[178]

And for any of the above offences an action lies at the instance of the proprietor for[966]—

Penalties and forfeiture of copies may also be obtained by summary proceedings before any two justices having jurisdiction where the party offending resides.[972]

It is further an offence—

For any of which an action lies at the instance of the proprietor of the copyright for[973]—

In addition to sections 6 and 11, where importing is treated as an infringement involving penalties and damages, section 10 contains a direct prohibition against importing copies "made contrary to the provisions of the Act," and on the declaration of the proprietor such copies may be detained by the officers of Customs.[976]

Cause or Procure.—It is equally an offence to "cause or procure" any of the above acts.[977] It may be sometimes difficult to determine whether a person has "caused or procured" within [179] the meaning of the section. In Bolton v. London Exhibitions[978] the defendants ordered a poster for the advertisement of their exhibition at Earl's Court; they gave the lithographer a general idea of what was wanted, and told him to do his best. The lithographer, in preparing the poster, infringed the copyright in the plaintiff's photograph of a lion. It was held that as the defendants did not authorise the reproduction of the plaintiff's lion they had not "caused or procured" the infringement complained of; the action against them was therefore dismissed, but without costs, as they should have exercised more care in the matter.

Innocent Agent.—If a publisher procures a printer to strike off copies of an infringement, the printer is liable even although he is entirely innocent. It was argued in Baschet v. London Illustrated[979] that the printer was only liable if he printed for his own use, and that if another caused or procured him to print, it was only the person causing or procuring who was liable. It was held that both the employers and employees were liable for the same offence.

Unlawful Copy.—If a copy is made in a foreign country in which the proprietor's copyright is not protected, such copy is not a copy "unlawfully made," and therefore no penalties will attach under section 6 for knowingly importing or selling such copy;[980] but under section 11 damages may be sued for, since under that section it is an offence to import or sell copies made without consent, and delivery up may be claimed under the same section, because such copies when offered for sale become unlawful copies although not unlawfully made.[981] The same distinction applies to selling or importing copies made before registration, such copies not being "unlawfully made."[982]

Separate Offence.—Each piratical copy made or dealt with, and not only each transaction, is an offence under section 6, and involves a separate penalty.[983] Blackburn, J., says in ex parte Beal:[984]

"It would be a monstrous absurdity if a man might import a cargo of [180] pirated works from France and £10 be the utmost penalty that could be imposed. Such a state of the law would render it worth a man's while to do wrong."[985]

It was held in several cases[986] that as ¹/₄d. was the smallest coin of the realm, the minimum penalty must be ¹/₄d. for each copy. This has now been overruled in the Court of Appeal in Hildesheimer v. Faulkner,[987] and a fraction of ¹/₄d. can be assessed as the penalty.

Copying for Private Use will probably not be actionable, since the offence is to copy, &c., for sale, hire, exhibition, or distribution.[988] Gratuitous distribution would, however, be actionable.

Action on Breach of Contract.—Although no action may lie for infringement, either because the party aggrieved has no copyright or is not duly registered, there may be a remedy for breach of contract express or implied. Thus if A contract to make copies of B's drawing, even although B has no copyright therein, it is a breach of contract for A to make any copies other than for the use of B.[989] And again, a photographer who has been employed by a customer to take his portrait is not justified in striking off copies of such photograph for his own use, or selling or exhibiting them by way of advertisement or otherwise, without the authority of such customer express or implied, and even although the customer is not registered as proprietor of the photograph.[990]

Fraudulent Acts.—The following acts if committed fraudulently are rendered penal by the Act:[991]

For any of these fraudulent acts the person aggrieved may recover by action[993]—

But such penalties will not be incurred if the person whose name or work has been fraudulently dealt with has been dead for more than twenty years.

