CITE:  137 F. 262
CMON:  May 1905
PLAIN: American Mutoscope & Biograph Co.
DEFND: Edison Manufacturing Co.
COURT: Circuit Court, D. New Jersey
DATE:  May 6, 1905


In Equity.

The complainant applies for a preliminary injunction to restrain the
defendant from an alleged infringement of a copyright of a photograph. The
application is made upon the bill of complaint and ex parte affidavits taken
by the complainant and the defendant. The defendant has also filed a demurrer
to the bill. Obviously, the demurrer must be first disposed of, for, if it be
good, there is no need of considering the application for a preliminary
injunction.  In its bill the complainant sets forth that Wallace McCutcheon
and Frank J. Marion are the authors, and that by contract with them the
complainant is the proprietor, of a photograph duly copyrighted June 24, 1904,
made "upon a certain negative film, which said film was subsequently
developed, and the photograph taken thereon printed on certain posltive
films".  The manner of taking and using the so-called photograph is thus
described in paragraphs 8 and 9 of the bill of complaint:

  "(8) That the said photograph was taken by means of a camera owned by  
  your orator, whereby successive views of the same object are taken from the
  same point of view, so that when the said views are successively thrown upon
  a screen by means of a projecting apparatus similar to a magic lantern, or
  otherwise caused to appear in rapid succession within the range of vision
  of the observer, the impression of actual motion is thereby given; and that
  the successive views were taken on one negative consisting of a strip of
  film of about 370 feet long, and that from said negative film positive
  films have been made by your orator in the course of its regular business,
  and sold or rented for the purpose of having them reproduced as above
  described to give the effect to the observer of actual motion, and that
  each view is not sold or rented by itself, but that the views are sold
  in numbers together, being printed on one strip of film for the said
  purpose, and constituting one photograph.

  "(9) That the scene prominently depicted in said photograph occurred
  largely at Grant's Tomb on Riverside Drive in New York City, and represents
  a French gentleman, who, having inserted an advertisement stating his desire
  to meet a handsome girl at Grant's Tomb at a certain time, with the ultimate
  object of matrimony, appears at Grant's Tornb, and is beset first by one
  woman, soon by another, then by several in succession, who are so
  importunate in their attentions that he is forced to flee, and does run away
  from them, with the women in close pursuit, in successive scenes the chase
  is depicted across the country in various situations, until at last the
  Frenchman is overtaken by one of the pursuers who discovers him in hiding,
  and, at the pint of a pistol, compels him to yield. That in order to produce
  the effect above described it was necessary for your orator to employ
  skilled artists to prepare the apparatus for taking the photographs, and for
  the manipulation of such apparatus skilled pantomimists were drilled for
  the performance of the action portrayed, who were rehearsed in their parts.
  That the manipulation of the camera and film, the cutting of the film, the
  reconstruction of the same in such manner as to produce most perfectly the
  illusion sought to be made, required high skill and involved much expense.
  That the positive film printed from the negative so produced, when thrown
  upon a screen by means of an appliance similar to a magic lantern, gives to
  the observer an amusing and entertaining picture of the scene described

  The complainant also alleges that the defendant, "well knowing the
  premises, and knowing of your orator's copyright, and willfully
  disregarding your orator's rights in the premises, did, subsequent to
  the 29th day of June, 1904, and prior to the commencement of this suit,
  without your orator's consent and against your orator's wishes, wrongfully
  and fraudulently prepare, publish, and print for sale, and did sell at its
  place of business at said West Orange, in the county of Essex and state of
  New Jersey, and elsewhere within the United States,
  copies of said photograph copyrighted as set forth by your orator, under  
  the title of 'How a French Nobleman Got a Wife Through the New York Herald
  Personal Columns', or other title or titles of like meaning, and threatens
  to continue such sale and publication of the said copyrighted photograph - 
  all of which acts were, and still are, being done by the said Edison
  Manufacturing Company with intent to deceive and defraud the public and the
  buyers and users of the said photograph, and to deprive your orator of its
  just rights and profits under the said copyright; and the said defendant
  has published and sold, and is still publishing and offering for sale,
  the said photograph entitled 'How a French Nobleman Got a Wife Through the
  New York Herald Personal Columns', or a like title, which is a substantial
  copy of and identical with your orator's said copyrighted photograph, and
  said defendant threatens and intends to continue such publication and sale".

