U.S. Supreme Court
Burrow-Giles Lithographic Co. v. Sarony
111 U.S. 53
1884
MR. JUSTICE MILLER delivered the opinion
of the court.
This is a writ of error to the Circuit
Court for the Southern District of New York.
Plaintiff is a lithographer and
defendant a photographer, with large business in those lines in the city of New
York.
The suit was commenced by an action at
law in which Sarony was plaintiff and the lithographic company was defendant,
the plaintiff charging the defendant with violating his copyright in regard to
a photograph, the title of which is "Oscar Wilde No. 18." A jury
being waived, the court made a finding of facts on which a judgment in favor of
the plaintiff was rendered for the sum of $600 for the plates and 85,000 copies
sold and exposed to sale, and $10 for copies found in his possession, as
penalties under section 4965 of the Revised Statutes.
Among the findings of fact made by the
court the following presents the principal question raised by the assignment of
errors in the case:
"3. That the plaintiff about the
month of January, 1882, under an agreement with Oscar Wilde, became and was the
author, inventor, designer, and proprietor of the photograph in suit, the title
of which is `Oscar Wilde No. 18,' being the number used to designate this
particular photograph and of the negative thereof; that the same is a useful,
new, harmonious, characteristic, and graceful picture, and that said plaintiff
made the same at his place of business in said city of New York, and within the
United States, entirely from his own original mental conception, to which he
gave visible form by posing the said Oscar Wilde in front of the camera,
selecting and arranging the costume, draperies, and other various accessories
in said photograph, arranging the subject so as to present graceful outlines,
arranging and disposing the light and shade, suggesting and evoking the desired
expression, and from such disposition, arrangement, or representation, made
entirely by the plaintiff, he produced the picture in suit, Exhibit A, April
14th, 1882, and that the terms `author,' `inventor,' and `designer,' as used in
the art of photography and in the complaint, mean the person who so produced
the photograph."
Other findings leave no doubt that
plaintiff had taken all the steps required by the act of Congress to obtain
copyright of this photograph, and section 4952 names photographs among other
things for which the author, inventor, or designer may obtain copyright, which
is to secure him the sole privilege of reprinting, publishing, copying and
vending the same. That defendant is liable under that section and section 4965
there can be no question, if those sections are valid as they relate to
photographs.
Accordingly, the two assignments of
error in this court by plaintiff in error, are:
1. That the court below decided that
Congress had and has the constitutional right to protect photographs and
negatives thereof by copyright.
The second assignment related to the
sufficiency of the words "Copyright, 1882, by N. Sarony," in the
photographs, as a notice of the copyright of Napoleon Sarony under the act of
Congress on that subject.
With regard to this latter question, it
is enough to say, that the object of the statute is to give notice of the
copyright to the public, by placing upon each copy, in some visible shape, the
name of the author, the existence of the claim of exclusive right, and the date
at which this right was obtained.
This notice is sufficiently given by the
words "Copyright, 1882, by N. Sarony," found on each copy of the
photograph. It clearly shows that a copyright is asserted, the date of which is
1882, and if the name Sarony alone was used, it would be a sufficient
designation of the author until it is shown that there is some other Sarony.
When, in addition to this, the initial
letter of the christian name Napoleon is also given, the notice is complete.
The constitutional question is not free
from difficulty.
The eighth section of the first article
of the Constitution is the great repository of the powers of Congress, and by
the eighth clause of that section Congress is authorized:
"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 argument here is, that a photograph
is not a writing nor the production of an author. Under the acts of Congress
designed to give effect to this section, the persons who are to be benefited
are divided into two classes, authors and inventors. The monopoly which is
granted to the former is called a copyright, that given to the latter, letters
patent, or, in the familiar language of the present day, patent right.
We have, then, copyright and patent
right, and it is the first of these under which plaintiff asserts a claim for
relief.
It is insisted in argument, that a
photograph being a reproduction on paper of the exact features of some natural
object or of some person, is not a writing of which the producer is the author.
