Section 4966 of the Revised Statutes, enacting that
"any person publicly performing or representing any dramatic
composition for which a copyright has been obtained, without the
consent of the proprietor thereof, or his heirs or assigns, shall
be liable for damages, therefor, such damages in all cases to be
assessed at such sum, not less than one hundred dollars for the
first, and fifty dollars for every subsequent performance, as to
the court shall appear to be just,"
is not a penal statute and neither provides for the recovery of
a penalty nor a forfeiture.
This action, being brought to recover damages for the violation
of a dramatic copyright, and not being one to recover either a
penalty or a forfeiture, the circuit court had jurisdiction of it
by virtue of Rev.Stat. § 629, Subdivision 9, which confers
upon Circuit Courts jurisdiction of all suits at law or in equity
arising under the patent or copyright laws of the United
States.
In the absence of any federal statute of limitations, an action
like this is limited by the limitation existing for the class of
actions to which it belongs in the state where it was brought.
The question, as an original one, of how far a copyright of a
play protects any particular scene therein from being publicly
produced or represented by another, aside from the dialogue
contained in the play, is not before the court in this case.
There was no election of an inconsistent remedy, which would bar
the plaintiff from recovering in this action.
This was an action at law brought by Augustin Daly, and
prosecuted since his death by the executors of his will, for
Page 175 U. S. 149
the violation of a dramatic copyright. In 1867, Daly was the
owner of a dramatic composition entitled "Under the Gaslight," and
in that year he took out a copyright therefor in the United
States.
The play was produced by Daly and his licensees, and became
quite popular, and he derived considerable profit from its
production by himself and from the royalties he received. The chief
value of the play and its popularity depended upon an incident in
the third scene of the fourth act, commonly described as the
railroad scene, where one of the characters is laid helpless upon a
railroad track upon which a railroad train is momentarily expected
that will run him down and kill him, and just at the last moment
another of the characters contrives to reach the intended victim
and drag him from the track as the train rushes in and passes over
the spot.
After the play was produced, Dion Boucicault prepared a play
called "After Dark," in which he introduced a railroad scene
differing but slightly and only colorably from that which appeared
in "Under the Gaslight." The plaintiff in error, defendant below,
without the consent of Daly, produced and procured to be publicly
performed on the stage in divers cities the play "After Dark,"
including the railroad scene.
On the 20th of May, 1889, Daly brought a suit in equity against
the plaintiff in error herein, in the Circuit Court of the United
States for the Southern District of New York, in which he prayed
that the defendant might be perpetually enjoined from the further
performance of the play "After Dark" upon the ground that the
performance was an infringement of the copyright of his play "Under
the Gaslight," and he asked for an accounting for all money and
profits received by the defendant in that suit by reason of the
performance of the play "After Dark" and of the railroad scene
therein.
The complainant moved for a preliminary injunction, which was
denied upon the ground that there was a material variance between
the registered title and the published title of "Under the
Gaslight," and that therefore the complainant had not a valid
copyright.
Daly v. Brady, 39 F. 265. After the taking of
proofs on the issues joined by the defendant's
Page 175 U. S. 150
answer, the circuit court, following the decision of the court
upon the motion for an injunction, dismissed the bill with costs.
Daly v. Webster, 47 F. 903. An appeal was taken by Daly
from this decree to the circuit court of appeals, where it was
reversed and the cause remanded with instructions to enter the
usual decree for an accounting and a perpetual injunction, the
circuit court of appeals holding that the plaintiff's copyright was
valid, and the railroad scene in his play was itself a dramatic
composition and protected by the plaintiff's copyright, which had
been infringed by the defendant in the production of the play
"After Dark" with the railroad scene therein.
Daly v.
Webster, 56 F. 483. The only charge of infringement consisted
in the production of that scene.