  The complainant further sets forth that it presents to the court as exhibits
  in connection with the bill one of the complainant's copyrighted photographs
  and also one of the defendant's photographs. The complainant prays, inter  
  alia: (1) That the defendant "be compelled by an order of this court to
  deliver up to your orator all the copies of the said copyrighted photograph
  and all negative films thereof in the possession of the defendant or its
  representatives"; (2) for a perpetual injunction restraining the defendant
  from "making or causing to be made, using or causing to be used, selling or
  causing to be sold, any copies of your orator's said copyrighted photograph
  not purchased from your orator" ; and (3) for an injunction pendente lite
  "to the same effect as heretofore prayed for in regard to a perpetual

  There are two grounds of demurrer: First. "That it appears from said bill
  of complaint that said alleged photograph claimed to have been copyrighted
  by complainant is a positive photograph, printed, not from a single
  negative, but from a series of separate and distinct negatives, and is not,
  therefore, protectable as a photograph under the copyright statutes."
  Second. "That said bill of complaint is wholly without equity."

  Motion picture, viewed as a series of pictures on film, is copyrightable.
  A picture or photograph, as expression of idea, is copyrightable "writing".

JUDGE: LANNING, District Judge


(after stating the facts as above).

In Fowler v. City of New York, 121 Fed. 747, 58 C.C.A. 113, it was  
held that in an infringement suit, where profert of a patent is made  
in the bill, the patent will be regarded as a part of the bill, and will  
be examined on demurrer.  There is no reason why the same rule  
should not be observed in the case of an alleged infringement of a  
copyright.  Indeed, a comparison of exhibits in a copyright case  
on demurrer to a bill was made in Mott Iron Works v. Clow (C. C.)  
72 Fed. 168.  An examination of the complainant's positive film,  
of which profert is made by the bill, shows that it contains several  
hundred pictures, and that the camera in which were produced the  
negatives from which the positive film was printd occupied no less  
than seven or eight different positions, the first two or three of  
which, it is clear from the statements of the bill of complaint, were  
at or near to Gen. Grant's Tomb in New York City, the others being
evidently in some country district. The defendant's photograph is
also a positive film, evidently printed from negatives taken  
by a camera located at seven or eight different places, the first two  
or three of which were taken near to Gen. Grant's Tomb, or to a  
structure strongly resembling it; the remaining places being also  
in some country district.  That the complainant's photograph is  
a reproduction upon a positive film of pictures on negatives taken
by a camera located at different points is confirmed by the language
of the ninth paragraph of the bill, which states that "the scene
prominently depicted in said photograph occurred largely at Grant's  
Tomb, on Riverside Drive, in New York City", and in the subsequent
statement in the same paragraph that "in successive scenes  
the chase is depicted across the country in various situations".
The title of the complainant's copyrighted photograph consists
simply of the word "Personal".  There is nothing in the proceedings  
for securing the copyright, as they are set forth in the bill, indicating
that the scene depicted in the photograph "represents a French  
gentleman", or any other person who had "inserted an advertisement
stating his desire to meet a handsome girl at Grant's Tomb."  
Consequently, there is nothing in the complainant's photograph, or  
in the title to its copyright, or in the proceedings for securing its  
copyright, in any wise suggestive of the title of the defendant's  
photograph, which is "How a French Nobleman Got a Wife  
Through the New York Herald Personal Columns".  Still the allegation
of the bill is that the defendant has published and sold,  
and is now publishing and offering for sale, copies of the complainant's
copyrighted photograph, to which copies it has given the title  
above quoted. That allegation must, on the demurrer, be accepted  
as true, and, if the other allegations of the bill are sufficient to  
present a prima facie case of a valid copyright, the demurrer must
be overruled.

