Chapter 20 of 40 · 4571 words · ~23 min read

CHAPTER VI

SECTION I.--WHAT WORKS ARE PROTECTED.

The following works are protected under the Engraving Acts:

1. Every original engraving or print:[785] 2. [Made within the British dominions:][786] 3. First published within the British dominions:[787] 4. Which bears the date of first publication and the proprietor's name thereon:[788] 5. And is innocent.[789]

The protection endures for twenty-eight years from publication.[790]

The protection is limited to the United Kingdom.[791]

=What is an Original Engraving.=--By 8 Geo. II. c. 13 (1734) copyright is given to "every person who shall invent and design, engrave, etch, or work in mezzotinto or chiaro oscuro, or from his own works and invention shall cause to be designed and engraved, etched, or worked in mezzotinto or chiaro oscuro any historical or other print or prints."

In _Blackwell_ v. _Harper_[792] (1740) it was decided that the above Act was not limited to works of invention such as an historical group, but extended to the "designing or engraving anything that is already in nature."

In _Jefferys_ v. _Baldwin_[793] (1753) it was held that prints of herring fishing-boats were not within the protection of the Act.

By 7 Geo. III. c. 38 (1766), which was passed in consequence probably of the doubt thrown upon the earlier Act by the above and other decisions, the copyright in engravings is given to "all and every person or persons who shall invent or design, engrave, etch, or work in mezzotinto or chiaro oscuro, or from his own work, design, or invention shall cause or procure to be designed, engraved, etched, or worked in mezzotinto or chiaro oscuro any historical print or prints, or any print or prints of any portrait, conversation, landscape, or architecture, map, chart, or plan, or any other print or prints whatsoever," and "to all and every person who shall engrave, etch, or work in mezzotinto or chiaro oscuro, or cause to be engraved, etched, or worked any print taken from any picture, drawing, model, or sculpture either ancient or modern."

Notwithstanding this widely worded protection, doubts arose as to whether lithographs and certain new processes of reproducing prints came within the Acts, and in consequence a clause was inserted in the Copyright Act of 1852[794] whereby it was declared that the provisions of the Engraving Acts were intended to include prints taken by lithography or any other mechanical process by which prints or impressions of drawings or designs are capable of being multiplied indefinitely.

Prints of every description, therefore, are protected under the Engraving Acts, and it is immaterial whether the design produced is:

1. The imaginative invention of the maker, 2. Taken from some object in nature, or 3. Taken from some other work of art, such as a picture or model.

_Originality._--The only originality required is an originality in execution, _i. e._ the work must not be taken from some other print and reproduce from that other print those characteristics of execution wherein the peculiar merit of the engraver's art lies.

"The engraver produces his effects by the management of light and shade, or as the term of his art expresses it, the _chiaro oscuro_. The due degrees of light and shade are produced by different lines and dots; he who is the engraver must decide on the choice of the different lines or dots for himself, and on his choice depends the success of his print. If he copies from another engraving he may see how the person who engraved that has produced the desired effect, and so without skill or attention become a successful rival."[795]

_Map, Chart, or Plan._--It will be remembered that maps, charts, and plans are included under the definition of books in the Copyright Act, 1842,[796] and receive protection as such. Doubt has consequently been raised as to whether a map must comply with both the Engraving Acts and the Literary Act in order to obtain protection, or whether it will be sufficient to comply with the requirements of one only, and if so, which. The decided cases are unsatisfactory. In _Stannard_ v. _Lee_[797] protection was claimed for a "Panoramic Bird's-eye view of France and Prussia," with the railway and strategic positions illustrating the Franco-Prussian War of 1870. This was not registered as a book under the Copyright Act, 1842, and the objection was held to be fatal. The judges in the Court of Appeal seemed to be of opinion that the Act of 1842 had taken maps, charts, and plans out of the protection of the Engraving Acts and placed them under the protection of the Literary Act, consequently that the requirements of the latter and not of the Engraving Acts must be observed. James, L. J., said:

"It was reasonable and proper to take a map out of the class of artistic copyrights and to give to it the better and more complete copyright which is intended to be given to literary works. And there would be, as I have pointed out clearly, great inconvenience in having two laws of copyright as to two sets of maps or as to the same set of maps."[798]

Mellish, L. J., said:

"I think it is a perfectly rational enactment that maps shall no longer be included among works of art but be classed in future with literary works."[799]

After this case had been decided a petition was brought to the Court praying that another case, _Stannard_ v. _Harrison_,[800] in which the same map had been copied, and to which the defendants had consented to a decree for injunction and damages, should be reheard. Bacon, V. C., refused the petition, and indicated in the course of his judgment that a map not registered as a book might be protected as an engraving if the claim was properly stated. The judgment in _Stannard_ v. _Lee_,[801] he said, had gone on a question of pleading, the plaintiffs having voluntarily brought their map under the category of books. This is by no means a satisfactory explanation of the decision in the Court of Appeal, as it is abundantly clear from the judgments as reported that in the view of the Lords Justices the Copyright Act, 1842, took maps, charts, and plans out of the category of artistic works and placed them in the category of literary works. Whether this is a correct view is another matter, but at present it would seem to be law. It is submitted that the true view probably is that a map may be protected under either Act if the requisite formalities are observed. The Literary will probably give a wider protection than the Engraving Acts. The Engraving Acts will protect a map from infringement of the method of execution, that is to say, the work which is the peculiar work of the engraver; while the Literary Act will protect it not only from that, but from a piratical taking of information imparted. Thus suppose a map of India giving battles and dates and, say, the principal products of the various districts marked with printed letters on the surface. It is difficult to see how the taking of all these dates and products and placing them perhaps printed in different letters on the new map could be an infringement of the engraving copyright in the map; there is nothing in the nature of a design or drawing taken; and yet it is quite clear it will be an infringement under the protection afforded by a literary copyright, because there is a taking of the particular expression by which information is imparted.

_Engravings in a book_ are protected by the Copyright Act, 1842, as part of the book, and, as such, do not require to comply with the requirements of the Engraving Acts.[802] The protection of a print forming part of a book is probably a double one, and if it had the name and date inscribed would be protected without registration or notwithstanding faulty registration of the book.

=Must the Engraving be made within the British Dominions.=--The Act 17 Geo. III. c. 57 giving a remedy by action for damages is expressly confined to works made in Great Britain. The other two Acts, 8 Geo. II. c. 13 and 7 Geo. III. c. 38, are not expressly limited to works there made, but it has been held that the limitation is to be supplied in them.[803]

"It is plain that the object of the legislature was to protect those works which were designed, engraved, etched, or worked in Great Britain, and not those which were designed, engraved, etched, or worked abroad, and only published in Great Britain."[804]

The Act 6 & 7 Will. IV. c. 59 extends the application of the Engraving Acts to Ireland, and in section 2 there is a general proviso protecting "any engraving or print of any description whatever ... which may have been or which shall hereafter be published in any part of Great Britain or Ireland." It is quite arguable that this extends the protection to engravings wherever made if published in the United Kingdom; but probably it would be held to be only applicable to engravings made in the United Kingdom, and is merely a proviso that there will be no copyright until publication in the United Kingdom. The point, however, is one of great uncertainty.

Under the International Copyright Act, 1886,[805] works first produced anywhere within the British dominions are protected equally with those first produced in the United Kingdom. The doubt still remains whether the engraving must not be made as well as first published within the British dominions.

=The Engraving must be first Published within the British Dominions.=--There is no protection until publication[806] except at common law. Publication is an act which gives to the public an opportunity on payment or otherwise of viewing the print. There may probably be publication without offering copies for sale or distribution. See as to publication of books[807] and pictures;[808] but the analogy is not complete with either. There seems to be no direct authority as to what constitutes publication of an engraving.

Before 1886 the work had to be published in the United Kingdom.[809] Now first publication anywhere within the British dominions will be sufficient to secure the copyright.[810]

=Date of First Publication and Proprietor's Name.=--It is a condition precedent to protection that there must be truly engraved on each plate, and printed on every print or prints[811]--

i. The name of the proprietor; ii. The day of first publication.

This qualification of the engraver's right is only inserted in 8 Geo. II. c. 13, and not in the subsequent Acts which extend the protection to works not there included and give remedies not there given. It has been held, however, that as the Acts are _in pari materia_ they must be taken together, and the qualification in the first read into the others.[812]

The proviso as to the name and date is a condition precedent to protection, and not merely directory.[813] In one case Lord Hardwicke thought that, although no action for penalties would lie unless the name and date were correctly published, an injunction might be granted even although the name and date were not published at all.[814] He was probably wrong.

