Washingtonian Pub Company v. Pearson/Opinion of the Court
By this suit, instituted in the District of Columbia, March 8, 1933, petitioner seeks an injunction, damages, etc., because of alleged unauthorized use of a magazine article copyrighted under Act March 4, 1909 (Ch. 320, 35 Stat. 1075, U.S.C.A. Title 17, § 1 et seq.). Pertinent portions of the statute are in the margin.  Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 346, 28 S.Ct. 722, 724, 52 L.Ed. 1086; Caliga v. Inter Ocean Newspaper Co., 215 U.S. 182, 188, 30 S.Ct. 38, 39, 54 L.Ed. 150.

The trial court sustained petitioner's claim and directed ascertainment of profits, damages, etc. The Court of Appeals ruled that as copies of the magazine had not been promptly deposited in the Copyright Office as directed by section twelve the action could not be maintained. It accordingly reversed the decree of the trial court and remanded the cause.

The record discloses-

December 10, 1931, petitioner published an issue of 'The Washingtonian,' a monthly magazine, and claimed copyright by printing thereon the required statutory notice. Fourteen months later, February 21, 1933, copies were first deposited in the Copyright Office and a certificate of registration secured. This suit followed March 8, 1933.

In August, 1932, Liveright, Inc., published and offered for general sale a book written by two of the respondents and printed by another, which contained material substantially identical with an article contained in The Washingtonian of December, 1931. The usual notice claimed copyright of this book. August 26, 1932, copies were deposited in the Copyright Office and certivicate of registration issued.

Respondents concede that petitioner secured upon publication a valid copyright of The Washingtonian. But they insist that although prompt deposit of copies is not prerequisite to copyright, no action can be maintained because of infringement prior in date to a tardy deposit. Counsel assert-'The very foundation of the right to maintain an action for infringement is deposit of copies and registration of the work. Neither of these has the slightest bearing upon the creation of the copyright itself under section nine. That is obtained merely by publication with notice as required by the Act.' Also, 'If copies were not deposited promptly after publication the opportunity to comply with the requirement of promptness was gone forever as to that particular work.'

Petitioner submits that under the statute prompt deposit of copies is not prerequisite to an action for infringement; and that under the facts here disclosed deposit before suit was enough.

The Act of 1909 is a complete revision of the copyright laws, different from the earlier Act both in scheme and language. It introduced many changes and was intended definitely to grant valuable, enforceable rights to authors, publishers, etc., without burdensome requirements; 'to afford greater encouragement to the production of literary works of lasting benefit to the world.' 

Under the old Act deposit of the work was essential to the existence of copyright. This requirement caused serious difficulties and unfortunate losses. (See H.R. Report note 2). The present statute (sec. 9) declares-'Any person entitled thereto by this Act (title) may secure copyright for his work by publication thereof with the notice of copyright required by this Act (title (§ 18)) * * *.' 17 U.S.C.A. § 9. And respondents rightly say 'It is no longer necessary to deposit anything to secure a copyright of a published work, but only to publish with the notice of copyright.'

Section 10 declares-

'That such person may obtain registration of his claim to copyright by complying with the provisions of this Act (title), including the deposit of copies, and upon such compliance the register of copyrights shall issue to him the certificate provided for in section 55 of this Act (title).' 17 U.S.C.A. § 10.

Section 12-

'That after copyright has been secured by publication of the work with the notice of copyright as provided in section 9 of this Act (title), there shall be promptly deposited in the copyright office or in the mail addressed to the register of copyrights, Washington, District of Columbia, two complete copies of the best edition thereof then published. * * * No action or proceeding shall be maintained for infringement of copyright in any work until the provisions of this Act (title) with respect to the deposit of copies and registration of such work shall have been complied with.' 17 U.S.C.A. § 12.

Section 13-

'That should the copies called for by section 12 of this Act (title) not be promptly deposited as herein provided (in this title), the register of copyrights may at any time after the publication of the work, upon actual notice, require the proprietor of the copyright to deposit them, and after the said demand shall have been made, in default of the deposit of copies of the work within three months from any part of the United States, * * * the proprietor of the copyright shall be liable to a fine of $100 and to pay to the Library of Congress twice the amount of the retail price of the best edition of the work, and the copyright shall become void.' 17 U.S.C.A. § 13.

Sections fifty-nine and sixty were new legislation. They show clearly enough that deposit of copies is not required primarily in order to insure a complete, permanent collection of all copyrighted works open to the public. Deposited copies may be distributed or destroyed under the direction of the Librarian  and this is incompatible with the notion that copies are now required in order that the subject matter of protected works may always be available for information and to prevent unconscious infringement.

