Chapter IV — Infringement of Copyright in Books
Section I Prohibited Acts, and Remedies
Copyright is defined by the Copyright Act, 1842, as “the sole and exclusive liberty of printing or otherwise multiplying copies.” Any invasion of this monopoly is an infringement of copyright. Besides infringement of copyright, i.e. illegal copying, the Act makes it an offence to deal in certain ways with unlawful copies. The offences against copyright and the owner’s remedies may be conveniently summarised as follows:
For the following offences:423
i. Piratical copying.
ii. Importing for sale or hire unlawfully printed books.
iii. Selling or hiring, or having in possession for sale or hire, unlawfully printed books, knowing the same to be unlawfully printed.424
iv. Causing any of the above acts to be done.
The remedies425 are an action in a Court of Record for:
1. Damages and account of profits.
2. Delivery up of copies.
3. Injunction.
For the following offences:426
v. Importing without the consent of the proprietor a foreign copy or copies,427 i. e. printed outside the British dominion.
vi. Selling or hiring or having in possession for sale or hire foreign copies knowing them to be unlawfully imported.428
The remedies are:
1. Seizure and destruction by any officer of Customs,429 and on conviction before two justices of the peace.
2. £10 for every offence.430
3. Double the value of every copy dealt with,431 and
An action in the High Court for
4. An injunction.432
Causing to be Printed.—The prohibition in section 15 is against “printing, or causing to be printed.” Thus the author, publisher,433 and printer of a piratical book are all equally liable, and it is no defence for the publisher, who has employed the printer, or for the printer to say he was acting merely as an innocent agent.434 There may sometimes be difficulty in determining whether a person who, to a certain extent, is interested in the publication has yet caused it to be printed within the meaning of the section. Thus, in the case of Kelly’s Directories v. Gavin and Lloyds,435 the plaintiff had published a directory of merchants and shipping statistics. The defendant Gavin prepared a similar directory, and agreed with the defendants Lloyds for its publication. Lloyds were to print part of it and allow the use of their name in the title and receive some share in the profits. The book was accordingly published under the title of “Lloyds’ Diary for Merchants, &c.,” and bore on the title-page the statement “printed at Lloyds, Royal Exchange, London.” Part of the book was held to be an infringement of the plaintiff’s copyright; but it was proved on the trial that that part was not printed by Lloyds, but by a printer employed by Gavin, and that Lloyds had no knowledge of its piratical nature. Byrne, J., found that Lloyds were not partners in the undertaking with Gavin, and that the printing of the piratical portion was not done by the printer as their agent. He therefore held that Lloyds had not “caused” that portion to be printed within the meaning of the section, and dismissed the action as against Lloyds, but without costs, as they had allowed their name to appear on the title-page as printers.
Damages.—An action for damages lies, irrespectively of sections 15 or 23, for any infringement of copyright as defined by section 2.436 The damages are damages as for conversion or detinue,437 and may be matter for inquiry before a master or official referee, but frequently are assessed by the judge on a rough estimate.
Account of Profits.—An order for an account of profits is an equitable remedy. The defendant is held to have been in possession of the plaintiff’s property, and must account for the profits thereof.438 The account will be for an account of net profits.439 On an interlocutory application for an injunction the defendant may undertake to keep an account of profits until trial; but, strictly, the right to an account depends on the right to an injunction, and will not be ordered when the case for an injunction fails.440 If the defendant’s work is not wholly piratical, the profits must be apportioned according to the relative value of the piratical with the non-piratical matter. The defendant’s profits may not entirely recoup the plaintiff for the damage he has suffered, and in that event he is entitled to an inquiry into damages to supplement his compensation.441
Injunction.—This is also an equitable remedy. It is not specially provided for in the Copyright Act, but being the ancillary remedy in equity for the protection of legal rights, it will be granted or withheld according to the discretion of the Courts in all cases of infringement or other offences against the Act.442