Pursuant to the mandate of the circuit court of appeals, a
decree for a perpetual injunction was entered by the circuit court
November 5, 1892, and it was referred to a master to take proof of
the number of unauthorized performances of the play "After Dark,"
with the railroad scene, which had been given by the defendant. The
court did not direct the master, either in the decree or in the
order of reference, to ascertain anything in regard to profits; no
evidence was offered before him upon that subject, and no finding
was made thereon. A final decree in the case, accepting the
master's report and making his findings the findings of the court,
was entered on April 1, 1893, but no decree for profits was asked
or rendered.
Another appeal was taken to the circuit court of appeals, and
the decree affirmed, with costs, June 7, 1893. 11 U.S.App. 791.
The mandate of the circuit court of appeals on this second
appeal was filed in the circuit court June 14, 1893, and a decree
in conformity therewith duly entered. The defendant attempted to
obtain a review of the judgment against him by appealing to this
Court, but his appeal was dismissed for the reasons stated in
Webster v. Daly, 163 U. S. 155.
The present action was commenced July 14, 1893, by Daly against
Brady, the plaintiff in error herein, in the United
Page 175 U. S. 151
States Circuit Court for the Southern District of New York to
recover damages for the violation of his copyright, placing their
amount at $13,700. The complaint contained two counts, the first
making no reference to section 4966 of the Revised Statutes, while
the second alleged that the defendant had infringed his copyright
in violation of the provisions of that section, and that,
"by virtue of the provisions of said act of Congress [the
copyright act] and of said section 4966 of the Revised Statutes of
the United States, the defendant then and there became liable to
pay to said plaintiff the sum of $13,700, lawful money of the
United States, as damages."
The answer of the defendant denied the infringement and set up
various defenses which are noticed in the following opinion. A jury
trial was waived, and the court found the facts as above stated,
and held that the copyright obtained by Daly was good and valid and
covered and protected the railway scene already described, that the
acts of the defendant were in disregard of the copyright and of
plaintiff's exclusive rights therein.
It was also found by the court that the evidence did not
authorize an increase of the damages above the minimum amount
provided for by section 4966 of the Revised Statutes, and that it
had no power to establish a rule of damages below the minimum
amount provided for therein, and that such section should be
construed as penal, rather than remedial in its character. The only
testimony in this action on the hearing before the master as to the
number of representations which the defendant Brady had given that
were infringements of the plaintiff's copyright, and upon which a
judgment for damages could be based, was the evidence of the
defendant in the equity suit above mentioned, and introduced before
the master in this action, and such evidence the court decided was
inadmissible for that purpose upon the ground that evidence
obtained from a party by means of judicial proceedings could not be
used against him for the enforcement of a penalty, and because, of
the absence of all legal evidence as to the number of
representations, the defendant was entitled to judgment refusing
any recovery for damages.
Page 175 U. S. 152
Subsequently, upon application to the court, the cause was
opened and testimony, entirely independent of that of the defendant
in the plaintiff's examination of him in the accounting before the
master in the equity suit, was presented as to the number of times
the play of "After Dark" had been produced by the defendant with
the railroad scene in it, and upon that evidence a finding was made
that the plaintiff was entitled to judgment against the defendant
of $50 for each performance falling within the period of two years
prior to the commencement of the action -- that is to say, for 126
performances, or the sum of $6,300 with costs. The court restricted
the plaintiff's right to damages to two years because it held that
the action was brought to recover a penalty, and that the two
years' statute of limitations applied. The defendant brought the
case by writ of error before the Circuit Court of Appeals for the
Second Circuit, where the judgment was affirmed,
Brady v.
Daly, 83 F. 1007, and he then sued out a writ of error from
this Court, and the case is now here for review.
MR. JUSTICE PECKHAM, after stating the facts, delivered the
opinion of the Court.
The first objection made by the plaintiff in error to the
judgment in this case is that the circuit court had no jurisdiction
of the action, because it was brought to recover a penalty or
forfeiture under section 4966 of the Revised Statutes, and it was
contended that the district courts of the United States have by law
exclusive jurisdiction over that class of actions.