_Name of Proprietor._--There is some little doubt as to whether this must be the name of the person who was proprietor at the date of first publication or at the date on which protection is claimed. In _Thompson_ v. _Symonds_[815] Lord Kenyon said:

"The name of the proprietor should appear in order that those who wish to copy it might know to whom to apply for consent. It seems, therefore, necessary that the date should remain, but that the name of the proprietor should be altered as often as the property is changed."

But Buller, J., in the same case, thought the proprietor always meant the inventor and first proprietor, notwithstanding the property had passed to his assignee. The point is certainly doubtful, but the latter view that the name of the first proprietor only need be on the print seems the more reasonable, and not contrary to the wording of the Act. The proprietor need not be described as such on the plate.[816] If his name is there it is sufficient, even if there is more than one name and it is uncertain which is the proprietor.[817] The proprietor need not be described by his full name, his surname is sufficient.[818] When a partnership firm are proprietors of an engraving the trading name of the firm is a sufficient designation, inasmuch as it enables parties to know whom to apply to for information.[819] If a single proprietor trades under the designation of A. B. & Co. that is a sufficient designation.[820]

=Immoral Works.=--There will be no copyright in profane, libellous, or indecent prints.[821]

=Duration of Protection.=--The statutory right begins on publication, and runs for twenty-eight years from the day of first publishing.[822]

After publication protection will depend entirely on the statute.[823]

Before publication there is a common law right to prevent all interference with what is a man's private property,[824] and to protect this the formalities prescribed by the statute need not be complied with.

SECTION II.--THE OWNER OF THE COPYRIGHT.

=The Engraver.=--The persons to whom the copyright is given by the Acts are, "Every person and persons who shall invent or design, engrave, etch, or work in mezzotinto or chiaro oscuro, or from his own work, design, or invention, shall cause or procure to be designed, engraved, etched, or worked in mezzotinto or chiaro oscuro any prints ... and every person who shall engrave, etch, or work in mezzotinto or chiaro oscuro, or cause to be engraved, etched, or worked any print taken from any picture."

The engraver, therefore, is the first owner of the copyright when he does the work on his own behalf, or, if he does it on behalf of another, executes it entirely from his own work, design, or invention.

=The Employer.=--When one man employs another to execute an engraving it would seem that by the Acts[825] the copyright vests _ab initio_ in the employer:

1. In the case of an engraving taken from another work of art. 2. In the case of an engraving with an original design, if it is executed from the employer's own work, design, or invention.

An employer may be the inventor of a design even although he is unable to draw, and would himself be unable to execute it. For instance, in the case[826] of a war map for the Franco-Prussian war in 1870, it was held that a publisher who had employed an engraver, giving him material and instructions from time to time was the inventor, and therefore the first owner in the copyright in the map. Bacon, V. C., said:

"As to whether the design or invention is that of the plaintiff or not is a mere matter of character.... The compiler has proved that it is the design of the plaintiff; that the plaintiff brought to him his rough sketch or draught, a drawing of the same size as the stone on which it was to be engraved, pointing out, as the compiler has said, 'a rough sketch of the forts and towns to give me an idea; he furnished me also with a large French map, and some maps published in the _Times_ and _Daily Telegraph_; he gave me notice also daily of the earthworks that were made and produced, besides a picture published in the _Illustrated London News_.' That the plaintiff cannot draw himself is a matter wholly unimportant if he has caused other persons to draw for him. He invents the subject of the design beyond all question. He prescribes the proportions and the contents of the design; he furnishes a part of the materials from which the drawing has to be made in the first instance, and afterwards collects daily from the proper sources, and even, if it be necessary to say so, from official sources, the decrees, the reports, the bulletins and accounts contained in the newspapers of the different phases of the war, and especially of the places in which earthworks are thrown up. These he communicates to the man whom he has employed to make a drawing for him.... It is clear to my mind that this is a work of diligence, industry, and for aught I know of genius on the part of the plaintiff, for the notion never seems to have occurred to the compiler himself."