An interim injunction is usually granted on motion before trial where the plaintiff shows a primâ facie case on affidavit. In doubtful cases weight will be given to the consideration which side is more likely to suffer from an erroneous judgment.443 The Court will consider the balance of convenience on the one side and the other.444 The reason for granting an interim injunction is that a continuing infringement might cause damage for which it would be difficult or impossible to assess an adequate money compensation. If the taking is of an inconsiderable part, an interim injunction might not be given, although an injunction might go at the hearing. In urgent cases an interim injunction may be granted ex parte. In all interim injunctions the plaintiff is, as a rule, required to undertake to give compensation to the defendant if on trial he fails to establish his case.445 When such an undertaking is given the defendant is, if he succeed in his defence, entitled to an inquiry as to the damage sustained on account of the interim injunction against him.446 When there has been undue delay in bringing an action, or where the conduct of the plaintiff has been such as to induce the defendant to believe that his conduct would not be objected to, an interim injunction will probably be refused.447 A mere expression of opinion by the plaintiff that it would be legal to make a certain use of his work is not a sufficient ground for refusing an injunction if in point of law the use made by the defendant is illegal.448 “Copyright is not to be lost by the mere expression of opinion.”449 At the hearing of the action a perpetual injunction will be granted on the plaintiff proving his title and infringement. Delay or acquiescence not amounting to fraud will not prevent an injunction going at the hearing when the plaintiff proves his right;450 “for at the hearing of the cause it is the duty of the Court to decide upon the rights of the parties, and the dismissal of the bill upon the ground of acquiescence amounts to a decision that a right which has once existed is absolutely and for ever lost.”451 When an infringement has been shown the Court will not wait until it can ascertain distinctly what parts have been pirated. It will grant an injunction in general terms restraining the defendant, his agents, servants, or workmen from further printing, publishing, selling, or otherwise disposing of any copy or copies of the defendant’s book containing any passage or passages copied, taken, or colourably altered from the plaintiff’s book.452 If it appears that the piratical parts of the defendant’s book can be distinguished from that which is innocent, this will be done in the injunction.453 For a form of injunction against a servant restraining him from using blocks and materials obtained while in the plaintiff’s employment, see Lamb v. Evans.454 An injunction will be granted without any inquiry as to actual damages;455 but there must be probability of damage. In Borthwick v. Evening Post,456 Cotton, L. J., said:
“In my opinion, in order to justify the Court in granting an injunction, we ought to be satisfied that there probably will be injury to the pockets of the plaintiff... an injunction is an equitable remedy, and ought not to be granted unless the Court is satisfied that there is damage to the plaintiff—probable damage, not necessarily damage already suffered—as the result of the defendant’s conduct.”457
Quære whether an injunction will be granted to protect the future numbers of a periodical. In Cate v. Devon and Exeter Constitutional Newspaper Company,458 North, J., in granting an injunction to restrain a systematic infringement of a periodical, said:
“It is clear that an injunction can only be granted in respect of matters in regard to which the plaintiffs now have the copyright and a present right to sue; they cannot have any protection by injunction to restrain the defendants from publishing hereafter any future entries with respect to which the plaintiffs may possibly... acquire a copyright,... but as to which they clearly cannot at this moment have any copyright.”459
In another case, however, where a single illustration had been taken from Punch, Kekewich, J., said he saw no objection to the injunction extending to the protection of the contents of future numbers of Punch, and granted a perpetual injunction accordingly against the Ludgate Monthly.460 An injunction will not be granted when it is difficult or impossible to enforce it,461 for instance, when the defendant can readily reprint the same matter, compiling it from original sources.462 The piracy proved may be so inconsiderable, and so little likely to injure the plaintiff, that the Court may decline to interfere by injunction.463
Delivery up of Copies.—All copies of any books wherein there is copyright and of which entry has been made in the Registry Book and which are unlawfully printed or imported, are deemed to be the property of the registered proprietor of such copyright, and he is entitled after demand in writing to sue for the same in detinue and trover.464
This right to the delivery up of pirated copies for the benefit of the proprietor of the copyright is purely statutory. Under the Acts of Anne and George III. the proprietor on delivery up was enjoined to damask and make waste paper of the copies.465 Under the Act of Victoria the proprietor for the first time is entitled to recover such copies for his own use. It has been doubted whether there was any right to delivery up at common law,466 but the bulk of authority is in favour of the view that there was,467 although the delivery up was for destruction only.468 It is a doubtful point whether section 23 applies to unlawful copies made before registration of the plaintiff’s title. Fry, L. J., held that it did not,469 and therefore in the case of such copies ordered delivery up for destruction as a common law remedy, but refused the statutory remedy of delivery up for the plaintiff’s benefit. Jessel, M. R., however, differed from this view,470 and thought that the 23rd section applied to unlawful copies made before the plaintiff’s title was registered. It must also be considered doubtful whether section 23 applies where the defendant’s book is not merely a reprint of the plaintiff’s. In an Irish case O’Brien, J., said:
“It would be difficult to maintain that under the 23rd section the proprietor of the copyright in a book would acquire the property of all copies of another book which contained printed therein a few pages or passages of his book.”471
But, whether or not in such a case the plaintiff would be entitled under the section to extraction and delivery up for his benefit of the pirated parts, he is under the general jurisdiction of the Court entitled to delivery up for cancellation.472 In Warne v. Seebohm473 the order was that the defendant should first state upon oath what copies of the work exist; secondly, extract from those copies which are in his possession or power and deliver up to the plaintiffs for cancellation all passages copied, taken, or colourably imitated from the plaintiffs’ book; thirdly, produce to the plaintiffs, if required by them for examination, the copies after the pirated passages have been extracted.474 Quære whether the Court would order delivery up in an action to which the person who owned the books and paper and at whose expense the printing was executed was not a party.475
Customs Act.—The Customs Laws Consolidation Act, 1876,476 provides for the seizure of foreign books, and in this respect is somewhat inconsistent with section 17 of the Copyright Act. Section 42 of the Customs Act prohibits the importation of books “first composed or written or printed in the United Kingdom and printed or reprinted in any other country, as to which the proprietor of such copyright or his agent shall have given to the Commissioners of Customs a notice in writing duly declared477 that such copyright subsists, such notice also stating when such copyright will expire.” On reference to section 17 of the Copyright Act it will be noticed that the prohibition there is as to books “reprinted in any country or place outside the British dominions.” Quære does the provision in the Customs Act enlarge the protection by the words “printed or reprinted in any other country”? Does this include the colonies? Again it will be noticed that the Copyright Act has no condition as to notice to the Commissioners of Customs. Quære is the notice required by the Customs Act a condition precedent to all protection from unlawful importation, and in this respect does the Customs Act limit the provisions of the Copyright Act, or is the Customs Act merely directory to the Custom-house officials? To be on the safe side the notice should always be given. Section 44 of the Customs Act provides for the keeping of a list of books as to which notice has been given, and section 45 entitles any person who shall have cause to complain of the insertion of any book in such list to apply to a judge at chambers for the rectification thereof.
Every Offence.—Each separate transaction of sale or importation will constitute a separate offence, for which a separate penalty of £10 will accrue.478 It would seem that “every such offence” does not, as in the Artistic Copyright Act, mean “or the sale or importation of every copy.”479
Limitation of Action.—Section 26 of the Copyright Act, 1842, enacts, “that all actions, suits, bills, indictments or informations for any offence that shall be committed against this Act shall be brought, sued, and commenced within twelve calendar months next after such offence committed, or else the same shall be void and of none effect.” It is clear that even although the remedy for one offence is barred, that in no way extinguishes the owner’s right, and the owner may sue for subsequent offences;480 thus although a piratical book has been printed and published more than twelve months before action brought, yet the owner will be entitled to sue in respect of sales, &c., made within the twelve months. In a Scotch case, Stewart v. Black,481 it seems to have been held by Lord President Boyle that the limitation in the 26th section did not apply to an action of damages for infringement, and Malins, V. C., says obiter in Weldon v. Dicks,482 that in his opinion the limitation only applies to an action for penalties. It is submitted that Stewart v. Black, if applied to books published after 1842, is wrong, and that the dictum of Malins, V. C., in Weldon v. Dicks, is also wrong. The section seems sufficiently clear and applicable to all actions brought in respect of an infringement of copyright. The argument contra seems to be based on the use of the words “for any offence that shall be committed,” from which it is argued, that penalties only are pointed at. Offence, however, is used in the 15th section as applicable to infringement of copyright not involving penalties. In cases where the Public Authorities Protection Act applies, the shorter limitation of six months must be substituted.483
Pleading.—The defendant is required to give to the plaintiff a notice in writing of any objections on which he means to rely on the trial of the action. If the defendant intends to dispute that the plaintiff is author or first publisher, or that he is proprietor, he must state the name of the person whom he alleges to be the author or proprietor, together with the title of the book and the time when, and the place where, such book was first published.484 It has been said to be sufficient, in the case of an old publication, to state the year of first publication without stating the day and month in the notice of objections.485
