, however, is not law. Registration is a condition precedent to any right of action for infringement of copyright. If an action is brought without proper registration, that action must fail; but a correct entry may then be made and a fresh action commenced.229
No registration is necessary to maintain an action for the infringement of performing rights in a book which is a dramatic or musical work.230
Registration need not be made before infringement: it may be effected at any time before the writ is issued.231 In one case it was held a good registration when entry was made on the same day, but a few hours before the issue of the writ.232 In Hole v. Bradbury,233 Fry, J., held that registration after infringement did not entitle the plaintiff to delivery up of copies for his own use under the 23rd section of the Act of 1842, but that under its general jurisdiction the Court had power to order delivery up for destruction. In Isaacs v. Fiddemann,234 Jessel, M. R., thought that even although infringement was before registration the plaintiff was entitled to have delivery up for his own benefit, and that the 23rd section applied to such a case. Which is the correct view it is difficult to say. The argument of Fry, J., in support of his view is elaborate and appears sound, whereas Jessel, M. R., seems to have gone more on the ground of convenience.
Registration must be effected after the publication of the book.235 In several cases an attempt has been made to secure a monopoly in a title by registration before the book was published or even written.236 Such registration is entirely inoperative to secure a monopoly in the title or the right to sue in respect of the copyright in the book when published. Registration does not give the plaintiff any right (except perhaps as to delivery of copies) which he would not equally have had without registration.237 All registration does is to perfect the right and give a title to sue on it.
It must be remembered that it is the book which is to be registered and not the copyright. It is common but erroneous to talk of “registering copyright.” The distinction was pointed out in Trade Auxiliary v. Middlesborough.238 The three several proprietors of three periodicals had employed and paid a contributor under section 18 on the terms that the matter contributed should belong to these three proprietors. The matter appeared in each of the three newspapers and each registered his own newspaper in his own name. It was argued that the registration was bad, since they should have been registered as joint proprietors, but the Court of Appeal held that the registration was good, since each had registered his “book,” and section 19 was literally complied with.
A newspaper is a sheet of letterpress within the Act and must be registered.239 In one case240 Malins, V. C., protected a newspaper which was not registered, but that case has been expressly overruled241 and is clearly unsound. No registration is necessary other than that required by the Act of 1842. In Cate v. Devon242 it was contended that a newspaper would not be protected unless it had been registered under the Newspaper Libel Act, 1881. This contention was held erroneous, and registration under the Act of 1842 was alone required. Similarly it is not a good defence to an action for infringement that the publisher’s name and address is not printed on the first or last page of a book as required by 2 & 3 Vict. c. 12.243
The Requisite Entry.—Registration is made in the Book of Registry which the Act enacts244 shall be kept at the Hall of the Stationers’ Company. The fee for registration is five shillings. The Book of Registry must at all convenient times be open to the inspection of any person on payment of one shilling for every entry searched for or inspected. This, however, does not entitle any one to make a copy of an entry; but any one may demand a certified copy of an entry from the keeper of the Registry on payment of five shillings.
The proprietor of the copyright must register in the Book of Registry:245
i. The title.
ii. The time of first publication.
iii. The name and place of abode of the publisher.
iv. The name and place of abode of the proprietor.
In the case of an encyclopædia, review, magazine, periodical work, or other work published in a series of books or parts, the publisher must register:246
i. The title.
ii. The time of first publication of the first part.
iii. The name and place of abode of the proprietor.
iv. The name and place of abode of the publisher if different from the proprietor.
The Actual Title.—This must be registered: a description of the book will not be sufficient, even although accurate. Thus in Harris v. Smart247 the plaintiffs’ book was intituled “Illustrated Catalogue and Price List,” and they registered it as “Illustrated Book of Shop-fittings.” The Court of Appeal, reversing the decision of Mathew and Grantham, JJ., held that the objection to the registration was fatal. When there is a clear and distinct title, that title they held must be registered. It might be different if a book had no title; perhaps such a book could not be registered at all; but probably a description of the book, stating that it had no title, would be sufficient.248 In Collingridge v. Emmott249 the plaintiff’s newspaper was intituled “Warehousemen and Drapers’ Trade Journal and Review of the Textile Fabric Manufacturers”; but it was registered as “Warehousemen and Drapers’ Trade Journal: Failures and Arrangements.” Kay, J., thought that the discrepancy was fatal to the registration.