Whether the district courts still have exclusive jurisdiction
over an action to recover for a forfeiture or a penalty arising
from a violation of the copyright act, it is not necessary to
Page 175 U. S. 153
here determine, because we think that section 4966 of the
Revised Statutes, upon which this suit is founded, is not a penal
statute, and therefore the action in this case is not one to
recover either a penalty or a forfeiture, and the circuit court had
jurisdiction of the action by virtue of section 629 of the Revised
Statutes, subdivision 9, which grants jurisdiction to the circuit
courts "of all suits at law or in equity arising under the patent
or copyright laws of the United States." Section 4966 of the
Revised Statutes reads as follows:
"Any person publicly performing or representing any dramatic
composition for which a copyright has been obtained, without the
consent of the proprietor thereof or his heirs or assigns, shall be
liable for damages therefor, such damages in all cases to be
assessed at such sum, not less than one hundred dollars for the
first, and fifty dollars for every subsequent performance, as to
the court shall appear to be just."
The Act of August 18, 1856, 11 Stat. 138, c. 169, was the first
federal statute which conferred upon the author or proprietor of
any dramatic composition designed or suited for public
representation,
"along with the sole right to print and publish the said
composition, the sole right also to act, perform, or represent the
same, or cause it to be acted, performed, or represented, on any
stage or public place during the whole period for which the
copyright is obtained."
The same act further provided that any
"manager, actor, or other person acting, performing, or
representing the said composition, without or against the consent
of the said author or proprietor, his heirs or assigns, shall be
liable for damages to be sued for and recovered by action on the
case or other equivalent remedy, with costs of suit in any court of
the United States, such damages in all cases to be rated and
assessed at such sum not less than one hundred dollars for the
first, and fifty dollars for every subsequent performance, as to
the court having cognizance thereof shall appear to be just."
Section 101 of chapter 230 of the Statutes of 1870, 16 Stat.198,
214, reenacted the provision of the act of 1856,
Page 175 U. S. 154
giving damages to the proprietor of any dramatic composition
against any person wrongfully representing the same. Then came the
revision of the statutes, and section 4966 embodies the provisions
contained in the above-mentioned acts of 1856 and 1870 in regard to
the recovery of damages.
These statutes, it will be perceived, all use the word "damages"
when referring to the wrongful production of a dramatic
composition. No word of forfeiture or penalty is to be found in
them on that subject. It is evident that in many cases it would be
quite difficult to prove the exact amount of damages which the
proprietor of a copyrighted dramatic composition suffered by reason
of its unlawful production by another, and yet it is also evident
that the statute seeks to provide a remedy for such a wrong, and to
grant to the proprietor the right to recover the damages which he
has sustained therefrom.
The idea of the punishment of the wrongdoer is not so much
suggested by the language used in the statute as is a desire to
provide for the recovery by the proprietor of full compensation
from the wrongdoer for the damages such proprietor has sustained
from the wrongful act of the latter. In the face of the difficulty
of determining the amount of such damage in all cases, the statute
provides a minimum sum for a recovery in any case, leaving it open
for a larger recovery upon proof of greater damage in those cases
where such proof can be made. The statute itself does not speak of
punishment or penalties, but refers entirely to damages suffered by
the wrongful act. The person wrongfully performing or representing
a dramatic composition is, in the words of the statute, "liable for
damages therefor." This means all the damages that are the direct
result of his wrongful act. The further provision in the statute
that those damages shall be at least a certain sum named in the
statute itself, does not change the character of the statute and
render it a penal instead of a remedial one. The whole recovery is
given to the proprietor, and the statute does not provide for a
recovery by any other person in case the proprietor himself
neglects to sue. It has nothing in the nature
Page 175 U. S. 155
of a
qui tam action about it, and we think it provides
for the recovery of neither a penalty nor a forfeiture.
If, upon the trial of such an action, the court should find from
the evidence that the plaintiff had in fact sustained a greater
amount than the minimum sum of damages provided in the statute, and
should direct judgment in his favor for the sum so proved, would
that judgment be for a penalty? On the contrary, it would be for
the actual amount of damages which the evidence showed had been
sustained by the plaintiff, and his recovery of that sum would be
the recovery provided by the law for the wrong which he had
suffered. When the evidence does not warrant a greater than the
minimum recovery, the amount named in the statute still constitutes
the remedy provided by the law, which plaintiff can pursue.