Limitation of Action.—There is no special limit fixed by the Act of 1862, and therefore the remedy on an offence within the statute will not be barred for six years.[994]

Evidence.—In any action for the infringement of copyright in a picture, it will be sufficient to produce in evidence an authenticated copy of the picture, e. g. a photograph with the oral evidence of the photographer.[995]

What is a Piratical Copy.—No Monopoly.—There can be no monopoly of the subject-matter of a painting, drawing, or photograph. Another artist may independently represent the same scene or object as that represented in a copyright work.[996]

What is a Copy.—A piratical copy need not necessarily be an artistic work of the same kind as the work pirated. Thus an oil painting is infringed by a photograph of it,[997] and a photograph may be infringed by a pencil sketch.[998] An infringement may consist of either a taking of the design or a taking of the method of execution, or both. Thus an infringement need not even be a kind of work which would be protected by this Act. Although there is no direct authority, it is clear from section 2, which gives the exclusive right to the design of the work protected, that an engraving would be an infringement [182] of a painting, drawing, or photograph, and so perhaps might a piece of sculpture.[999] Then again the design may not be copyright, for instance, in the case of a photograph of a non-copyright picture, and yet it would be an infringement to take a photograph of such a photograph. That would be a taking of the method of execution.[1000]

The infringement must be an artistic work of some kind, i. e. such a work that would be protected if not under the Act of 1862, under the Engraving Acts or Sculpture Act. In Hanfstaengl v. Empire Palace[1001] the Court held that the grouping of people on a stage so as to form tableaux vivants was not an infringement in the copyright of a picture thus represented. Kay, L. J., in his judgment, said:

"Could it possibly have been said the tableaux vivants were pictures within the sense of this Act, and does not a reproduction mean something in which, if the original author of the painting had himself produced it, he might have had copyright."

General Idea may be Taken.—It is not an infringement to take merely the general idea of subject-matter and treatment from a copyright work of art. In Hanfstaengl v. Baines,[1002] the tableaux vivants which were the subject of the last case cited were sketched and reproduced in the Daily Graphic. It was contended that these sketches infringed the copyright in the pictures from which the tableaux vivants were taken. The House of Lords, affirming the judgment of the Court of Appeal, held that they did not. Lord Herschell, L. C., in giving judgment, pointed out that the essence of the design varied according to the nature of the picture. Sometimes it might be principally in the grouping of the figures, sometimes in the pose and countenances. Referring to one of the sketches complained of, he said:

"There is no doubt a resemblance between the sketch and the photograph from the painting. In each case a young man and a young woman [183] are standing beside one another close to a stile or fence. In each case the woman is shading her head by a parasol, and the dress of the man is somewhat similar in the two, but the idea of a young man courting a young woman at a country stile is of great antiquity. It has often formed the subject of pictorial representation. This cannot be said to be the design of the plaintiff's painting within the meaning of the Act. Much more must be comprehended than this. There can only be a copy of such design if the treatment of the subject be the same. Now, comparing the sketch of the photograph from the painting, I do not think this can be said to be the case. The faces are different, the dress especially in the case of the woman is different, the pose is different, the attitudes are different, the backgrounds are different, and in the case of the sketch the foreground is wanting. In the artistic design all these things play a part, although I do not say that a variation in one or even more of these respects would prevent the sketch being a copy of the design. Yet, comparing the two and considering the design of the painting as a whole, I cannot avoid the conclusion that the sketch is not a copy of the painting or of the design thereof, and therefore there has been no infringement."

His lordship concluded by saying that such questions really depended on the effect produced on the mind by a study of the picture and of that which is alleged to be a copy of it. In Guggenheim v. Leng[1003] the plaintiff was the owner of the copyright in a photograph of a football team. The defendant, without authority, made from the photograph rough sketches of the various individual portraits, and published them in his newspaper. It was held not to be an infringement.

