CITE:  6 F. Cas. 904
CMON:  December 1869
PLAIN: Crowe
DEFND: Aiken
COURT: Circuit Court, N. D. Illinois
DATE:  December 31, 1869

In equity. This was a motion to dissolve a preliminary injunction
restraining the defendant, the manager of a theater in Chicago, from
producing a play, the copyright of which was owned by complainant.

  Author has exclusive right to control the use of his literary productions.

JUDGE: DRUMMOND, Circuit Judge


The bill in this case was filed to prevent the performance in Chicago of
a drama called Mary Warner by the defendant, who is manager of a theatre.
It is based not upon any copyright statutes, but on the principles of the
common law and of equity. Mr. Tom Taylor, a subject of the queen of Great
Britain, is the author of the drama. The plaintiff is the husband of an
actress of distinction known to the public as Miss Kate T. Bateman. The
play written by Mr. Taylor for Miss Bateman, and the principal character
to be personated by her, in pursuance of a contract between the plaintiff
and Mr. Taylor made in February, 1869, at London, was not intended for
publication, but for representation on the stage. After it was completed
the author duly transferred in writing to the plaintiff all his right in
the play and in the manuscript thereof, together with the exclusive right
to its representation on the stage in the United States for five years
from June 1, 1869. The manuscript was accordingly delivered to the Haymarket 
theatre, in London, in June, 1869. Afterward the plaintiff and his wife
came to the United States, and Mary Warner has been performed at Booth's
theatre in the city of New York.

The foregoing facts do not appear to be controverted. The bill alleges
that the play has always been kept in manuscript; that is has never been
printed by Mr. Taylor, by the plaintiff, nor by Miss Bateman, nor with
the consent or acquiescence of any one of them, nor published with the
consent or acquiescence of any one of them, otherwise than by a
representation on the stage, and that the defendant did not produce
it at his theatre by means of the memory of those who had witnessed
its representations on the stage, but by a copy wrongfully and
surreptitiously obtained from the manuscript, or from a printed copy
wrongfully and fraudulently printed. An injunction was issued by the
court, and the performance of Mary Warner by the defendant's company
stopped. The defendant now appears and moves to dissolve the injunction.

The motion has been fully argued by the counsel of the defendant upon
two grounds: First, the law of the case as settled in England and in
this country; second, on the facts contained in the affidavits of
Robert M. De Witt and Charles J. Clarke, both of New York.

The affidavit of De Witt states that he furnished the defendant with
a copy of the play used by him; that he produced it from a person in
London, on or about the 29th of July, 1869, who obtained the same only
from repeated representations on the stage at the Haymarket theatre; 
that there was no restriction or prohibition against any of the
spectators using such play as they saw fit. He also states he is advised
that by section 20, c. 45, 5 and 6 Vict., "The first representation or
performance of any dramatic piece in England is deemed equivalent to the
first publication of a book."

The affidavit of Clarke states that the play of Mary Warner was in print
in the city of New York as early as August, 1869; that he bought a
printed copy of the play at a public news-stand in New York, where the
same was publicly exposed for sale.

The copy furnished to the defendant has been exhibited in court. It is
not in the usual form of a published play, but consists of printed slips
fastened together in pamphlet form, with plats and stage directions as
if for dramatic use only.

Various affidavits have been introduced by the plaintiff, from which
it is apparent that the play Mary Warner has never been printed with
the knowledge or consent of Mr. Taylor, the plaintiff, nor Miss Bateman.
It is not for sale generally in New York, and not at all in England.
It is a fair inference, I think, from all that appears in the case, that
the only printed copy in existence was printed by Mr. De Witt, or under
his direction, and is kept for sale at a high price to the theatrical
managers. Mr. Clarke's affidavit was made from the 14th of December,
and the copy referred to by him may have been, and probably was,
purchased directly or indirectly of De Witt or through his instigation,
and as he does not state when, it may have been since this bill was filed.

It would seem, in answer to the allegations of the bill, the defendant
ought to show that his copy of the play came from a printed or other
copy authorized by the author of his assignee or from the memory of
those present when the play was performed. The manner in which the play 
was procured in London is rather vaguely stated. It was from repeated
representations only. But was it from the memory of those who heard it
performed, or from phonographic reporters?  The statement is entirely
consistent with the latter sources of information.

The author of any literary or dramatic work is the sole proprietor of
the manuscript and its contents, and of copies of the same, independently
of legislation, so long as he does not publish it, or part with the right
of property. This is called a common law right, and exists irrespective of 
copyright statutes. This right of property he can transfer, and a court
of equity will protect him or his assignee, in a proper case, just as it
will the owner of any other species of property. Those judges who
maintained this common law right in the cases of Millar v. Taylor
4 Burr. 2304 (1769) and in Donaldson v. Beckett, 2 Bro. Parl. Cas 129
(1774), decided a hundred years ago, it has always been thought, had
the strength of the argument on their side in the great discussion to 
which they gave rise. Subject to the qualification stated, it has been
generally admitted in this country.

Mr. Taylor, then, was the proprietor of the drama Mary Warner when
finished, and when transferred to the plaintiff the latter became the
proprietor on the terms of the transfer. Has the right of property been

It is conceded that it would be lost by any general publication of the
play by the proprietor which could be regarded as a dedication to the
public, but save this, it is difficult to fix on any rule which shall
meet the case. The giving of the copy, or of several copies of manuscript
will not necessarily be a publication. The representation of a play on
the stage was decided in England, before the statutes of 5 & 6 Vict.,
not to be a publication.