Section 4952 of the Revised Statutes
places photographs in the same class as things which may be copyrighted with
"books, maps, charts, dramatic or musical compositions, engravings, cuts,
prints, paintings, drawings, statues, statuary, and models or designs intended
to be perfected as works of the fine arts." "According to the
practice of legislation in England and America," says Judge Bouvier, 2 Law
Dictionary, 363, "the copyright is confined to the exclusive right secured
to the author or proprietor of a writing or drawing which may be multiplied by
the arts of printing in any of its branches."
The first Congress of the United States,
sitting immediately after the formation of the Constitution, enacted that the
"author or authors of any map, chart, book or books, being a citizen or
resident of the United States, shall have the sole right and liberty of
printing, reprinting, publishing and vending the same for the period of fourteen
years from the recording of the title thereof in the clerk's office, as
afterwards directed." 1 Stat. 124, 1.
This statute not only makes maps and
charts subjects of copyright, but mentions them before books in the order of
designation. The second section of an act to amend this act, approved April 29,
1802, 2 Stat. 171, enacts that from the first day of January thereafter, he who
shall invent and design, engrave, etch or work, or from his own works shall
cause to be designed and engraved, etched or worked, any historical or other
print or prints shall have the same exclusive right for the term of fourteen
years from recording the title thereof as prescribed by law.
By the first section of the act of
February 3d, 1831, 4 Stat. 436, entitled an act to amend the several acts
respecting copyright, musical compositions and cuts, in connection with prints
and engravings, are added, and the period of protection is extended to
twenty-eight years. The caption or title of this act uses the word copyright
for the first time in the legislation of Congress.
The construction placed upon the
Constitution by the first act of 1790, and the act of 1802, by the men who were
contemporary with its formation, many of whom were members of the convention
which framed it, is of itself entitled to very great weight, and when it is
remembered that the rights thus established have not been disputed during a
period of nearly a century, it is almost conclusive.
Unless, therefore, photographs can be
distinguished in the classification on this point from the maps, charts,
designs, engravings, etchings, cuts, and other prints, it is difficult to see
why Congress cannot make them the subject of copyright as well as the others.
These statutes certainly answer the
objection that books only, or writing in the limited sense of a book and its
author, are within the constitutional provision. Both these words are
susceptible of a more enlarged definition than this. An author in that sense is
"he to whom anything owes its origin; originator; maker; one who completes
a work of science or literature." Worcester. So, also, no one would now
claim that the word writing in this clause of the Constitution, though the only
word used as to subjects in regard to which authors are to be secured, is
limited to the actual script of the author, and excludes books and all other
printed matter. By writings in that clause is meant the literary productions of
those authors, and Congress very properly has declared these to include all
forms of writing, printing, engraving, etching, &c., by which the ideas in
the mind of the author are given visible expression. The only reason why
photographs were not included in the extended list in the act of 1802 is
probably that they did not exist, as photography as an art was then unknown,
and the scientific principle on which it rests, and the chemicals and machinery
by which it is operated, have all been discovered long since that statute was
enacted.
Nor is it to be supposed that the
framers of the Constitution did not understand the nature of copyright and the
objects to which it was commonly applied, for copyright, as the exclusive right
of a man to the production of his own genius or intellect, existed in England
at that time, and the contest in the English courts, finally decided by a very
close vote in the House of Lords, whether the statute of 8 Anne, chap. 19,
which authorized copyright for a limited time, was a restraint to that extent
on the common law or not, was then recent. It had attracted much attention, as
the judgment of the King's Bench, delivered by Lord Mansfield, holding it was
not such a restraint, in Miller v. Taylor, 4 Burrows, 2303, decided in 1769,
was overruled on appeal in the House of Lords in 1774. Ibid. 2408. In this and
other cases the whole question of the exclusive right to literary and
intellectual productions had been freely discussed.
We entertain no doubt that the
Constitution is broad enough to cover an act authorizing copyright of
photographs, so far as they are representatives of original intellectual
conceptions of the author.
