Proceedings of the Bench and Bar of the Circuit Court of the United States, in the First Circuit and District of Massachusetts, upon the Decease of Hon. Benjamin Robbins Curtis 625

CIRCUIT COURT OF THE UNITED STATES.

MASSACHUSETTS DISTRICT.

MAY TERM, 1869.

WILLIAM B. LAWRENCE, Complainant, v. RICHARD H. DANA, JR., CHARLES C. LITTLE, AUGUSTUS FLAGG, JOHN BARTLETT, HENRY J. MILES, AND MARTHA B. WHEATON.

BEFORE CLIFFORD AND LOWELL, JJ.

If parties make a memorandum of an agreement, not at that time regarded as a contract, but afterwards adopt the memorandum as a contract, and understandingly execute it as such, their rights under it must be ascertained from the language employed, as applied, in view of the surrounding circumstances, to the subject-matter of the negotiation. The stipulations contained in the memorandum in this case were held to constitute a perfected agreement, and not a mere proposal.

Mere proposals may in general be withdrawn before they are accepted; and ordinary contracts, executory on both sides, may in certain cases be regarded as forfeited where the reciprocal stipulations are dependent, and where the party seeking to enforce performance has omitted to do something required to be performed by him as a condition precedent to his right of action.

A party may be estopped from setting up a particular contract, where he has agreed, in due form of law, for a valuable consideration to relinquish its benefits or not to enforce its provisions; or where he has designedly caused the other party to believe that the contract has been discharged or would not be enforced, and thus induced such other party to act on that belief to his pecuniary prejudice.

Contracts executed on one side and unperformed on the other are under the operation of a very different principle from those where nothing has been done by either, so far as they relate to the party who has fulfilled his obligation. Rights and obligations secured or imposed under such circumstances have become vested and absolute. If the delinquent party seeks to avoid the obligation imposed on him, he must allege and prove a new contract, amounting to a release; or, that the other party is estopped to enforce the obligation by virtue of some operative agreement to relinquish the benefits of the same; or, he must allege and prove that he has been designedly misled by the admissions and representations of the other party.

None of the elements of estoppel exist in this branch of this case, because the complainant did not agree that he would discharge the memorandum.

Lawrence v. Dana et al.

A certain memorandum had been drawn and agreed to. After this the complainant stated in writing, "On reflection, I have determined to decline accepting any paper whatever from Mrs. W, and therefore return the enclosed," - meaning an amended draft for the formal agreement. Held, this should be construed in view of what had preceded it in the negotiations, and of the subject-matter to which it related; that the statement was not inconsistent with the memorandum or a relinquishment of it. Expressions of a doubtful character are not sufficient to support a defence to a contract executed on the part of the complainant.

Estoppels are allowed to shut out the truth only when it is necessary to protect a party setting up such a defence against an injury to which he is exposed without his own fault, in consequence of having trusted to the representations designedly made by the other party in order to expose him to such injury, which representations were of such character that a man of ordinary prudence would take them as true, and believe that he should act upon them as exhibiting the true state of the case.

These representations must be proved, and they will not by implication be extended beyond their plain import.

Although abundant evidence existed to show that the defendant was willing to concede the complainant's claim to a certain part of the matter in dispute, still, as the complainant elected to stand on the original memorandum of agreement, and such part was not included therein, it was held he had relinquished such part.

When fraud is set up as a defence to a contract, the burden is on the party setting it up; and it must be satisfactorily proved.

Inferences sought to be drawn from correspondence of parties are not sufficient to substantiate the defence of fraud in the making of a contract otherwise legal and binding. Under the copyright act now in force, copyright may be granted to the author of any book within the classes described in § 1, if the author is a citizen of the United States.

Executors, administrators, and legal assigns of the author are also included within the purview of that section.

Where the author is the owner, he is entitled to the copyright; but if he has parted with the ownership, the requirement of the law is that the clerk of the District Court shall give a copy of the title, under seal, to the proprietor.