The provision of the Constitution is that Congress shall have  
power "to promote the progress of science and useful arts by securing
for limited times to authors and inventors the exclusive right
to their respective writings and discoveries".  The word "writings"
is not limited to the actual script of the author, but includes his  
printed books, and all forms of writing, printing, engraving, etching,  
etc., by which the ideas in his mind are given visible expression.
A photograph may therefore be the subject of copyright, for it may  
give visible expression to an author's idea or conception. Whether  
a photograph of a building or any other object, which is a mere  
mechanical reproduction of the physical features or outlines of the  
object, involving no originality or novelty on the part of him who  
takes it, is the subject of copyright, may well be doubted. But if  
a photograph be not only a light-written picture of some object,  
but also an expression of an idea, or thought, or conception of the  
one who takes it, it is a writing within the Constitutional sense,  
and the proper subject of copyright.  In this statement, I think, I  
am clearly within the reasoning of the Supreme Court in the case  
of Lithographic Co. v. Sarony, 111 U.S. 53, 4 Sup.Ct. 279, 28 L.Ed. 349.
In Falk v. Brett Lithographing Co. (C.C.) 48 Fed. 678,  
Judge Wheeler held that the complainant in that case, who had  
brought suit for infringement of a copyright of a photograph of a  
lady and her child, by placing the persons in position and using  
the position assumed by the child at the proper time to produce the  
photograph, had done that which entitled him to the benefits of  
the copyright law.  In Falk v. Donaldson (C.C.) 57 Fed. 32, a  
photographer's copyright was declared to be valid in a case where
he had posed an actress, and arranged the curtains, screens, and
lights so as to secure the expression and effect he desired. In
Falk v. City Item Printing Co. (C.C.) 79 Fed. 321, the reasonable  
inference to be drawn from Judge Pardee's language is that a photograph
which expresses on the part of the photographer originality
and intellectual effort is the proper subject of copyright. From
these authorities it must be concluded that a photograph which is  
the expression of an author's ideas or conceptions may be copyrightcd
to the same extent that any literary composition expressive  
of an author's ideas or conceptions may be copyrighted.

But in the case now considered the complainant's photograph  
consists of hundreds of separate pictures on a positive film printed  
from a number of negatives takn by a camera placed in several  
different locations. Can the positive film in such a case be regarded
as a photosgraph?  Section 4952 of the Revised Statutes [U.S.
Comp. St. 1901, p. 3406] provides that "the author, inventor,
designer or proprietor of any * * *  photograph or negative thereof,
 * * * 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."  In  
Edison v. Lubin, 122 Fed. 210, 58 C.C.A. 604, in an opinion by the  
Circuit Court of Appeals of this circuit, it appears that a series of  
pictures representing the launching of a vessel were taken by means  
of a camera on a negative film, and that from such fiim a positive  
film was reproduced to be used in representing a moving picture.  
The camera in that case occupied but one position, though it was  
placed on a pivot on which it could be moved so as to keep the  
vessel, as it left its stays and moved into the water, within the field  
of the camera's lenses. It was held that the positive film reproduced
from the negative thus taken was a photograph of one act  
or event, and therefore the proper subject of a copyright. In that  
case the defendant, who had secured a part of one of these positive  
films, but, without knowledge that it had been copyrighted, reproduced
it on celluloid sheets, and sold them to exhibitors. Having  
held that the complainant's picture constituted a photograph, the  
defendant was of course enjoined from further infringement of the  
complainant's copyright. I am unable to see why, if a series of  
pictures of a moving object taken by a pivoted camera may be  
copyrighted as a photograph, a series of pictures telling a single  
story like that of the complainant in this case, even though the  
camera be placed at different points, may not also be copyrighted  
as a photograph.  Though taken at different points, the pictures  
express the author's ideas and conceptions embodied in the one  
story. In that story, it is true, there are different scenes. But no  
one has ever suggested that a story told in written words may  
not be copyrighted merely because, in unfolding its incidents, the  
reader is carried from one scene to another. The recent advance in  
the art of photography now enables an author to tell the story of  
the launching of a ship in a series of pictures printed upon a single  
positive film in such manner that by throwing the pictures in rapid