But it is said that an engraving, a
painting, a print, does embody the intellectual conception of its author, in
which there is novelty, invention, originality, and therefore comes within the
purpose of the Constitution in securing its exclusive use or sale to its
author, while the photograph is the mere mechanical reproduction of the
physical features or outlines of some object animate or inanimate, and involves
no originality of thought or any novelty in the intellectual operation
connected with its visible reproduction in shape of a picture. That while the
effect of light on the prepared plate may have been a discovery in the production
of these pictures, and patents could properly be obtained for the combination
of the chemicals, for their application to the paper or other surface, for all
the machinery by which the light reflected from the object was thrown on the
prepared plate, and for all the improvements in this machinery, and in the
materials, the remainder of the process is merely mechanical, with no place for
novelty, invention or originality. It is simply the manual operation, by the
use of these instruments and preparations, of transferring to the plate the
visible representation of some existing object, the accuracy of this
representation being its highest merit.
This may be true in regard to the
ordinary production of a photograph, and, further, that in such case a copyright
is no protection. On the question as thus stated we decide nothing.
In regard, however, to the kindred
subject of patents for invention, they cannot by law be issued to the inventor
until the novelty, the utility, and the actual discovery or invention by the
claimant have been established by proof before the Commissioner of Patents; and
when he has secured such a patent, and undertakes to obtain redress for a
violation of his right in a court of law, the question of invention, of
novelty, of originality, is always open to examination. Our copyright system
has no such provision for previous examination by a proper tribunal as to the
originality of the book, map, or other matter offered for copyright. A deposit
of two copies of the article or work with the Librarian of Congress, with the
name of the author and its title page, is all that is necessary to secure a
copyright. It is, therefore, much more important that when the supposed author
sues for a violation of his copyright, the existence of those facts of
originality, of intellectual production, of thought, and conception on the part
of the author should be proved, than in the case of a patent right.
In the case before us we think this has
been done.
The third finding of facts says, in
regard to the photograph in question, that it is a "useful, new,
harmonious, characteristic, and graceful picture, and that plaintiff made the
same ... entirely from his own original mental conception, to which he gave
visible form by posing the said Oscar Wilde in front of the camera, selecting
and arranging the costume, draperies, and other various accessories in said
photograph, arranging the subject so as to present graceful outlines, arranging
and disposing the light and shade, suggesting and evoking the desired
expression, and from such disposition, arrangement, or representation, made
entirely by plaintiff, he produced the picture in suit."
These findings, we think, show this
photograph to be an original work of art, the product of plaintiff's
intellectual invention, of which plaintiff is the author, and of a class of
inventions for which the Constitution intended that Congress should secure to
him the exclusive right to use, publish and sell, as it has done by section
4952 of the Revised Statutes.
The question here presented is one of
first impression under our Constitution, but an instructive case of the same
class is that of Nottage v. Jackson, 11 Q.B.D. 627, decided in that court on
appeal, August, 1883.
The first section of the act of 25 and
26 Victoria, chap. 68, authorizes the author of a photograph, upon making
registry of it under the copyright act of 1882, to have a monopoly of its
reproduction and multiplication during the life of the author.
The plaintiffs in that case described
themselves as the authors of the photograph which was pirated, in the
registration of it. It appeared that they had arranged with the captain of the
Australian cricketers to take a photograph of the whole team in a group; and
they sent one of the artists in their employ from London to some country town
to do it.
The question in the case was whether the
plaintiffs, who owned the establishment in London, where the photographs were
made from the negative and were sold, and who had the negative taken by one of
their men, were the authors, or the man who, for their benefit, took the
negative. It was held that the latter was the author, and the action failed,
because plaintiffs had described themselves as authors.
Brett, M.R., said, in regard to who was
the author: "The nearest I can come to, is that it is the person who
effectively is as near as he can be, the cause of the picture which is
produced, that is, the person who has superintended the arrangement, who has
actually formed the picture by putting the persons in position, and arranging
the place where the people are to be — the man who is the effective cause of
that."
Lord Justice Cotton said: "In my
opinion, `author' involves originating, making, producing, as the inventive or
master mind, the thing which is to be protected, whether it be a drawing, or a
painting, or a photograph;" and Lord Justice Bowen says that photography
is to be treated for the purposes of the act as an art, and the author is the
man who really represents, creates, or gives effect to the idea, fancy, or
imagination.
The appeal of plaintiffs from the
original judgment against them was accordingly dismissed.
These views of the nature of authorship
and of originality, intellectual creation, and right to protection confirm what
we have already said.
The judgment of the Circuit Court is
accordingly affirmed.