If the person employed is the servant of the employer and not an independent contractor, the whole right in the engraving will probably, irrespective of the Acts, vest _ab initio_ in the employer.[827]

=The Assignee.=--In one case[828] it was contended that there could be no assignment under the Engraving Acts enabling an assignee to sue in his own name, since these Acts only provide for the licence and exemption from liabilities of a purchaser.[829] It was held, however, that there could be an assignment, and that the assignee could sue in his own name.[830]

As a licence is required to be in writing, signed by the proprietor and in the presence of two or more credible witnesses,[831] so must the assignment which passes a greater right.[832]

The sale of plates will not in itself operate as an assignment;[833] but, if it were clearly intended to pass the whole right, probably it would pass with the plates without assignment in writing.[834]

Before publication the whole right in the engraving, _i. e._ the common law right, may be assigned without writing.[835]

SECTION III.--INFRINGEMENT OF THE COPYRIGHT.

=Prohibited Acts and Remedies.=--It is an offence "for any print-seller or other person whatsoever"[836]--

1. To engrave, etch, or work, or in any manner copy and sell the protected work. 2. To print, reprint, or import for sale any pirated copy. 3. Knowingly to publish, sell, or expose for sale, or in any other manner dispose of any pirated copy. 4. To cause or procure any of these acts to be done.

For any such offence the remedy is an action in the High Court for--

i. Forfeiture of plates and sheets to proprietor for destruction. [837] ii. Penalty of 5s. for every published copy.[838] iii. Damages.[839] iv. Injunction.[840] v. Inspection and Account.[841]

Further it is an offence--

5. Innocently to publish, sell, or expose for sale, any pirated copy.[842] 6. To make a copy or copies, whether for sale or not.[843] 7. To cause or procure any of these acts to be done.

For any such offence the remedy is an action in the High Court for--

i. Damages.[844] ii. Injunction.[845] iii. Inspection and Account.[846]

Penalties and delivery of plates or copies may also be recovered by summary proceeding before any two justices having jurisdiction where the party offending resides.[847]

_Guilty Knowledge._--It will be noticed that in order to recover penalties and forfeiture of copies under 8 Geo. II. c. 13, for the offence of selling a piratical copy, it must have been committed knowing the copy to have been produced without consent. In 17 Geo. III. c. 57, however, the offence for which an action for damages lies is merely "selling," thus not requiring proof of guilty knowledge. It has been contended that the requirement of guilty knowledge in 8 Geo. II. c. 13, should be read into 17 Geo. III. c. 57, and the action of damages provided by the latter statute applied to guilty selling only. This contention has been rejected as erroneous.[848]

_Limitation of Action._--Actions for penalties under the Acts must be brought within three months of the discovery of the offence sued on[849] and within six months after the committal of such offence.[850]

There is no express limitation in the Acts in respect of actions for damages under 17 Geo. III. c. 57, and therefore such action will not be barred for six years.[851]

_Costs._--The litigant if successful in an action for infringement is to recover "full costs."[852] This proviso, however, has been construed to mean nothing more than ordinary costs taxed as between party and party.[853] Probably, however, they may be claimed as of right and are not in the discretion of the Court under Rules of the Supreme Court, o. 65, r. 1.[854]

_Copying for Private Use_ will probably be actionable under 17 Geo. III. c. 57;[855] but no penalties could be recovered under 8 Geo. II. c. 13, as under that Act the making must be a making for sale.

=What is a Piratical Copy.=--The right under the Acts is "the sole right and liberty of printing and reprinting the same,"[856] and the prohibition is against "engraving, etching, or working in mezzotinto or chiaro oscuro or otherwise, or in any manner copying, in the whole or in part, by varying, adding to or diminishing from, the main design."[857]

The taking of a material part is a piracy;[858] the copy which contains a material part of a copyright engraving is a piratical copy, and it is an offence to import or sell it.[859]

The copyright in an engraving may be infringed otherwise than by another engraving. Thus a photograph of an engraving is an infringement of the copyright in it.[860]