succession upon a screen there is produced the representation of  
the moving ship. Such a series of pictures, so printed, the Circuit  
Court of Appeals of this circuit has said is a photograph within the  
meaning of section 4952 of the Revised Statutes. So here, the
complainant's positive film contains a series of pictures that may be  
thrown in rapid succession upon a screen telling a single connected  
story of a man fleeing from a crowd of women.  On the authority  
of Edison v. Lubin, as I understand that case, my conclusion is  
that the complainant's positive film is a photograph. By its bill  
the complainant alleges that Wallace McCutcheon and Frank J. Marion
are the authors of the photograph; that by contract with  
the authors it has become the proprietor of the photograph; that  
it has had the photograph copyrighted; and that the defendant has  
made copies of the photograph, and is selling those copies to
exhibitors. These allegations seem to establish a prima facie case  
for the exercise of the injunctive power of the court. Accordingly,  
the demurrer must be overruled as to both of the grounds on  
which it rests.

We are brought, therefore, to the consideration of the question  
as to whether a preliminary injunction should be allowed. The  
affidavits show that the defendant also has had its series of
pictures duly copyrighted, and that they were taken by placing its  
camera at two or three points near Gen. Grant's Tomb and at  
other places in a country district in New Jersey. The defendant's  
pictures were taken at times different from those of the complainant,
and by securing a different set of actors, dressed in different  
costumes. In the first scene of each photograph Gen. Grant's Tomb  
is visible, and before it appears a man, who is son met by several  
women, who crowd about him, and from whom he attempts to run  
away. In each of the photographs are successive scenes showing  
the man and the women running down the roadway leading from  
the tomb, and across fields and through hedges, and jumping over  
fences and down banks. The two photographs possess many similar
and many dissimilar features. The defendant denies having  
copied any part of the complainant's photograph. Its photographer  

  "The negative prepared by me did not and does not contain a single
  copy of any of the pictures of complainant's films. Each impression
  is a photograph of a pantmime arranged by me, and enacted for me at
  the expense of the owner of the film which I produced. My photograph
  is not a copy, but an original. It carries out my own idea or conception
  of how the characters, especially the French nobleman, should appear
  as to costume, expression, figure, bearing, posing, gestures, postures,
  and action."

In Munro v. Smith (C.C.) 42 Fed. 266, the question was whether  
the defendants should be enjoined from publishing a picture of "Old  
Sleuth" on the ground that they were infringing the complainant's  
copyright. Judge Shipman said:

  "That the defendants got the idea from the plaintiff of having a picture
  to represent the common hero of all the stories, an apparently old
  countryman, dressed in an old-fashioned garb and style, and having
  a shrewd face, is probably true. But the two pictures are dissimilar.
  The attitude, the general expression, and the general appearance of
  the two figures are unlike; and not only unlike, but very different.
  The variations are more than colorable. The defendants' picture is not
  an imitation, but their designer took the plaintiff's idea, and worked
  it out in a different way. I do not find an infringement, and the bill
  should be dismissed."

I am not prepared to say, on the evidence now before me, that the defendant
has appropriated the substance of any part of the complainant's copyright.
The copying of the complainant's photograph is asserted on the one side
and denied on the other.  There has been no cross-examination of witnesses.
One of the best means of eliciting the truth concerning the contested
question has therefore not yet been applied. It is not now clear that an
order that the defendant deliver to the complainant "all the copies of the  
said copyrighted photograph and all negative films thereon in the possession
of the defendant or its representatives" would secure the delivery to the
complainant of anything, or that an injunction restraining the defendant
from "making or causing to be made, using or causing to be used, selling or
causing to be sold, any copies of your orator's said copyrighted photograph
not purchased from your orator" would enjoin it from doing anything
described in the bill of complaint. The burden of proof is on the
complainant. It must establish by clear proof that the defendant is
violating its copyrights. As the proofs now stand, there is doubt upon
the question of its right to any relief whatever. Full proofs on final
hearing may remove that doubt, and show it entitled to the relief which
it seeks, but until such proof is had the court can do nothing.

The conclusion is that the preliminary injunction must be denied.