Proprietors of such books, though not authors, are entitled to the benefits of the act under a provision of § 4.

Legal proprietors, although not authors, may recover of persons who print or publish any
manuscript, owned by such proprietors, without their consent, all damages occasioned
by such injury.

Where services in editing and preparing a certain work for publication were, by agreement,
gratuitous as to two editions thereof, it was held that the contributions of the editor
became the property of the proprietor of the work just as effectually as if the editor had
been paid for his work on those editions, and the title to the same vested in the pro-
prietor of the original work, as the labor was done, to the extent of the gift, subject to
the trust in favor of the donor as necessarily implied by the terms of the arrangement.
Delivery was made as the work was performed, and the proprietor of the book needed no
other muniment of title than what was acquired when the agreement was executed.
The proprietor needed no assignment from the contributor, because the contributor had no
title to the contributions, nor any inchoate right of copyright in the editions of the work.
In order to the obtaining of a copyright, deposit must be made before publication, if the
subject-matter is a book, of a copy of such book in the clerk's office of the District
Court, and the applicant must give information of copyright being secured, by causing
to be inserted, in the several copies of each and every edition published, during the
term secured, on the title-page, or page succeeding, the following words: "Entered

Omission to comply with these requirements renders the copyright invalid.

Section 5 of the act does not require that the same notice be inserted in the several copies of each and every edition published during the term secured, so that the second and every subsequent edition may correctly specify the date of the original entry. Acts of Congress are construed by the rules of the common law, and the construction should be such as to carry into effect the true intent and meaning of the legislature; but the province of construction can never extend beyond the language employed as applied to the subject-matter and the surrounding circumstances.

Change of date in the notice required in case of successive editions of the same book is not required by § 5, but the meaning of the provision is, that a new notice in the same prescribed form shall be given in every improved edition published during the

term.

When the original edition is published, compliance with that requirement is protection for that edition, but not for a second edition with notes, or any succeeding edition with improvements.

Copyrights to editions of a work other than the original one are granted for additions to or emendations of the work, and every copyright should bear date of the day when secured.

Subsequent editions without change or addition should have the same entry as the first; subsequent editions with notes or improvements are new books within the meaning of the copyright acts.

Copyrights, like patents, afford no protection to what was not in existence at the time they were granted.

Protection is afforded by virtue of a copyright of a book, if duly granted, to all the matter the book contained when the printed copy of the same was deposited in the office of the clerk of the District Court.

Whenever a renewal is obtained under § 2 of the copyright act, the requirement is, that the title of the work so secured shall be a second time recorded, but there is nothing to show that the date of the original entry shall be specified in each successive edition. The agreement in this case was that Mrs. Wheaton, who held the legal title of the copyrights, should make no use of the notes in a new edition without the written consent of the complainant, and that she would give him the right to make any use of the same he might see fit, which was in all respects equivalent to a contract to transfer and assign to him the legal title to the copyrights.

Equity would have compelled the execution of the formal instrument therein stipulated, if the right to demand it had not been waived by the complainant.

In this case, Mrs. Wheaton, by virtue of the agreement with the complainant, became the absolute owner of the notes as they were prepared, so far as respects the editions in question; and she also acquired therewith the right to copyright the same for the protection of the property; but she did not acquire thereby any right or title, legal or equitable, to use the notes in a third edition of the annotated work without the consent of the complainant.

Literary property, even when secured by copyright, differs in many respects from property ⚫ in personal chattels, and the tenure of the property is governed by somewhat different rules; but the nature and tenure of copyright property is still more unlike the tenure of other property, before the copyright is taken out, and while the right to that protection is inchoate.

Title to the notes or improvements prepared for a new edition of a book previously copyrighted may, in certain cases, be acquired by the proprietor of a book from an employé by virtue of a contract of employment, and without any written assignment.