There are cases in some of the courts of this country, which hold that
the representation of a play is a qualified publication, viz.: to the
extent in which the memory of the auditors can retain its language,
scenery, or incidents, and if it is reproduced only in that way the
author of the work has no remedy. Of these cases it may perhaps be
said that, in some instances, the court has not looked very rigidly
into the proofs, considering the intrinsic difficulty of the subject.
Indeed, as some of the affidavits in this case show, and as all
experience proves, to write out a play from memory alone is well
night impossible.

None of the cases cited by counsel have gone so far as to decide that
a reporter can take down the words of an unpublished play as they are
uttered by the actors, and thus make it public against the wishes of
the author, while on the other hand, it has been frequently held that such 
action of a reporter can be prevented because not warranted by express
or implied conditions. In some instances stress has been laid on the fact
of representations of a play being had without restriction, and it is
claimed Mary Warner was so produced in England. This, however, is denied, 
and it is asserted, public notice was given both in London and in New York
of the private property in the play. It is not easy to see, however, how
a notice can have any effect upon the rights of the author or of the
auditor. If the latter had the right to carry the play away in his
memory, or to take down phonographically, and in either case to use or
publish it, the notice prohibiting it could not affect or change that

The principal reason, probably, why courts are so much inclined to
construe with great strictness the common law right of an author in
a manuscript work, partially imparted to the public, is because the right
is perpetual. All claims under copyright statutes are for a limited time
only. This reason may have had great weight in the discussion which
took place in England in the two cases already referred to, and the
result of which was the adoption of the principle that the statute of
8 Anne, c. 19, took away the common law property of an author in a
published work. But this common law right is always under the control
of the legislative power, and it has been exercised in England; and even
under the qualified publication of a play by representation there can be
no doubt that under the rule now established in the courts it might
become public property, in the manner heretofore stated, after repeated

There was some question whether the author of a play had, at common law,
the sole-right of representation; but so long as the play existed in
manuscript, and was unpublished, and not in some way dedicated to the
public, the sole right of representation or performance would seem to
follow from the exclusive right of property.  But the 20th section of
chapter 45 of the statute of 5 & 6 Vict. put an end to this question,
by declaring that the first public representation or performance of any
dramatic piece should be deemed equivalent, in the construction of the
act, to the first publication of any book; and I understand it has been
decided in England that the public performance, even in a foreign
country, of a play of which an English subject is the author, defeats
his claim to a copyright under the British statutes.

It is insisted that as by this statute representation was publication,
the play Mary Warner, by performance in England, was published there,
and all right of property in the play was consequently lost, as well as
in the United States. This necessarily leads to the conclusion, and that
is substantially the position of defendant's counsel, that there is no
right of property in this country in the play, except that conferred by
the statutes, and particularly that of Aug. 18, 1856 (11 Stat. 138).
I do not understand that the authorities have gone that far, and it does
not follow because his claim under the statutes is gone, that everything
is lost. He may still stand on his natural, inherent right as the author
and creator of the play, and maintain that right until in some mode, in
reason or by statute, it is dedicated to the public. It cannot be true
in this country that the lecturer has no rights of property in his
unpublished and unprinted lecture; that the clergyman has no rights of
property in his unpublished sermon -- the work, it may be, in each case,
of weeks of thought and labor -- merely because he has repeated it to
an audience. And I cannot comprehend why, because congress has legislated
about dramatic compositions, the author of a play should occupy different
ground. The object of all copyright laws is to protect and regulate
property In the product of the brain, not to annihilate it.

There can be no doubt of the authority of congress to legislate on the
subject of literary property, and to prescribe the terms upon which
copyrights shall be granted, and when it has so legislated it may be
truly said to create those rights under the law; and this is the sense of
the language of the Supreme Court in the case of Wheaton v. Peters,
33 U. S. (8 Pet.) 661 (1834), that Congress, instead of sanctioning an
existing right, created it, because the court admits the right at common
law. Neither, perhaps, can there be any doubt that congress can declare what 
sort of publications of a literary or dramatic work shall constitute a
dedication to the public.

It follows from what has been said that a definition of the word
representation by a British statute is not operative as such in this
country, and in all the cases which have arisen here recently upon
the rights of authors to unpublished plays written by Englishmen, the
objection that their rights in this country were destroyed in consequence
of the clause already referred to in section 20, c. 45, of 5 & 6 Vict.,
seems not to have been taken either by counsel or the court.

I am of opinion that upon principle and authority the author, or his
assignee, of an unpublished play, has a right of property in the manuscript
and its incorporeal contents; that is, in the words, ideas, sentiments,
characters, dialogue, descriptions, and their connection, independent of
statutes, and that a court of equity can protect it. I am also of opinion
that as the law now exists in this country, the mere representation of a
play does no of itself dedicate it to the public, except, possibly, so far
as those who witness its performance can recollect it, and that the
spectators have not the right to secure its reproduction by phonographic
or other verbatim report, independent of memory.

These being my conclusions, the only other question is whether the
defendant has brought himself within the condition named; and, after what
has been said, it necessarily follows that in my judgment he has not.
I cannot doubt that De Witt obtained the copy of the play of Mary Warner,
which he furnished to the defendant in this case, either in whole or in
part, through a short-hand reporter, or in some other unauthorized or
wrongful way, and not by memory only. The case will therefore go to proofs
in the regular way, and the injunction stand until the hearing.