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 Acts1 the copyright vests ab initio in the employer :— I. 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 of a war map for the FrancoPrussian 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 1 8 Geo. II. c. 13; 7 Geo. III. c. 38. 2 Stannard v. Harrison (1871), 24 L. T. (N.S), 570. 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.1 The Assignee. In one case 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.3 It was held, however, that there could be an assignment, and that the assignee could sue in his own name.* As a licence is required to be in writing, signed by the proprietor and in the presence of two or more credible witnesses,5 so must the assignment which passes a greater right. 7 6 The sale of plates will not in itself operate as an assignment; but, if it were clearly intended to pass the whole right, probably it would pass with the plates without assignment in writing.8 Before publication the whole right in the engraving, ¿.e. the common law right, may be assigned without writing.9 1 See as to books, p. 73. 3 8 Geo. II. c. 13; 17 Geo. III. c. 57. 2 Thompson v. Symonds (1792), 5 T. R., 41. 4 Thompson v. Symonds (1792), 5 T. R., 41. 58 Geo. II. c. 13; 17 Geo. III. c. 57. 6 See Assignment of Books, p. 77. 7 Cf. Cooper v. Stephens [1895], 1 Ch., 567, a decision under the Copyright Act, 1842. 8 Marshall v. Petty (1900), 17 T. L. R., 501; 8 Geo. II. c. 13, sec. 2. 9 See as to books, p. 74. SECTION III.-INFRINGEMENT OF THE COPYRIGHT. Prohibited Acts and Remedies. It is an offence "for any print-seller or other person whatsoever " 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. 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.2 ii. Penalty of 5s. for every published copy.3 iii. Damages.1 iv. Injunction.5 v. Inspection and Account. Further it is an offence— 5. Innocently to publish, sell, or expose for sale, any pirated copy.7 6. To make a copy or copies, whether for sale or not.8 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.9 ii. Injunction.10 iii. Inspection and Account.11 18 Geo. II. c. 13; 17 Geo. III. c. 57. The above summary is the result of a careful comparison of these two Acts. As Sir James Stephen says in his "Digest": "They are inexpressibly puzzling and very cumbrous. . . . The sense escapes in a cloud of words." It is submitted, however, that there are more important distinctions between the two Acts than those noticed in the Digest," and the above is an attempt to make them as clear as possible. 2 8 Geo. II. c. 13. 17 Geo. III. c. 57. 8 17 Geo. III. c. 57; but see Martin v. Wright (1833), 6 Sim., 297, contra. 9 17 Geo. III. c. 57. 10 25 & 26 Vict. c. 68, secs. 8 and 9. 11 Ibid. 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.1 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.2 Limitation of Action.-Actions for penalties under the Acts must be brought within three months of the discovery of the offence sued on and within six months after the committal of such offence.4 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.5 Costs. The litigant if successful in an action for infringement is to recover "full costs."6 This proviso, however, has been construed to mean nothing more than ordinary costs taxed as between party and party. 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. 1.8 Copying for Private Use will probably be actionable under 17 Geo. III. c. 57;9 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 1 25 & 26 Vict. c. 68, sec. 8. 2 Gambart v. Sumner (1859), 8 W. R., 27; 5 H. and N., 5; West v. Francis (1822), 5 B. and Ald., 737. 3 8 Geo. II. c. 13. 5 Graves v. Mercer (1868), 16 W. R., 790. 6 8 Geo. II. c. 13; 7 Geo. III. c. 38. 7 Avery v. Wood [1891], 3 Ch., 115. 47 Geo. III. c. 38. 8 Hasker v. Wood (1885), 54 L. J., Q. B., 419; Reeve v. Gibson [1891], 1 Q. B., 652. 9 But see Martin v. Wright (1833), 6 Sim., 297. "1 and sole right and liberty of printing and,reprinting the same," 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." 2 The taking of a material part is a piracy; 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.a 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.5 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 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 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 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 1 8 Geo. II. c. 13. 2 8 Geo. II. c. 13; 17 Geo. III. c. 57. 3 West v. Francis (1822), 5 B. and Ald., 737; Moore v. Clarke (1842), 9 M. and W., 692. 4 West v. Francis (1822), 5 B. and Ald., 737. 5 Graves v. Ashford (1867), L. R., 2 C. P., 410; Gambart v. Ball (1863), 14 C. B. (N.S.), 306. 6 Dicks v. Brooks (1880), 15 Ch. D., 22; Gambart v. Ball (1863), 14 C. B. (N.S.), 306. 7 Newton v. Cowie (1827), 4 Bing. at p. 246; De Berenger v. Wheble (1819), 2 Stark., 548. 8 Dicks v. Brooks (1880), 15 Ch. D., 22; Gambart v. Ball (1863), 14 C. B. (N.S.), 306. |