Geeen v Irish Independent Company, Ltd Same v Freeman's Journal Company, Ltd

• Jurisdiction: Ireland
• Judgment Date: 05 May 1899
• Date: 05 May 1899
• Court: Court of Appeal (Ireland)

GEEEN

and

IRISH INDEPENDENT CO., LIMITED.

SAME

and

FREEMAN'S JOURNAL CO., LIMITED

Appeal.

Copyright — Design — Infringement — Penalties —

Brinsmead v. HarrisonELR L. R. 7 C. P. 547.

Cooper v. WhittinghamELR 15 Ch. D. 501.

Ex parte BealELR L. R. 3 Q. B. 387.

Gambart v. SumnerENR 5 H. & N. 5.

In Ex parte BealELR L. R. 3 Q. B. 387.

Kenrick v. LawrenceELR 25 Q. B. Div. 99.

Lucas v. Cooke 13 Ch. Div. 872.

Nottage v. JacksonELR 11 Q. B. Div. 627.

Truck v. PriesterELR 19 Q. B. D. 48, 629.

West v. FrancisENR 5 B. & Ald. 737.

386 THE IRISH REPORTS. [1899. Appeal. GREEN v. IRISH INDEPENDENT CO., LIMITED. 1899. Feb. 8, 9, 10. SAME v. FREEMAN'S JOURNAL CO., LIMITED (1). May 5. Copyright—Design—Infringement—Penalties—Copyright Act, 1862 (25 26 Vice. c. 68), as. 1, 6, 11. Plaintiff, as the owner of a design under the Copyright Act of 1862, brought an action for damages and penalties against T. & Co., a firm who had inserted, without authority, the plaintiff's design as an advertisement in the two newsÂpapers owned by the defendants in the present actions respectively, and also sepaÂrate actions against these defendants claiming damages and penalties in respect of each copy of the newspapers which contained the advertisement as being an infringement of his copyright. The Master of the Rolls held the plaintiff entitled to damages, but not to penalties against T. & Co., but finding as a fact that the owners of the newspapers had acted without bad faith or negligence, he dismissed the actions against them. No appeal was lodged against the judgment in the action against T. & Co. ; but the plaintiff having appealed in the actions against the owners of the newspapers : Held (Fitz Gibbon, L.J., dim), reversing the decision of Porter, M.R., that the plaintiff was entitled to a penalty in respect of each copy of the newspapers containing the reproduction of the design, though the publication took place without bad faith or negligence. The penalty of one farthing was awarded in respect of each copy published. Sellable : the plaintiff would have been entitled to penalties as well as damages against T. & Co. APPEALS from the decision of the Master of the Rolls in two separate actions against the owners of two newspapers, claiming damages and penalties for breach of copyright. The facts and arguments are fully stated in the report of the case in the Court below ([1899] 1 I. R. 47). O'Connor, Q.C., and Herbert Wilson, for the plaintiff. 0' Shaughnessy, Q.C., and J. J. Clancy, for the Irish IndepenÂdent Co. (Ltd.) Serjeant Dodd, and Ignatius O'Brien, for the Freeman's Journal Co. (Ltd.) (1) Before FITZ GIBBON, WALKER, and HOLMES, L.JJ. VoL. L] CHANCERY DIVISION. 387 FITZ GIBBON, L.J. Appeal, We have now to deal with appeals by the plaintiff against 1899. REEN orders of the Master of the Rolls of January 14, 1898, dismissing G V. two of three separate actions which were brought by the same IR. INDEPEN- DENT CO. plaintiff, for infringement of his copyright in the same design, sAmE described as " a drawing representing Santa Claus laden with toys, V. FREEMAN'S a boy and a girl running towards him, and baby in chair." JOURNAL The facts are as follows :—The plaintiff is a lithographic May 5. printer carrying on business at Leeds as a publisher of pictorial advertisements. In 1896 R. Bownass, an artist in his employÂment, made for him the design in question, and the plaintiff, as the proprietor of the copyright, registered it at Stationers Hall, on November 28, 1896. The certificate of registration given in evidence has not any copy of the drawing annexed, but it has been assumed that the drawing actually registered was Bownass design, on a sheet of plain paper or cardboard, containing the figures of Santa Claus and of three children, but nothing more. It had no letterpress or other matter upon it. Before registering the design, the plaintiff, in October, 1896, had prepared for Todd, Burns, & Co., of Dublin, and he afterwards sold to them, some 200 copies of a large poster, on which Bownass design appeared, but also containing the name of the purchaser's firm, and an announcement of a Christmas Bazaar to be held at their establishÂment. Afterwards the plaintiff also prepared and sent to Todd, Burns, & Co., a sketch for a smaller handbill, or advertisement, which was a reduced copy of their poster. But they did not give him any order for this handbill. The sketch was prepared by the plaintiff, by cutting out a small lithograph of the group of Santa Claus and the children, pasting