It is doubtful how far the Engraving Acts protect the design in an engraving. It is clear that when an engraving is taken from a work of art previously existing, such as a pen and ink drawing or a painting, the engraving is only copyright so far as the work of the engraver[861] is concerned; that is to say, apart from the copyright in the drawing or painting, which may or may not be his, the engraver acquires no monopoly[862] of the right to engrave the picture; the fact of his being the first engraver does not prevent others from doing the same, they can only be prevented from copying from his engraving the peculiar execution of the design. In _Dicks_ v. _Brooks_[863] a printed pattern for Berlin wool work was taken from an engraving of the well-known picture "The Huguenot," by Millais. The owner of the copyright in the engraving sued for infringement. It was held that the printed pattern constituted no infringement of his engraving; it contained no reproduction of that which was the engraver's meritorious work in the print. But if the whole invention and design of the engraving is the engraver's own do the Engraving Acts protect the engraver in such design and invention? There is no authority where the point has been expressly considered and decided. It is suggested that the Engraving Acts protect that part of an engraving only which is the result of the engraver's peculiar art; for the rest, for the design, for the invention, for the grouping of the figures, protection can only be obtained under the Act protecting drawings, or (in the case of maps) under the Literary Copyright Act, or at common law. In _Roworth_ v. _Wilkes_[864] Lord Ellenborough considered a copying of the design was an infringement of copyright under the Engraving Acts. The action was in respect of an alleged infringement of certain plates in a treatise on fencing. These plates had been copied in so far as the position of the figures went, but they were represented as differently dressed. His Lordship, in directing the jury, said:

"As to the prints, the question will be whether the defendant has copied the main design ... it is still to be considered whether there be such a similitude and conformity between the prints that the person who executed the one set must have used the others as a model. In that case he is a copyist of the main design. But if the similitude can be supposed to have arisen from accident, or necessarily from the nature of the subject, or from the artist having sketched designs merely from reading the letterpress of the plaintiffs work, the defendant is not answerable. It is remarkable, however, that he has given no evidence to explain the similitude or to repel the presumption which that necessarily causes."

In _Martin_ v. _Wright_[865] it was held that when an artist had from sketches of his own produced an engraving, and the defendant had it copied on canvas in colours on a very large scale, with dioramic effect, and publicly exhibited it, such a copying and exhibiting was no infringement of the engraving. The ground of this decision seems to have been partly that the merit of the new work had absorbed the merit of the old. Thus Shadwell, V. C., prefaces his judgment with the remark that "any person may copy and publish the whole of a literary composition provided he writes notes upon it, so as to present it to the public connected with matter of his own."[866] Another ground of the decision seems to have been that the diorama was produced for purposes of exhibition and not of sale. The real point, whether the Acts protected more than that which was peculiar to the engraver's art, does not appear to have been considered either in the argument or judgment. In _Dicks_ v. _Brooks_[867] James, L. J., appears to have been of opinion that 8 Geo. II. c. 3, in protecting the work of an engraver where the invention and design was his own, protected not only the work peculiar to the engraver's art, but the invention and design of the pictures as well.

"These words were intended to give protection for the genius exhibited in the invention of the design, and the protection was commensurate with the invention and design."[868]

Bramwell, L. J., however, seems inclined towards the opposite view. He says:

"I do not say that if this were an ordinary engraving with no picture, a lithograph taken from it would not be a copy. I think that a photograph taken from it would be a copy. I do not say that if this were an original engraving with no picture, and a copy were made of it and afterwards coloured there might not be some ground for saying that there was a piracy of the art and skill of the engraver. I should have very great misgiving about it, because I doubt whether the statutes were not intended to protect the artist's skill as an engraver only, and not as a draftsman."[869]

It is no defence to an action for infringement that the work has been extensively added to or improved.[870]

Striking prints from the proprietor's own plate has been held not to be an infringement, although it was clearly an unauthorised act and a breach of contract.[871] Thus a printer who had plates in his possession would not infringe the copyright and be liable to penalties by striking copies for his own use, but he would be liable in damages for breach of contract.

_Licence a Defence._--A licence in order to be a defence must be in writing signed by the proprietor in the presence of two or more credible witnesses,[872] but a licensee who is also a purchaser of any plates for printing may presumably without any document in writing print from the said plates without incurring penalties[873] under 8 Geo. II. c. 13 or 7 Geo. III. c. 38, but _quære_ whether such purchaser would not technically be liable to damages under 17 Geo. III. c. 57. A bare licensee, although a purchaser of plates, could not authorise third persons to print from the plates except as his agent and on his behalf.[874]