Material Part.—There is no piracy of an artistic work unless a material part of the work is taken. What amounts to a material part must be a question of fact in each case, and it is impossible to lay down any definite rule. In Moore v. Clarke[1004] a horse was taken from a copyright print and inserted in another print among different surroundings. In the second print the horse appeared to be going in a different direction, and the jockey on his back was differently dressed. The judge directed the jury to consider whether the defendant's engraving was substantially a copy of the plaintiff's, and the jury came to the conclusion that it was not. In Brooks v. Religious Tract Society[1005] a collie dog, identical in expression, attitude, and position, was, together with a wall in [184] the background and a table, taken from a copyright picture and inserted in a woodcut. The woodcut differed from the picture in that the figure of a child was omitted, and in its place two cats and a tortoise and other details were inserted. Romer, J., held that there was a piracy:

"It was not only the dog that was taken, but also the feeling and artistic character of the plaintiff's work.... If a person were to take an historical picture, and take out of it the principal figure, and reproduce that figure without the other surroundings, that would be an infringement. The present case was a stronger case, because the defendants had not only taken the principal figure of a dog, but copied as well the sentiment of the picture."

Indirect Taking.—It is equally an infringement, although the copying is indirect.[1006] Thus, for instance, the photograph of an engraving may infringe the copyright of the picture from which it is taken.[1007]

Guilty Knowledge.—It is no defence to say that the taking was an innocent one and unintentional.[1008] In the case of a claim for penalties in respect of importing or selling piratical copies, knowledge of infringement must necessarily be proved, but in no other case. But the question of intention cannot always be wholly disregarded, as it may guide the Court in determining whether the alleged infringement is a copy or not.[1009]

Replicas.—It is an infringement of the proprietor's right for an author who has parted with his copyright to make a replica of the work; but if he has made replicas before selling his copyright it would be no infringement to sell these replicas. Quære whether it would be an infringement after selling his copyright in the original work to take photographs or engravings of the replicas; probably it would.

Licence a Defence.—Licence must be in writing, signed by the proprietor of copyright or by his agent authorised in writing;[1010] but probably an oral consent would be a good defence.[1011][185]

An assignee is not bound by a licence granted by the assignor before the assignment, unless he has notice of it.[1012]

The licensee will be kept strictly within the limits of his licence. When a licence was granted to reproduce a photograph in one magazine, it was held an infringement of copyright to reproduce it in another, and the contention that there was a custom in the publishing trade allowing this to be done on tender of payment was characterised as ridiculous.[1013][186]

CHAPTER IX
COLONIAL COPYRIGHT

Every British Possession has the power to legislate independently as regards the protection within its own territory of literary or artistic works first produced therein.[1014] In respect of such works they may either limit or extend the protection afforded by the Imperial Acts. Most of our larger colonies have local Acts.[1015] Some of the colonies[1016] have, for instance, created a copyright in the news contained in foreign telegrams, a monopoly unknown under the Imperial Acts. It is not proposed here to deal with the colonial local Acts. They are of interest only in the various colonies themselves. This chapter will be restricted to the rights of a work published in one part of the British dominions to receive protection in any other part of the British dominions. This is controlled by the Imperial Copyright Acts, which extend since 1886 to every British Possession, and protect works published anywhere therein apart from any local legislation.

Books.—Before 1886, the Copyright Act, 1842, although it applied to the whole of the British dominions, only protected those books which were first published in the United Kingdom. A book, therefore, published first, say in Canada or Australia, received no copyright protection except by local legislation, if any, within the territory of the particular colony where it was first published.

A book first published in the United Kingdom was protected in every British colony, not only against copying but against [187] the importation of reprints. The smaller and poorer colonies found this a considerable grievance. They alleged that they were unable to afford the price of English books, and that as they were prohibited from importing foreign reprints and had little or no contemporary literature of their own, they were reduced to reading the classics or nothing at all. The Colonial Copyright Act, 1847,[1017] was passed to give them relief. It enacts that when reasonable protection to the British author shall be provided in any British possession by the legislature of such possession, Her Majesty may, by Order in Council, declare that so long as such protecting provision shall be in force all Acts prohibiting the importation or sale or hire of foreign copies shall be in respect of such possession suspended. Altogether twenty colonies[1018] have taken advantage of this Act. It has been found, however, that the protecting provisions are of little value, and that the duties which are supposed to be levied on foreign reprints for the benefit of the British author are continually evaded, and the colonies under the Foreign Reprints Act are overrun with foreign reprints of popular books which, coming in practically free of duty, make the authors' copyright in such colonies absolutely valueless.