In
Huntington v. Attrill, 146 U.
S. 657, there is a very full discussion of the meaning
of the word "penal" when used in reference to the maxim of
international law that "the courts of no country execute the penal
laws of another." In the course of the opinion in that case, it was
stated by MR. JUSTICE GRAY, speaking generally as to what
constituted a penal statute, as follows:
"The action of an owner of property against the hundred to
recover damages caused by a mob was said by Justices Willes and
Buller to be 'penal against the hundred, but certainly remedial as
to the sufferer.'
Hyde v. Cogan, 2 Dougl. 699, 705, 706. A
statute giving the right to recover back money lost at gaming, and,
if the loser does not sue within a certain time, authorizing a
qui tam action to be brought by any other person for
threefold the amount, has been held to be remedial as to the loser,
though penal as regards the suit by a common informer.
Bones v.
Booth, 2 W.Bl. 1226;
Brandon v. Pate, 2 H.Bl. 308;
Grace v. M'Elroy, 1 Allen 563;
Read v. Stewart,
129 Mass. 407, 410;
Cole v. Groves, 134 Mass. 471. As said
by Mr. Justice Ashhurst in the King's bench, and repeated by Mr.
Justice Wilde in the Supreme Judicial Court of Massachusetts, 'it
has been held in many instances that where a statute gives
accumulative damages to the party grieved, it is not a penal
action.'
Woodgate v.
Page 175 U. S. 156
Knatchbull, 2 T.R. 148, 154;
Read v.
Chelmsford, 16 Pick. 128, 132. Thus, a statute giving to a
tenant ousted without notice double the yearly value of the
premises against the landlord, has been held to be 'not like a
penal law, where a punishment is imposed for a crime,' but 'rather
as a remedial than a penal law,' because 'the act, indeed, does
give a penalty, but it is to the party grieved.'
Lake v.
Smith, 1 Bos. & Pul. (N.R.) 174, 179, 180-181;
Wilkinson v. Colley, 5 Burr. 2694, 2698. So, in an action
given by statute to a traveler injured through a defect in a
highway for double damages against the town, it was held
unnecessary to aver that the facts constituted an offense or to
conclude against the form of the statute, because, as Chief Justice
Shaw said:"
"The action is purely remedial, and has none of the
characteristics of a penal prosecution. All damages for neglect or
breach of duty operate to a certain extent as punishment, but the
distinction is that it is prosecuted for the purpose of punishment,
and to deter others from offending in like manner. Here, the
plaintiff sets out the liability of the town to repair, and an
injury to himself from a failure to perform that duty. The law
gives him enhanced damages, but still they are recoverable to his
own use, and in form and substance the suit calls for
indemnity."
"
Reed v. Northfield, 13 Pick. 94, 100-101."
Where the statute provides in terms, as the one before us does,
for a recovery of damages for an act which violates the rights of
the plaintiff and gives the right of action solely to him, the fact
that it also provides that such damages shall not be less than a
certain sum, and may be more, if proved, does not, as we think,
transform it into a penal statute.
So a statute which makes a person liable for his wrongful
neglect or default by which the death of another person is caused,
and which gives a right of action to the administrator for the
benefit of the widow and next of kin to recover damages for the
pecuniary injuries resulting from his death, thus altering the
common law and imposing a new liability, has been held by this
Court not to be penal, and to be enforceable in a state other than
the state in which the statute was
Page 175 U. S. 157
passed, and in which the wrongful act and death occurred.
Dennick v. Railroad Company, 103 U. S.
11;
Texas & Pacific Railway v. Cox,
145 U. S. 593;
Stewart v. Baltimore & Ohio Railroad, 168 U.
S. 45.
Although punishment, in a certain and very limited sense, may be
the result of the statute before us so far as the wrongdoer is
concerned, yet we think it clear such is not its chief purpose,
which is the award of damages to the party who had sustained them,
and the minimum amount appears to us to have been fixed because of
the inherent difficulty of always proving by satisfactory evidence
what the amount is which has been actually sustained.
