Argument for the author.

and also all "the right, title, and interest which may be secured to him from time to time, the same to be held by the assignee for his own use and for that of his legal representatives, "to the full end of the term for which said letters are OR may be granted."

years.

2. The copyright act of 1790 gives the right to the author and to his assigns. The act of 1831, which created this new term, gives it specifically to the author if living, to his family if he is dead. Assignees are not mentioned in it, nor provided for. It looks much as if Congress in this case had meant specially to take care of men of literary genius; often as we know not men of business, and, therefore, subject to be hardly dealt with by the trade. A book is rarely much demanded after it has been published twenty-eight Some books, the works of men of high genius, are as much so or more than ever. The provision seems specially to have been for the authors of them, and for their families, just as Congress by various acts provides for our soldiers, our occupants of bounty lands, making very liberal provisions for them and for their families, but declaring that their vendees shall take nothing. Mr. G. T. Curtis, in his work on Copyright, page 235, questions whether the author by any assignment could dispose of the contingent interest given by the act of 1831, so as to deprive his widow and children of the right in case of his death. A similiar provision in the patent law has been construed by this court against the right. Wilson v. Rousseau, 4 Howard, 646; Bloomer v. McQuewan, 14 Id., 539.

We have the benefit of the views on the circuit by Mr. Justice Nelson, in the case of Cowen v. Banks, 24 Howard's Practice Cases, 72, in support of the position which we take. There the reporter Cowen had assigned in 1823 to this same house of Gould & Banks, the copyright of his reports by an instrument like the present one. A copy of the instrument was shown to the court from the judgment roll of the case. He lived till 1844, that is to say, three years after the expiration of his first term of copyright. The executrix of the reporter after his death claiming the fourteen years of the extended term of twenty-eight years, given by statute of 1790, to authors or their assigns, filed a bill for injunction and account. His honor, Judge Nelson, after careful consideration, decided in her favor. It is true indeed that he decreed ultimately in favor of the publishers, on a cross action brought by them to amend the agreement, so as to convey all the interest of Mr. Cowen in the extended term. On the hearing of that cross-bill a deposition of Mr. Cowen given in a prior suit brought by the publishers against one Hastings, as a violator of the copyright, was read in

Opinion of the court.

evidence. In this deposition Mr. Cowen testified "that it was his intention, by the agreement, to convey his whole interest in the copyright of the work," and he added: "I supposed the book to belong to my assignees, as soon as made, including all that was in it. I would not have taken the office of reporter, with its salaries and duties, unless I was to have a proprietary right which I could use or dispose of." The present case is much stronger than that of Mr. Cowen, for the term claimed by his representatives, was the second term granted by the statute of 1790, in case the author lived through the first fourteen years; a term grantable under the statute to assigns; while what we have claimed is the extension granted by the statute of 1831, an extension conferred on the author and his family, and where the rights of assigns seem to have been carefully excluded.

Messrs. Joseph Laroque and E. E. Anderson, contra.

Mr. Justice DAVIS delivered the opinion of the court.

The whole controversy turns upon the true interpretation of the agreement made on the 7th October, 1828.

Independent of any statutory provision the right of an author in and to his unpublished manuscripts is full and complete. It is his property, and, like any other property, is subject to his disposal. He may assign a qualified interest in it, or make an absolute conveyance of the whole interest.

The question to be solved is, do the terms of this agreement show the intent to part with the whole interest in the publication of this book, or with a partial and limited interest?

The agreement on the one side is "to furnish, in manuscript, the reports of said court for publication," with an additional clause that the publishers "shall have the copyright of said reports to them and their assigns forever." The cause or consideration of this agreement is a stipulation by the other side for a certain sum of money, and the performance of certain duties in connection with the publication.

It is insisted by the appellants that a just interpretation confines the agreement to a mere assignment of the interest in such copyright, as is provided for in the act of 31st May, 1790; that this was the law in force when the contract was entered into; that the fourteen years therein provided for, with the right to a prolongation of fourteen years more, is all that the publishers, at most, are entitled to, and that they are excluded necessarily from the benefit of the provisions conferred by the act of the 3d February, 1831, granting to authors an additional extension of fourteen years.

Opinion of the court.

In our view this is too narrow a construction. The fair and just interpretation of the terms of the agreement indicate unmistakably that the author of the manuscript, in agreeing to deliver it for publication at a stipulated compensation, intended to vest in the publishers a full right of property thereto.

The manuscript is delivered under the terms of the agreement for publication." No length of time is assigned to the exercise of this right, nor is the right to publish limited to any number of copies. The consideration is a fixed sum of $1,000. Whether one or one hundred thousand copies were published, the author was entitled to receive, and the publishers bound to pay, this precise

amount.

As between the parties to the agreement the absolute interest was conveyed by the stipulation of Paige, that he would furnish the manuscript for publication. Paige could no longer do any act after such delivery for publication inconsistent with the absolute ownership of the publishers. But it was proper, for the protection of the publishers, that they should be in position to assert the remedies given by the law against intruders, and it is to this end it is added in the agreement, "and the said Gould & Banks shall have the copyright of said reports to them, their heirs, and assigns forever." It is not covenanted that the publishers should take out the copyright, nor is there any express agreement for an assignment to them by Paige, if he should take it out. Undoubtedly the provision, that the publishers "should have the copyright," would authorize them to apply for it, and if Paige had taken it out in his own name it would have enured to their benefit. But, as between Paige and the publishers, the rights of the latter could not be estimated differently, whether they had or had not availed themselves of the provisions of the act.