It has been questioned whether in the case of a volume, a considerable part of which, being old matter, is not entitled to copyright, and which is published under one comprehensive title, there must not be some indication on the book itself or on the register that the owner does not claim copyright in the whole work. The point has never been definitely decided. It has been held that one who adapts new words and music to an old air and describes himself proprietor of the whole composition is entitled to protection;250 but the question raised in these cases was whether the author was entitled to copyright at all unless he could show that the whole was original. It should always be remembered in questions of this kind that the purpose of registration is not, as has frequently been suggested in argument, to notify to an intending copyist what he may copy and what he may not. In Cate v. Devon251 the plaintiffs had published a “Commercial Compendium,” containing lists of bankruptcies and bills of sale. They reprinted several copies of it under another title, viz. “The London Association for the Protection of Trade,” and it was issued “privately and confidentially” to that association. The defendants copied matter from the latter issue and pleaded that it was unregistered, and therefore that they were entitled to copy it. North, J., held that the act of the defendants was an infringement of copyright in the “Commercial Compendium,” which was registered under that title. In his judgment he said:
“It is not intended that there should always be complete registration of the publication in which there is copyright in order that persons may know what they may legitimately copy and what they cannot copy. The Act itself contains provisions which make that clear. It is well known that registration is only necessary as a condition precedent to suing, and the almost universal practice on the part of large publishers notoriously is that they do not register until just on the eve of taking some proceeding. Then they take care to register their copyright and sue upon it. I think, therefore, that the contention that the defendants have not been warned by registration of the title under which the document appears is one which cannot be entertained.”252
The Time of First Publication.—This must be exactly entered to the day of the month. In Low v. Routledge253 an entry of “23rd May 1864” was held to be bad when the actual publication was on the 25th of May 1864.254 Under the International Copyright Act, 1844, an entry of the year only was held to be fatal,255 and under the Copyright Act of 1842 it has been held in two cases that an entry of the month only is bad.256 When a subsequent edition of a book is published, in so far as it is a reprint of the first edition, it will not be protected unless the first edition and the date of the first publication thereof is entered on the register;257 in so far as it consists of new matter there must be an entry bearing the date of the publication of the edition in which such new matter was first published;258 but the previous editions and the date of their respective publications do not require to be entered in order to protect the new matter,259 and subsequent editions do not require to be entered in order to protect old matter.260 Where a book has been revised and altered as each new edition has come out, every edition should be entered separately in the register, with the date of the publication of such edition. When a story, or article, or serial story, or a series of articles is published in a magazine or other periodical, the proprietor of the magazine need only register the first number of the magazine and the date of the publication thereof in order to entitle him to sue.261 If, however, the action is at the instance of the author of a contribution to a collective work against third parties, the proper registration would be of the story or article only with the date of the first publication in the collective work of such story or article, or if serial, of the first part thereof.262 Against the proprietor, for publishing separately without permission, the author does not require to be registered, as the right sued on is not one of copyright but presumably of implied contract.263 If the owner of the periodical has acquired the entire copyright in a story or article, he can sue on a registration either of the first number of the magazine or of the first part of the story or article.264
The Name and Place of Abode of the Publisher.—The publisher to be entered is the first publisher of the book.265 No subsequent publisher, unless of a revised edition, need be entered on the register.266 If the publishers are a firm it is sufficient to enter their firm name, such as Newby & Co.; the individual names of the members of the firm need not be entered.267 A publisher’s ordinary place of business describes sufficiently his “place of abode”: his private residential address need not be entered.268
The Name and Place of Abode of the Proprietor.—The proprietor to be entered is the proprietor at the time of registration, and it is unnecessary to trace his title from the first proprietor.269 The joinder of the unregistered proprietor as co-plaintiff with a person who has been erroneously registered, or who, being rightly registered, is no longer proprietor, will not render an action for infringement of copyright maintainable.270 It is not sufficient to register a mere agent or nominee of the proprietor.271 The registered proprietor, however, if legal owner, may sue as trustee for the equitable owner of the copyright.272 If the plaintiff in an action is the assignee of a former proprietor already registered, either the assignment must have been by entry in the register, or the assignment, if made otherwise, must be entered. In every case the plaintiff, either as proprietor at the date of registration or as his assignee, must appear on the face of the register.273 It is probably not necessary to register every mesne assignment from the proprietor originally registered to the plaintiff.274 When the original proprietor is registered, and the assignee from him is subsequently registered, it is necessary that both entries should be correct, in order to entitle the assignee to sue.275 If the proprietor has no fixed abode in the United Kingdom, an address in the United Kingdom through which he can be conveniently communicated with will probably be a sufficient compliance with the statute.276
If there is an error in any of the particulars required to be entered in the register it is fatal to the success of an action, even although caused by neglect or carelessness on the part of one of the officials at Stationers’ Hall.277 If the necessary particulars are entered it is immaterial that superfluous matter is also entered.278
Certificate of Registration.—The officer appointed by the Stationers’ Company for the purposes of registration under the Copyright Acts must, whenever reasonably required, give a copy of any entry in the Book of Registry, certified under his hand and impressed with the stamp of the Stationers’ Company, to any person on payment of five shillings, and such copies are to be received in evidence in all Courts, and are primâ facie proof of the proprietorship or assignment of copyright or licence, but subject to be rebutted by other evidence.279 Registration does not, however, give a title against the whole world except the true owner.280
False Entries.—If any person wilfully makes or causes to be made any false entry in the Registry Book of the Stationers’ Company, or wilfully produces in evidence any paper falsely purporting to be a copy of any entry in such book, he will be guilty of an indictable misdemeanour.281
Rectification of Register.—If any person “deems himself aggrieved” by any entry in the Registry Book, he may apply by motion to the King’s Bench Division for an order that such entry may be expunged or varied.282 An order to expunge will not be made at the trial of an action:283 it must be applied for by motion in accordance with section 14, unless, perhaps, it is specifically claimed in the statement of claim in the action. There is probably no appeal from an order to expunge.284 If a wrong entry has been made in the Book of Registry, the proprietor of the copyright in the book so erroneously entered is, even although he has by mistake made the wrong entry himself, a person aggrieved within the meaning of the statute, and can apply to the Court for an order to vary such entry.285 An order to expunge or vary will not be made without definite proof that the existing entry is erroneous, and that the proposed entry in lieu thereof is correct.286 By the words “deem himself aggrieved” the legislature did not mean that any person who said he was aggrieved could apply: the applicant must show to the Court that he has a right to consider himself aggrieved.287 When the copyright in a book is in dispute either party claiming the right is a party aggrieved.288 If a non-copyright book is entered on the register, probably any one who wished to copy it would be a party aggrieved;289 but it is not open to any one to make application to the Court on the ground of technical flaws in a registration.290 The applicant, unless he claims the copyright, must be able to show a substantial defect on the merits of the registered proprietor’s title.291
When once an entry on the register has been struck out, the Court has probably no power to restore it.292