The English statute of 3 & 4 Wm. IV., c. 15, entitled, "An
Act to Amend the Laws Relating to Dramatic Literary Property," by
its second section, provides that a person who wrongfully produces
and represents a dramatic composition
"shall be liable for each and every such representation to the
payment of an amount not less than forty shillings, or to the full
amount of the benefit or advantage arising from such
representation, or the injury or loss sustained by the plaintiff
therefrom, whichever shall be the greater damages, to the author or
other proprietor of such production so represented."
In
Chatterton v. Cave, L.R. 3 App.Cas. 483, 492, the
court, in speaking of this provision for damages, said that the
same
"was no doubt fixed because of the difficulty of proving with
definiteness what amount of actual damage had been sustained by
perhaps a single performance at a provincial theater of a work
belonging to a plaintiff, while at the same time his work might be
seriously depreciated if he did not establish his right as against
all those who infringed upon it."
This does not look as if that statute were regarded by the
English courts as one of a penal nature, but, on the contrary, as
one of a remedial kind providing for the recovery of the damages
sustained by the plaintiff, and providing for the recovery of a
minimum sum for the reason, as stated by the court, of the
difficulty of proving with definiteness in all cases the amount of
damages which plaintiff really had suffered.
Page 175 U. S. 158
The court below was, as is stated in the opinion, somewhat
influenced in its decision of this question by the belief that, if
this were not a penal statute, there was no federal statute of
limitations applicable to it, and said that it could hardly be
supposed that it was the intent of Congress to permit such a
statutory rate of damages to run without federal statutory
limitation. If there were no such federal statute, then the state
statute would apply. Although not an action to recover a statutory
penalty or forfeiture, still, in the absence of any federal statute
of limitations, it would be limited by the limitation existing for
the class of actions to which it belongs, in the state where the
action was brought.
Campbell v. Haverhill, 155 U.
S. 610,
155 U. S.
614.
We think the plaintiff in error fails to sustain his first
objection to the judgment herein.
Another objection made is that section 4966 renders defendant
liable only when substantially the whole of a copyrighted play is
produced, and not when merely a single incident in one of the acts
is represented.
In the equity suit between these parties, already referred to,
the complainant therein alleged that he had a copyright of the play
"Under the Gaslight," in which was the railroad scene which made up
the substantial value of the play and the one upon which the
profits of the production of the play depended, and that the
defendant had infringed upon the complainant's copyright by
producing that same railroad scene in the defendant's play of
"After Dark."
The answer of the defendant put in issue the existence and
validity of complainant's copyright, denied any infringement
whatever, and also raised the question whether there could be any
infringement where the only part of plaintiff's play that was
produced was the railroad scene as described.
Upon the trial of the issues, the complainant succeeded, and
obtained a decree which established the validity of his copyright,
and determined that the railroad scene in the complainant's play,
apart from the dialogue which accompanied the scene, was a dramatic
composition, and entitled to protection under the copyright laws.
Daly v. Webster,
Page 175 U. S. 159
56 F. 483. It determined also that there could be an
infringement of the copyright when the only part of plaintiff's
play that was produced was the railroad scene, and that the
defendant had in that manner infringed the copyright of the
plaintiff. An injunction was decreed and a reference made to the
master to ascertain the number of times, etc., that the
infringement had occurred.
In the opinion of the court, the case of
Daly v.
Palmer, 6 Blatchford 256, where the same question arose in
regard to the same scene, was referred to and followed. The
judgment record in the equity suit was introduced in evidence in
this case, and it was conclusive upon the matters which had been in
issue in the suit as between these parties, and neither of them can
ever again raise such questions between themselves.
Southern
Pacific Railroad v. United States, 168 U. S.