Books first published in the colonies received Imperial protection in 1886, when the International Copyright Act[1019] of that year was passed. It enacts that the Copyright Acts shall apply to a literary or artistic work first produced in a British Possession in like manner as they apply to a work first produced in the United Kingdom,[1020] with a proviso, firstly, that the enactments as to registration shall not apply if the law of the Possession in question provides for registration; and, secondly, that no delivery of copies shall be required. There is also a provision [188] for evidence of colonial copyright by certified extract from the colonial register.

Canada came under the Foreign Reprints Act, and, as a result, was so inundated with cheap reprints from the United States that the Canadian publishers, in 1875, obtained a local Act for their protection.[1021] This Act enacts that works of which the copyright has been granted and is subsisting in the United Kingdom, and copyright of which is not secured or subsisting in Canada under any Canadian or provincial Act, shall, upon being printed and published or reprinted and republished in Canada, be entitled to copyright under the Canadian Act.[1022] It prohibits inter alia copying and importation of foreign copies, but nothing in the Act is to be held to prohibit the importation from the United Kingdom of copies of such works legally printed there. The Canadian Act is confirmed by an Imperial Act, the Canada Copyright Act, 1875,[1023] and this enacts that the Canadian copies of a British book may not be imported into the United Kingdom without the author's consent.

Although Canada came under the Foreign Reprints Act, 1847,[1024] and in accordance therewith imposed duties on foreign reprints for the benefit of the owner of the copyright, the collection of those duties has now been abandoned by the Tariff Customs Act (Canada), 1894,[1025] the result of which is that as regards Canada the provisions of the Imperial Copyright Act, 1842,[1026] section 17, are revived and the importation of foreign copies of works having an Imperial copyright is again prohibited.[1027] The same result will occur in other colonies which may by statute abandon their enactments for the collection of authors' duties.

The Canadian Legislature has recently passed a Copyright Act[1028] purporting to affect the importation into Canada of books published under an Imperial Copyright. The Act provides that if a book has acquired Imperial Copyright by first publication in the British dominions outside Canada, and a licence has been [189] granted for its reproduction in Canada, the Canadian Minister of Agriculture may prohibit the importation into Canada of any copies of such book printed out of Canada and imported without the licensee's consent.

I think it is doubtful whether the last-mentioned Act is not ultra vires of the Canadian Legislature. The Canadians have, since the British North American Act, 1867, claimed that they have the exclusive power of legislating in respect of and regulating copyright within the Dominion of Canada. This claim, however, has not been recognised in the Canadian courts. In Smiles v. Belford[1029] a book was copyrighted in England, but not under the local Act of 1875 in Canada. An action was brought by the proprietor to restrain a reprint of the book in Canada. The defendants pleaded that the book was not protected in Canada since it was not copyrighted under the local Act. They argued that the British North American Act, in giving to the Parliament of Canada "exclusive legislative authority" in certain matters, including copyrights, excluded the operation of the Imperial Acts in Canada. They further argued that the confirmation of the Canadian Copyright Act, 1875, by the Imperial Parliament impliedly repealed the Imperial Copyright Act of 1842 in so far as it extended to Canada. The Court held that neither of these arguments was sound. With reference to the argument on the British North American Act, Burton, J. A., in the Court of Appeal, said:

"It is clear, I think, that all the Imperial Act intended to effect was to place the right of dealing with colonial copyright within the Dominion under the exclusive control of the Parliament of Canada, as distinguished from the provincial legislatures.... I entirely concur with the learned Vice-Chancellor in the opinion he has expressed that under that Act no greater powers were conferred upon the Parliament of the Dominion to deal with this subject than had been previously enjoyed by the local legislatures."