We have been referred to the case of Cowen v. Banks, in which Mr. Justice Nelson, on a similar agreement, expressed the opinion that the construction now contended for by the appellants was the true one. No reason is assigned by the judge for his opinion, and the case was such that it was not necessary that this point should be maturely considered. The practical construction by Judge Cowen of his own contract, in opposition to his interest, is cited in the decision to which we are now referring, together with the fact that the judge died in 1844, three years after the expiration of the first term of the copyright. On this it said, with some emphasis, (24 Howard's Practice Cases, 72,) that he had all this time acquiesced in the claim of the assignee." The decree was that the contract be reformed accordingly.

66

Statement of the case.

In the case now before us the construction contended for by the appellants was, for the first time, urged by letter of Mr. Paige, 13th January, 1858, addressed to the appellees, who replied on 3d February following, asserting their absolute right of ownership, with an unlimited license to publish and sell. The parties lived together after this in the same State until 31st March, 1868, when Paige died, a period of ten years, during which no further notice was ever taken of this subject, and no attempt by Paige, by act or protest, to interfere with the exercise of the right of the appellees to publish and sell. It is difficult to account for this long acquiescence upon any assumption that Paige, after the receipt of the reply to the publishers, had faith in the construction now urged. If this agreement needed any extraneous aid to indicate the intention of the parties, this acquiescence would certainly be persuasive of the view we have taken of it.

DECREE AFFIRMED.

MOWRY v. WHITNEY.

(14 Wallace, 434.)

1. The ancient mode of annulling or repeating the king's patent was by scire facias, generally brought in the chancery where the record of the instrument was found. 2. In modern times the court of chancery, sitting in equity, entertained a similar juris diction by bill when the ground of relief is fraud in obtaining the patent, and in this country it is the usual mode in all cases, because better adapted to the investigation and to the relief to be administered.

3. But scire facias could only be sued out in the English courts by the king or his attorney general, except in cases where two patents had been granted for the same thing to different individuals, and the sixteenth section of the act of July 4th, 1836, concerning patents for inventions, is based upon analogous principles. 4. Both upon this authority and upon sound principle no suit can be brought to set aside, annul, or declare void, a patent issued by the government, except in the class of cases above mentioned, unless brought in the name of the government or by the authority or permission of the Attorney General, so as to be under his control.

APPEAL from the Circuit Court for the Eastern District of Pennsylvania; the case being thus:

Asa Whitney, of Philadelphia, had obtained, on the 25th April, 1848, a patent for fourteen years for an improvement in annealing and cooling cast-iron car-wheels. This patent expired, of course, by its terms, on the 25th of April, 1862.

Just before its expiration, that is to say, on the 21st of March, Albert Mowry, of Cincinnati, also obtained a patent for fourteen

Statement of the case.

years, for a process for annealing car-wheels, of which he professed to be the inventor.

In March, 1862, Whitney-the expiration of his patent now approaching-applied to the Commissioner of Patents for an extension of the patent for seven years more. This extension was applied for in pursuance of a provision of the Patent Act of 1848, (act of May 27th, 1848, 6 Stat. at Large, 231, amending the act of July 4th, 1836, 5 Id., 124,) which authorizes an extension where. the patent has not been remunerative, and the act, therefore, requires that the patentee when applying for the extension shall

"Furnish to the Commissioner of Patents a statement in writing, under oath, of the ascertained value of the invention, and of his receipts and expenditures sufficient in detail to exhibit a true and faithful account of loss and profit, in any manner, accruing to him from, and by reason of, the said invention."

Whitney did furnish to the Commissioner a statement, which purported to be such as the act required; and accordingly the extension was granted April 25th, 1862, for seven years from that date, or in other words, until 25th of April, 1869.

On the 21st of March, 1866, Whitney filed a bill in the Circuit Court for the Southern District of Ohio, to enjoin Mowry against proceeding in his business of annealing car-wheels, on the ground that he, Mowry, by his process of annealing, was infringing his, Whitney's, patent; and it being decided in the Circuit Court April 5th, 1867, on the hearing of the case, that Mowry was, by his plan of annealing, infringing Whitney's patent, the question of damages came up. This being referred to a master, Whitney, in order to swell his damages, sought to prove (as Mowry alleged) that his profits had been very large; greatly larger than what he had sworn. they were in the statement which he made before the Commissioner when seeking his extension.*

Hereupon, April 7th, 1870, Mowry filed a bill in chancery in the court below, representing the fact of Whitney's patent, and of the extension of it, (annexing as exhibits all the patent, the certificate of extension, and all the affidavits and estimates on which the extension had been granted;) setting forth his own patent, that he was sued by Whitney in a suit still pending; that in the progress of investigation necessary to his defense in that suit he had discovered the fraud by which the extension was obtained, and praying that it might be declared that Whitney's letters, granted on the

*For an account of this controversy see infra, p. 411.