Although immediately upon publication of The Washingtonian for December, 1931, petitioner secured copyright of the articles therein, respondents maintain that through failure promptly to deposit copies in the Copyright Office the right to sue for infringement was lost. In effect, that the provision in section twelve relative to suits should be treated as though it contained the words 'promptly' also 'unless' instead of 'until', and read-No action or proceeding shall be maintained for infringement of copyright in any work unless the provisions of this Act with respect to the deposit of copies promptly and registration of such work shall have been complied with.

Plausible arguments in support of this view were advanced by the Court of Appeals. We think, however, its adoption would not square with the words actually used in the statute, would cause conflict with its general purpose, and in practice produce unfortunate consequences. We cannot accept it.

Petitioner's claim of copyright came to fruition immediately upon publication. Without further notice it was good against all the world. Its value depended upon the possibility of enforcement.

The use of the word 'until' in section twelve rather than 'unless' indicates that mere delay in making deposit of copies was not enough to cause forfeiture of the right theretofore distinctly granted.

Section twelve provides 'That after copyright has been secured by publication of the work with the notice of copyright as provided in section 9 of this Act (title), there shall be promptly deposited in the copyright office' two copies, etc. The Act nowhere defines 'promptly' and to make the continued existence of copyright depend upon promptness would lead to unfortunate uncertainty and confusion. The great number of copyrights annually obtained is indicated by note 3, supra. The difficulties consequent upon the former requirement of deposit before publication is pointed out in the Committee Report. These would be enlarged if whenever effort is made to vindicate a copyright it would become necessary to show deposits were made promptly after publication especially since there is no definition of 'promptly'.

Section thirteen authorizes the register of copyrights to give notice if he finds undue delay and to require deposit of copies. Upon failure to comply within three months the proprietor shall be subject to a fine and the copyright shall become void. Evidently mere delay does not necessarily invalidate the copyright; its existence for three months after actual notice is recognized. Without right of vindication a copyright is valueless. It would be going too far to infer that tardiness alone destroys something valuable both to proprietor and the public.

Section twenty saves the copyright notwithstanding omission of notice; section twenty-three declares 'That the copyright secured by this Act (title) shall endure for twenty-eight years from the date of first publication, whether the copyrighted work bears the author's true name or is published anonymously or under an assumed name: * * *.' Furthermore, proper publication gives notice to all the world that immediate copyright exists. One charged with such notice is not injured by mere failure to deposit copies. The duty not to infringe is unaffected thereby. A certificate of registration provided for by section fifty-five apparently may be obtained at any time and becomes evidence of the facts stated therein.

Sections 23 and 24, which permit renewal of a copyright by application and registration within its last year although the deposited copyrighted publication may have been disposed of under Sections 59-60, give clear indication that the requirement for deposit is not for the purpose of a permanent record of copyrighted publications and that such record is not indispensable to the existence of the copyright. 

The penalty for delay clearly specified in section thirteen is adequate for punishment of delinquents and to enforce contributions of desirable books to the Library. To give section twelve a more drastic effect would tend to defeat the broad purpose of the enactment. The Report of the Congressional Committee points out that forfeiture after notice and three months' further delay was thought too severe by some. Nowhere does it suggest approval of the much more drastic result now insisted upon by respondents.

Read together as the Committee which reported the bill said they should be, sections twelve and thirteen show, we think, the Congress intended that prompt deposit when deemed necessary should be enforced through actual notice by the register; also that while no action can be maintained before copies are actually deposited, mere delay will not destroy the right to sue. Such forfeitures are never to be inferred from doubtful language.

This view is in accord with the interpretation of somewhat similar provisions of the English Copyright Act. Goubaud v. Wallace and Cate v. Devon & Exeter Constitutional Newspaper Co., supra. Also with the conclusions reached in Lumiere v. Pathe Exchange and Mittenthal v. Berlin, supra.

The challenged decree must be reversed. The cause will be remanded to the District Court.

Mr. Justice BLACK dissenting. 

Notes

'The failure to make deposit within the proper time does not in itself invalidate the copyright which has already been secured by publication with notice; this can now result only after failure to make deposit upon actual notice as provided in section 13.

'It is true that Section 12 provides that no action or proceeding shall be maintained for infringement until the 'deposit of copies and registration' have taken place, which presumably was added as a special inducement to make prompt deposit; but this does not answer the question.

'Heretofore, the practice of the office has been to accept copies at any time subsequent to publication with notice; thus, in effect, attaching no significance to the word 'promptly'; and certain decisions of the courts seem to sanction the practice * * *.

'It seems very desirable to remove this doubt and uncertainty by eliminating the word 'promptly' from Section 12, leaving Section 13 as heretofore to take care of any delinquent. * * *'