As regards the Imperial Act confirming the Canada Copyright Act, 1875, the Court held that it was passed merely to resolve doubts which would otherwise have arisen as to whether the Canada Copyright Act was not repugnant to the provisions [190] of the Foreign Reprints Act, 1847, and the Order in Council thereunder applicable to Canada. Burton, J. A., said:

"It is scarcely reasonable to suppose that if the Imperial Parliament had thought fit to accept the Canadian enactment as a substitute for the 5 & 6 Vict. they would not have repealed it so far as it affected Canada in express terms, or that when stating a reason for Imperial legislation they would have confined themselves to a reference to the Order in Council, which dealt only with a portion of the prohibition referred to in that statute. I am of opinion, therefore, that they have stated the only reason which rendered it expedient to seek a confirmation of the Provisional Act, and that it was intended to preserve intact so much of the Imperial Act as prohibits the printing of a British copyright work in Canada, but giving to the author a further right on certain conditions of securing a Canadian copyright and thus preventing the importation into Canada of foreign reprints."

For some considerable time before the passing of the Canadian Act of 1900, the Canadians were negotiating for a clause in the Copyright Bill in this country enabling them to pass a similar provision to that which they have now passed without Imperial sanction. A clause was inserted in Lord Monkswell's Literary Copyright Bill, 1900, proposing to give to all the colonies such a power of protecting licensees. The Canadians, however, impatient of the delay in copyright reform in this country, passed their own Act without waiting to obtain authority. It would certainly be satisfactory to see it confirmed by an Imperial statute.

Summary of Provisions in respect of Books.—The result of the various enactments with reference to the colonies is that, as regards copying, every book first published in any part of the British dominions is protected in every other part of the British dominions. The book must be duly registered either in the colony or dependency where it is produced, or, if such colony or dependency does not provide a proper system of registration, at Stationers' Hall in London. The protection within the colony in which a book is first produced depends on local legislation if such overrides the Imperial legislation. As to importation of copies, the result is not so simple, but it may be summarised thus:

If a book has been first published anywhere within the British dominions, the following prohibitions apply: [191]

I. The United Kingdom.—There shall not be imported into, or sold in, without the consent in writing of the owner of the copyright—

II. Canada.—If the book has been printed and published, or reprinted and republished,[1032] and registered in Canada, there shall not be imported into, or sold in, without the consent in writing of the owner of the copyright—

Copies printed outside Canada[1033] unless legally printed in the United Kingdom under an Imperial copyright existing prior to the acquirement of a Canadian local copyright.[1034]

If a book has acquired Imperial copyright by first publication within the British dominions outside Canada, and the owner of the copyright has granted a licence to reproduce it in Canada, there shall not be imported (if the Minister of Agriculture so order) without the consent in writing of the Canadian licensee—

Copies printed outside Canada.[1035]

In other cases these shall not be imported or sold without the written consent of the owner of the copyright—

Copies printed outside the British dominions.

III. Colonies under the Act of 1847 other than Canada.—There is no prohibition except the nominal import duty on copies printed outside the British dominions.

IV. Other Colonies.—There shall not be imported into or sold in without the consent in writing of the owner of the copyright—

Copies printed outside the British dominions.[1036]

