Chapter XXVIII: Section I: Prohibited Acts, and Remedies

Copyright is defined by the Copyright Act, 1842, as "the sole and exclusive liberty of printing or otherwise multiplying copies." Any invasion of this monopoly is an infringement of copyright. Besides infringement of copyright, _i. e_. illegal copying, the Act makes it an offence to deal in certain ways with unlawful copies. The offences against copyright and the owner's remedies may be conveniently summarised as follows:

For the following offences:[423]

i. Piratical copying.
ii. Importing for sale or hire unlawfully printed books.
iii. Selling or hiring, or having in possession for sale or
hire, unlawfully printed books, knowing the same
to be unlawfully printed.[424]
iv. Causing any of the above acts to be done.

The remedies[425] are an action in a Court of Record for:

1. Damages and account of profits.
2. Delivery up of copies.
3. Injunction.

For the following offences:[426]

v. Importing without the consent of the proprietor a
foreign copy or copies,[427] _i. e._ printed outside the
British dominion.
vi. Selling or hiring or having in possession for sale or
hire foreign copies knowing them to be unlawfully
imported.[428]

The remedies are:

1. Seizure and destruction by any officer of Customs,[429]
and on conviction before two justices of the peace.
2. £10 for every offence.[430]
3. Double the value of every copy dealt with,[431] and

An action in the High Court for

4. An injunction.[432]

=Causing to be Printed.=--The prohibition in section 15 is against "printing, or causing to be printed." Thus the author, publisher,[433] and printer of a piratical book are all equally liable, and it is no defence for the publisher, who has employed the printer, or for the printer to say he was acting merely as an innocent agent.[434] There may sometimes be difficulty in determining whether a person who, to a certain extent, is interested in the publication has yet caused it to be printed within the meaning of the section. Thus, in the case of _Kelly's Directories_ v. _Gavin and Lloyds_,[435] the plaintiff had published a directory of merchants and shipping statistics. The defendant Gavin prepared a similar directory, and agreed with the defendants Lloyds for its publication. Lloyds were to print part of it and allow the use of their name in the title and receive some share in the profits. The book was accordingly published under the title of "Lloyds' Diary for Merchants, &c.," and bore on the title-page the statement "printed at Lloyds, Royal Exchange, London." Part of the book was held to be an infringement of the plaintiff's copyright; but it was proved on the trial that that part was not printed by Lloyds, but by a printer employed by Gavin, and that Lloyds had no knowledge of its piratical nature. Byrne, J., found that Lloyds were not partners in the undertaking with Gavin, and that the printing of the piratical portion was not done by the printer as their agent. He therefore held that Lloyds had not "caused" that portion to be printed within the meaning of the section, and dismissed the action as against Lloyds, but without costs, as they had allowed their name to appear on the title-page as printers.

=Damages.=--An action for damages lies, irrespectively of sections 15 or 23, for any infringement of copyright as defined by section 2.[436] The damages are damages as for conversion or detinue,[437] and may be matter for inquiry before a master or official referee, but frequently are assessed by the judge on a rough estimate.

=Account of Profits.=--An order for an account of profits is an equitable remedy. The defendant is held to have been in possession of the plaintiff's property, and must account for the profits thereof.[438] The account will be for an account of net profits.[439] On an interlocutory application for an injunction the defendant may undertake to keep an account of profits until trial; but, strictly, the right to an account depends on the right to an injunction, and will not be ordered when the case for an injunction fails.[440] If the defendant's work is not wholly piratical, the profits must be apportioned according to the relative value of the piratical with the non-piratical matter. The defendant's profits may not entirely recoup the plaintiff for the damage he has suffered, and in that event he is entitled to an inquiry into damages to supplement his compensation.[441]

=Injunction.=--This is also an equitable remedy. It is not specially provided for in the Copyright Act, but being the ancillary remedy in equity for the protection of legal rights, it will be granted or withheld according to the discretion of the Courts in all cases of infringement or other offences against the Act.[442]

An interim injunction is usually granted on motion before trial where the plaintiff shows a _primâ facie_ case on affidavit. In doubtful cases weight will be given to the consideration which side is more likely to suffer from an erroneous judgment.[443] The Court will consider the balance of convenience on the one side and the other.[444] The reason for granting an interim injunction is that a continuing infringement might cause damage for which it would be difficult or impossible to assess an adequate money compensation. If the taking is of an inconsiderable part, an interim injunction might not be given, although an injunction might go at the hearing. In urgent cases an interim injunction may be granted _ex parte_. In all interim injunctions the plaintiff is, as a rule, required to undertake to give compensation to the defendant if on trial he fails to establish his case.[445] When such an undertaking is given the defendant is, if he succeed in his defence, entitled to an inquiry as to the damage sustained on account of the interim injunction against him.[446] When there has been undue delay in bringing an action, or where the conduct of the plaintiff has been such as to induce the defendant to believe that his conduct would not be objected to, an interim injunction will probably be refused.[447] A mere expression of opinion by the plaintiff that it would be legal to make a certain use of his work is not a sufficient ground for refusing an injunction if in point of law the use made by the defendant is illegal.[448] "Copyright is not to be lost by the mere expression of opinion."[449] At the hearing of the action a perpetual injunction will be granted on the plaintiff proving his title and infringement. Delay or acquiescence not amounting to fraud will not prevent an injunction going at the hearing when the plaintiff proves his right;[450] "for at the hearing of the cause it is the duty of the Court to decide upon the rights of the parties, and the dismissal of the bill upon the ground of acquiescence amounts to a decision that a right which has once existed is absolutely and for ever lost."[451] When an infringement has been shown the Court will not wait until it can ascertain distinctly what parts have been pirated. It will grant an injunction in general terms restraining the defendant, his agents, servants, or workmen from further printing, publishing, selling, or otherwise disposing of any copy or copies of the defendant's book containing any passage or passages copied, taken, or colourably altered from the plaintiff's book.[452] If it appears that the piratical parts of the defendant's book can be distinguished from that which is innocent, this will be done in the injunction.[453] For a form of injunction against a servant restraining him from using blocks and materials obtained while in the plaintiff's employment, see _Lamb_ v. _Evans_.[454] An injunction will be granted without any inquiry as to actual damages;[455] but there must be probability of damage. In _Borthwick_ v. _Evening Post_,[456] Cotton, L. J., said:

"In my opinion, in order to justify the Court in granting an
injunction, we ought to be satisfied that there probably will be
injury to the pockets of the plaintiff ... an injunction is an
equitable remedy, and ought not to be granted unless the Court is
satisfied that there is damage to the plaintiff--probable damage,
not necessarily damage already suffered--as the result of the
defendant's conduct."[457]

_Quære_ whether an injunction will be granted to protect the future numbers of a periodical. In _Cate_ v. _Devon and Exeter Constitutional Newspaper Company_,[458] North, J., in granting an injunction to restrain a systematic infringement of a periodical, said:

"It is clear that an injunction can only be granted in respect of
matters in regard to which the plaintiffs now have the copyright
and a present right to sue; they cannot have any protection by
injunction to restrain the defendants from publishing hereafter
any future entries with respect to which the plaintiffs may
possibly ... acquire a copyright, ... but as to which they clearly
cannot at this moment have any copyright."[459]

In another case, however, where a single illustration had been taken from _Punch_, Kekewich, J., said he saw no objection to the injunction extending to the protection of the contents of future numbers of _Punch_, and granted a perpetual injunction accordingly against the _Ludgate Monthly_.[460] An injunction will not be granted when it is difficult or impossible to enforce it,[461] for instance, when the defendant can readily reprint the same matter, compiling it from original sources.[462] The piracy proved may be so inconsiderable, and so little likely to injure the plaintiff, that the Court may decline to interfere by injunction.[463]

=Delivery up of Copies.=--All copies of any books wherein there is copyright and of which entry has been made in the Registry Book and which are unlawfully printed or imported, are deemed to be the property of the registered proprietor of such copyright, and he is entitled after demand in writing to sue for the same in detinue and trover.[464]

This right to the delivery up of pirated copies for the benefit of the proprietor of the copyright is purely statutory. Under the Acts of Anne and George III. the proprietor on delivery up was enjoined to damask and make waste paper of the copies.[465] Under the Act of Victoria the proprietor for the first time is entitled to recover such copies for his own use. It has been doubted whether there was any right to delivery up at common law,[466] but the bulk of authority is in favour of the view that there was,[467] although the delivery up was for destruction only.[468] It is a doubtful point whether section 23 applies to unlawful copies made before registration of the plaintiff's title. Fry, L. J., held that it did not,[469] and therefore in the case of such copies ordered delivery up for destruction as a common law remedy, but refused the statutory remedy of delivery up for the plaintiff's benefit. Jessel, M. R., however, differed from this view,[470] and thought that the 23rd section applied to unlawful copies made before the plaintiff's title was registered. It must also be considered doubtful whether section 23 applies where the defendant's book is not merely a reprint of the plaintiff's. In an Irish case O'Brien, J., said:

"It would be difficult to maintain that under the 23rd section the
proprietor of the copyright in a book would acquire the property
of all copies of another book which contained printed therein a
few pages or passages of his book."[471]

But, whether or not in such a case the plaintiff would be entitled under the section to extraction and delivery up for his benefit of the pirated parts, he is under the general jurisdiction of the Court entitled to delivery up for cancellation.[472] In _Warne_ v. _Seebohm_[473] the order was that the defendant should first state upon oath what copies of the work exist; secondly, extract from those copies which are in his possession or power and deliver up to the plaintiffs for cancellation all passages copied, taken, or colourably imitated from the plaintiffs' book; thirdly, produce to the plaintiffs, if required by them for examination, the copies after the pirated passages have been extracted.[474] _Quære_ whether the Court would order delivery up in an action to which the person who owned the books and paper and at whose expense the printing was executed was not a party.[475]

=Customs Act.=--The Customs Laws Consolidation Act, 1876,[476] provides for the seizure of foreign books, and in this respect is somewhat inconsistent with section 17 of the Copyright Act. Section 42 of the Customs Act prohibits the importation of books "first composed or written or printed in the United Kingdom and printed or reprinted in any other country, as to which the proprietor of such copyright or his agent shall have given to the Commissioners of Customs a notice in writing duly declared[477] that such copyright subsists, such notice also stating when such copyright will expire." On reference to section 17 of the Copyright Act it will be noticed that the prohibition there is as to books "reprinted in any country or place outside the British dominions." _Quære_ does the provision in the Customs Act enlarge the protection by the words "printed or reprinted in any other country"? Does this include the colonies? Again it will be noticed that the Copyright Act has no condition as to notice to the Commissioners of Customs. _Quære_ is the notice required by the Customs Act a condition precedent to all protection from unlawful importation, and in this respect does the Customs Act limit the provisions of the Copyright Act, or is the Customs Act merely directory to the Custom-house officials? To be on the safe side the notice should always be given.