it on a sheet of paper, and adding in very conspicuous lettering the announcement of Todd & Burns' Christmas sale. Todd & Burns' manager, without the plaintiff's consent, sent this sketch to the office of one of the two Dublin evening papers which are now sued, with an order to publish it as an advertisement. Some other copy or duplicate, not in proof, was sent with a similar order to the other paper, and each of the papers published a small reproduction of the sketch, as an advertiseÂment, on the order of Todd, Burns, & Co. The newspapers acted in good faith, in the ordinary course of their business, on the order in the design, and even such an inspection would not have disclosed any design which bore the name of Todd, Burns, & Co., or the announcement of their sale. Having seen the advertisements, the plaintiff made a claim for infringement of his copyright, both against Todd, Burns, & Co., and also against each of the newspapers. The Evening Herald had published 110,900, and the Evening Telegraph 140,311 copies of the newspaper containing this advertisement. In April, 1897, the plaintiff issued a writ against Todd, Burns, & Co. alone, and on May 21, 1897, he issued two separate writs, one against the proprietors of each newspaper, as the sole defendants. The three actions were heard together by the Master of the Rolls on January 14, 1898. He refused to award any penalties against Todd, Burns, & Co., because he did not think that the penalties ought to be cumulative, or in addition to damages. But he gave a decree against that firm for damages which he estimated at 50 guineas, which sum he regarded as " full and ample compenÂsation, erring if at all on the side of excess." He dismissed the actions against the newspapers, holding that they ought not to have been instituted, and that he was not bound to give penalties, where there was no impropriety of conduct, and no mens req. The plaintiff took no further step until January 10, 1899, when, four days before the time would have expired, he served notice of appeal. The questions which we have to decide are first, Whether an actionable infringement of the plaintiff's copyright was committed by the proprietors of the newspapers ? Secondly, If so, whether the infliction of penalties is ex debit° justitim? and thirdly, If so, what is the amount of the penalties which, under such circumÂstances, the Court must award, in a case in which the plaintiff has already recovered against a solvent defendant, and has been paid on a liberal scale, full compensation for any pecuniary loss which he has sustained. In his judgment, the publication in the newsÂpapers is the matter for which the Master of the Rolls gave the VOL. I.] CHANCERY DIVISION. 38g compensation " full and ample " which he awarded to the plaintiff Appeal. against Todd & Burns. 1899. My individual opinion is of no practical importance, but, such GREEN V. as it is, it is my duty to state it ; especially as the case is III. NDEPEN- important, not only to the parties before us, but in its bearing ")}s11Z C. IEo upon the law of copyright. v. The statute on which the case turns is the Copyright Act TFREEMAN'S u OURNAL CO. 1862, 25 & 26 Vict. cap. 68. The offences against that Act are Fitz Gibbon, defined in sect. 6 in the following terms (I quote only the material L.J. words) :— "If any . . . person, not being the proprietor . . . of copyright in any . .. drawing . . . , shall, without the consent of such proprietor, repeat, copy, colourably imitate, or otherwise multiply for sale, or distribution, or cause or procure to be repeated, copied, colourably imitated, or otherwise multiplied for sale or distribution, any such work or the design thereof ; or, " Knowing that any such repetition, copy, or other imiÂtation, has been unlawfully made, shall import into any part of the United Kingdom, or sell, publish, . . . or disÂtribute, . . . any repetition, copy, or imitation of the said work, or of the design thereof, made without such consent as aforesaid, such person, for every such offence, shall forfeit to the proprietor of the copyright . . . a sum not exceeding ten pounds ; and all such repetitions, copies, and imitations, made without such consent as aforesaid, and all negatives of photographs made for the purpose of obtaining such copies, shall be forfeited to the proprietors of the copyright." The defendants, having no knowledge of any unlawfulness in the transaction, certainly did not commit any offence against the second clause of this penal enactment, and that clause is material only for the purpose of interpreting the first clause. Notwithstanding the general repugnance of our law to the creation of any offence where there is no...