The notice of objections must be specific, and give full notice of the nature of the defence.486 If the defence is that the book has not been registered at all, that must be stated.487 If a faulty registration is relied on, it is not sufficient to deny that the book has been duly registered; the notice must state what the particular objection to the registration is.488 If the plaintiff’s title is denied, it will not do merely to state that the proprietor “is some person unknown, but not the plaintiff;”489 the full particulars as required by the section must be given.490 In objecting to the registration, however, it is not necessary for the defendant to state what the correct entry should he. Thus if he says the time of first publication is wrongly entered, he does not require to specify the true date of first publication.491 It is unnecessary to deliver a separate “Notice of Objections,” as was the practice at one time,492 it is sufficient if it is incorporated in the defence. A suggestion of defective title contained in an affidavit would not be sufficient.493 If a defective title is apparent from the plaintiff’s own statement of claim or evidence, the action would probably be dismissed by the Court, proprio motu, even although the defendant had not given notice of objection.494 Leave to amend the pleadings and take further objection may be allowed on conditions under the judicial discretion given by the Rules of the Supreme Court,495 but if the objection be merely technical, the Court will not give leave to amend,496 unless, perhaps, the plaintiff had otherwise fair notice that the objection might be taken.497 It has been held by a County Court judge that section 16 of the Copyright Act does not apply to proceedings in the County Court, as that Court was created after the date of the Act.498
The plaintiff may be ordered to specify the particular passages which he is prepared to prove have been pirated from his work.499
Evidence.—The great test of piracy is coincidence of blunders, and when some passages are proved by the recurrence of blunders to have been copied, other passages which are the same with passages in the original book are presumed primâ facie to be likewise copied, although no blunders occur in them.500
It will greatly prejudice the defendant if his manuscript is not produced or accounted for.501
A denial by the defendant that he has made any use whatsoever of the plaintiff’s work raises a presumption of piracy if it is shown that he must have made some use of it, however fair.502
To prove that A on a certain date heard certain music performed from printed sheets, is no evidence that the music was published as a book at that date.503
Discovery.—The defendant is entitled to administer interrogatories to ascertain the extent of the sale of plaintiff’s book, and to enable the defendant to ascertain the damages and pay into Court.504
The plaintiff is entitled to interrogate as to the original sources from which the defendant alleges his work to have been compiled.505
Mode of Trial.—Formerly the question of piracy or no piracy and the amount of damages was frequently tried by jury, but now the trial of the action is almost invariably before a judge alone, either in the Chancery or the King’s Bench Division. Either party may ask for a trial by jury, but not as a matter of right, it is a matter entirely in the discretion of the Court and semble that the onus lies on the party applying for a jury to show that the cause could be more conveniently tried in that way.506
Costs.—In copyright as in other actions a successful party may be refused his costs. The plaintiff will not get his costs if he has unduly acquiesced in the defendant’s conduct, and thereby induced the defendant to incur expenses,507 or if after acquiescence and delay an action is brought without fair warning.508 So, too, if the plaintiff has suffered no real harm, but brings an action for the purpose of making money out of it;509 and in one case where the Court was of opinion that although the plaintiff was entitled to nominal damages, the action was one which should never have been brought, the plaintiff was ordered to pay the defendant’s costs as well as his own.510 If the plaintiff has increased the expenses by raising other questions in which he has failed, the costs will be apportioned.511 A defendant, although successful, may lose his costs or part of them if he has acted in such a way as was not fair and right as between man and man;512 for instance, if he has made some use of the plaintiff’s book, but does not acknowledge it at the hearing.513 A successful defendant may lose his costs if in his defence he challenges the plaintiff’s title and fails in his attack, but wins on the question of piracy. If a defendant by his conduct in lending his name to a publication has led the plaintiff to assume that he “caused it to be printed,” he will probably not be allowed his costs.514 A defendant may also be refused his costs if the Court is of opinion that he brought the action on himself by sailing too near the wind.515 The Court will not encourage a plagiarist or one who has made an illiberal use of another’s work, even although he has not actually committed a piracy. Costs have also been refused where, although the defendant succeeded, his defence was a merely technical one, such as a defect in registration.516 If copyright is claimed in part of a book only, the whole of which is registered without distinction, the notice of motion or statement of claim should specify the parts in which copyright is claimed, or the plaintiff may be liable in costs unnecessarily incurred by the defendant.517