1. We have, therefore, the fact conclusively established
by that record that this railroad scene was a dramatic composition,
protected by the plaintiff's copyright. The section (4966) of the
Revised Statutes covers such a case. Any person publicly performing
or representing any dramatic composition protected by copyright
under the circumstances named in that section is liable for the
damages sustained by the proprietor, and as the fact is
conclusively established between these parties that the railroad
scene is a dramatic composition, and that it is protected by
copyright, the statute covers such a case and makes the plaintiff
in error liable for the production of that scene.
The question, as an original one, of how far a copyright of a
play protects any particular scene therein from being publicly
produced or represented by another, aside from the dialogue
contained in the play, is not before us, because the judgment in
the equity suit between these same parties establishes the fact of
the copyright and also that the railroad scene is a dramatic
composition protected by that copyright.
The plaintiff in error also contends that the trial court erred
in admitting in evidence the record in the equity suit as proof of
the material allegations of the complaint.
It does not appear herein that the record in the equity suit was
admitted for the purpose stated. The record was admissible
Page 175 U. S. 160
for the purpose of showing the validity of the copyright, and
that the railroad scene was a dramatic composition protected by it.
The bill of exceptions herein shows that the record was not used
for the purpose of proving the number of times the play of "After
Dark" had been represented containing the railroad scene, nor in
any way to show the amount of damages which the plaintiff had
sustained by reason of the defendant's infringement of his
copyright.
The further objection that the answer of the defendant in the
equity suit was inadmissible for the purpose of proving any
admission of the defendant therein which might tend to render him
liable for a penalty or forfeiture becomes immaterial by our
holding that the statute under which this action is brought is
remedial, and not penal. It appears, however, in this record that
although the answer was received as a part of the whole record in
the case between these parties in the equity suit, it was not, nor
was any evidence given by defendant, used upon the final hearing in
any way whatever for the purpose of showing any admission on his
part, but, on the contrary, evidence outside and independent of any
admission or evidence of the defendant was produced, and it was
with reference wholly to such independent evidence that the
recovery was granted. There was no error in this procedure.
The plaintiff in error further claimed that the plaintiff below,
by first proceeding in equity for an injunction, and incidentally
for an accounting of profits, made an election to recover profits,
which effectually barred him from a recovery of damages under the
statute.
The equity action was brought to enjoin the defendant from
performing the play of "After Dark" with the railroad scene in it
taken from the plaintiff's play "Under the Gaslight," and the
injunction was asked for on the ground that plaintiff's injuries
could not be accurately ascertained or computed and compensation
for such injury could not be made by damages, and as a portion of
the relief, complainant asked that the defendant be decreed to
render a full and true account of all money and profits received by
him. The decree in that case, however, did not direct the master to
ascertain anything in
Page 175 U. S. 161
regard to profits, no evidence was offered upon that subject, no
finding was made thereon, and upon the coming in of the master's
report, no final judgment or decree for profits was ever asked or
rendered.
In view of these facts, we think there was no election of an
inconsistent remedy by the plaintiff in the action which would bar
him from the maintenance of this action for the recovery of damages
under the section of the Revised Statutes before referred to.
Conceding that he might in the equity suit have recovered
profits if there had been an accounting concerning the same, and
that a decree for their recovery would be a bar to a proceeding
under the statute, yet the plaintiff was not bound to take such
remedy, and when in fact he did not take it, and there was no
accounting for profits in the equity suit, no decree made in regard
to them and no recovery had, we see nothing to prevent the
plaintiff in this action from recovering under the statute the
damages which he has sustained by reason of the infringement of his
copyright by the defendant.
Other objections were taken by the plaintiff in error upon
questions of evidence which do not call for special consideration.
They were properly disposed of by the court below.
Our ruling in this case, if it had obtained upon the trial,
might have permitted a larger recovery than the plaintiff secured,
because, the statute upon which the action is founded not being of
a penal character, the two years' statute of limitations to which
the plaintiff was limited in his recovery does not apply. But as
the plaintiff did not seek to review the correctness of the
decision of the trial court, and contented himself with the
recovery actually obtained, his executors have now no cause of
complaint on that account, and they assert none.
Upon a full review of the case, we are of opinion that there was
no error committed prejudicial to the plaintiff in error, and the
judgment is therefore
Affirmed.