Artistic Works.—We have seen that since the International Copyright Act, 1886, there is complete protection throughout the whole of the British dominions for books first published anywhere therein. It was evidently intended that artistic works should be placed on the same footing, but unfortunately the distinction between the literary and artistic Acts was overlooked.[192] The Copyright Act, 1842, protected books published in the United Kingdom, but expressly extended the protection to the whole of the British dominions. None of the artistic copyright Acts extend their protection beyond the United Kingdom. The Engraving Acts expressly limit their protection to the United Kingdom;[1037] the Paintings, Drawings, and Photographs Act expressly limits its remedies to the United Kingdom;[1038] and the Sculpture Act is silent as to the extent of its protection.[1039] The result seems to be that although since 1886 all works of art first published anywhere throughout the British dominions will be protected by Imperial legislation, that protection extends no further than the United Kingdom. This has been decided by a divisional Court in Canada in respect of the Paintings, Drawings, and Photographs Act, 1862.[1040] The decision will apply a fortiori to engravings. Sculptures may be different, in that there is no express limit contained in the Sculptures Act; but probably a limitation of protection to the United Kingdom will be implied. The result is that artistic works are only protected in the Colonies and dependencies under local legislation.[193]

CHAPTER X
INTERNATIONAL COPYRIGHT

Works first produced in His Majesty's Dominions are protected in those foreign countries with which there is a treaty for the mutual protection of literary and artistic rights. These countries are the signatories of the Berne Convention,[1041] and Austria-Hungary, with which there is a separate treaty on similar lines. Generally it may be presumed that each of these countries has by domestic legislation given full effect to the international agreement, and that all works which are protected in this country, and would have been protected if first produced in the foreign country in question, will receive the same protection there as would be accorded to a work first produced in such foreign country. The protection, however, must be sought in the foreign country and not here. The Courts of this country will not grant any redress for the infringement of a British author's copyright in a foreign State, even although such infringement be perpetrated by a British subject resident in England.[1042]

Works first produced in foreign countries with which this country has no treaty are in no way protected from infringement in the United Kingdom, unless they are produced within His Majesty's dominions simultaneously with their production elsewhere.[1043]

Works first produced in foreign countries with which this country has a treaty are protected from infringement in His Majesty's dominions by the domestic legislation of the United Kingdom.

Before December 6, 1887, foreign works were protected by virtue of the International Copyright Acts of 1844, 1852, and [194] 1875, and numerous Orders in Council, now revoked, giving effect to treaties with various foreign States. As the subsequent provisions under the International Copyright Act, 1886, are retrospective, it is unnecessary to examine the old law in any detail. On one important point, however, it will be necessary to mention some of the provisions of the International Copyright Acts which were applicable before December 6, 1887, since the subsequent legislation, in giving protection to works which were produced before that date and were then unprotected, enacts that its retrospective effect shall not prejudice rights and interests lawfully acquired before it came into operation. The law before 1887 has to be examined to determine what these rights and interests are.

Since December 6, 1887, the rights of foreign authors in His Majesty's dominions have depended on the provisions of the International Copyright Acts of 1844, 1852, 1875, and 1886, the Berne Convention of 1887, and an Order in Council of November 28, 1887. To these are now added the Additional Act of Paris, 1896, and an Order in Council of March 7, 1898. These may now all be read together, and apply to all foreign works first produced in the countries to which they are applicable. It should be mentioned here that Austria-Hungary has a convention of its own, and in dealing with works produced there that convention and the Orders in Council giving it effect must be substituted for the Berne Convention and Additional Act of Paris and the Orders in Council above mentioned. Norway has not become a signatory of the Additional Act of Paris, and therefore in dealing with works produced there the Berne Convention must be read as unmodified by the Additional Act.

It is proposed to deal here in detail with the provisions of the Acts, Orders in Council, and treaties as they apply to the majority of the foreign countries, i. e. those which are signatories of the Berne Convention and the Additional Act of Paris. As regards Norway and Austria-Hungary the law differs very slightly. The law applicable to Norway can easily be ascertained by reading the Berne Convention without the Additional Act. The law applicable to Austria-Hungary is almost identical, except that it affords protection in the United Kingdom and all [195] colonies except Canada, the Cape, New South Wales, and Tasmania, and not in the whole of His Majesty's dominions, as in the case of the signatories to the Berne Convention.

The countries whose works are protected in His Majesty's dominions are as follows:

What Foreign Works are entitled to Protection.—Those works are protected which are first produced in any of the foreign countries of the Union, and which—