U. S. District Court.-Stevens v. Gladding and another.

a copy right. (Webb v. Powers, 2 Woodbury and Minot; see cases like decisions as to the recording of patent rights, as between a patentee and a purchaser, 2 Story's Reports, 609; Case of Modern, 2 Wood. and Min.; Curtis on Patents, 227; 2 Newff. Rep. Halden & Curtis.) In this case the sale was between these parties in a legal view, the sheriff acting for Stevens, and the question arising between him and the purchaser, and not as to third persons without notice. It is of yearly occurrence, too, that copy and patent rights pass by bequest, and yet the bequest is not recorded in the Patent Office.

Again, the Act of Congress applies to the sale of a portion of a patent right itself, and not of a machine or manufacture, as passing with them merely a right to use these last in the ordinary way. These sales are not meant to be required to be in writing, are not so usually in practice; and it would be very vexatious to require them to be.

It is a mistake, also, to suppose that copy rights themselves, or patents, are not assignable sometimes, except in writing, or by voluntary act of the patentee. When they pass to executors or admini strators, it is without writing, and when they pass to creditors by a levy, it is often not voluntary, and if under the bankrupt law, it is, at times, without any writing.

The Act of Congress refers to sales by the patentee under contract, as just adverted to. The writing is provided for there, too, for the sale of a separate and independent copyright, or a part of one; and not for a whole or a part as incidental to a machine or a plate and connected with these, and as if under a practical license to use them.

A license to use a copyright or a patent right, need not be either in writing or recorded, (see cases post); so in all sales of patented articles, it is not necessary, as already shown, to reduce to writing and record the transfer of them, or of the patent right to the articles made and sold.

The sale of the article is universally decreed a sale of the patent right to use it, or in other words, a license to use it. That is the principle of the transaction. Any other restricted views would embarrass the business of the whole community, and be most fatal to patentees and authors themselves. In any other view, the materials and machinery to make a patent medicine might be bought with no right to make it, or the medicine itself be purchased with no right to swallow it. Hence, by a mere public sale or license, many patent rights, and doubtless some copyrights, are daily used, and legally used.

A parol license is enough to authorize a printing and publishing, now, of a manuscript of another. (2 Merivale, 434; Jacob's Rep. 34.) Here, then, at all events, the sale by the sheriff for Stevens, may well be considered a license in law, if not in fact, by the agent of both parties, for the purchaser to use the plate and engraving and the maps struck from them. And there is nothing in the patent laws or in sound principle which should, between the parties, avoid such a license, when given as here, for a good consideration, because it was done by parol or not recorded. (Power v. Walker, 3 Mant. &

U. S. District Court.-Stevens v. Gladding and another.

Selling, 7; 4 Camp. N. P. 8; 2 Stark, 336; 2 Story's Rep. 525; Curtis on Patents, secs. 195, 197; Woodworth v. Woodby, 3 Wood. & Minot, and cases there cited.)

Something is said of a consent in writing and attested, being required to justify from a penalty one who prints and sells a copyright book of another, (see sec. 6 of Act 4 Statutes at Large, 437,) but this is where the person printing and selling is not entitled to do it, or is acting entirely without right or title, in any way in point of law. He must then have such a writing to exhonorate him. That is not this case.

Indeed, if an actual conveyance from the author of the map was, in a case like this, necessary to pass the right to a purchaser to use the plate in striking off copies, there would be strong equity in a court of Chancery, to make it on a state of facts such as exists here.

In conclusion-By these views it will be seen, that a sale of this plate, and the incidental right to use it, with the engraving on it, is deemed as valid as if made by Stevens in person, and that Stevens, in such a sale without a written assignment, recorded in the proper office, must, in point of law, be considered as giving his consent or license to this use of the plate, through the sale of it by the sheriff for his benefit, and for a reasonable consideration paid for both the use and the plate by the defendant; nor can such a use of it, as before shown, injure the rights or interests of Stevens, but, on the contrary, increases their value. He is left to exercise all the rights not parted with on that occasion, and probably is still using, or preparing to use them, with another plate, nothing having passed from him but this particular plate, and the engraving on it, and the right or license to use them, which was incident to and involved in them, and fully paid for.

It is stated in the bill that this plate had been used for some years, the demand for maps from it chiefly supplied, and the plaintiff was preparing to complete another plate with improved materials and in better style. Now, if after all this, if after a quasi license to use, no less than a sale of his old plate to a third person for a valuable consideration, by an agent appointed by law, the author thinks proper to revoke the license, it will be seen hereafter that no court of equity can countenance it as if it was equitable and just, by lending to such an attempt an extraordinary remedy in equity, unless there was mistake or surprise, and unless the sum paid to him, or the officer for him, is first refunded. But before examining the last considerations, there seems to be another ground set up against the sale by the sheriff, which comes under the present head, and this is, that a copyright or patent right are not liable at all for the debts of an author or patentee. But it has been deliberately decided that a patent for making paper out of straw, &c., passed by operation of law to pay the debts of a bankrupt, in respect to such a patent, obtained even after bankruptcy. Lord Alvanley, Ch. J., says in Herse v. Stevenson, (3 Boss. & Pull, 478,) but if he avail himself of his knowledge and skill, and thereby acquire a beneficial interest "which may be

U. S. District Court.-Stevens v. Gladding and another.

the subject of assignment, I cannot frame to myself an argument why that interest should not pass in the same manner as any other property . acquired by his personal industry."

"The plaintiff here was none the less a debtor than if a bankrupt law existed, nor were the defendants any the less purchasers for the creditors, nor should any of his property of any kind, and especially his personal estate, be withheld from creditors any more than under a bankrupt law." (1 Gallison, 485.)

This idea may have arisen from the circumstance that once a manuscript was not regarded as passing to assignees or creditors, but that rested on particular reasons. (Burroughs, 2394-7; Curtis on Copyright, 85, note 86. See a provision in our own statute on this.) But now, by 5 and 6 Victoria, ch. 45, all the copyrights are made personal property, and may be bequeathed or distributed like other personal property. (Curtis, 218, n.) A copyright now clearly passes to assignees of a bankrupt. (2 Russel, 385, 392; 17 Ves. 338; 2 New Reports, 67; Curtis on Copyright, 231; Longman v. Tripp, 5 Bos. & P., 70.)

The case of Sir Walter Scott, copyright going towards the discharge of his debts, is familiarly known to most of the literary world.

I understand from my colleague, who will soon present his views, that he does not concur in mine, that the right to use this plate in striking off copies of the map passed to the defendant by the sale.

But there is another question arising in the case yet to be considered and before referred to, on which I believe we do not differ, that is, whether the extraordinary mode of relief by injunction asked here in equity, ought to be granted, where the title is in controversy, without a previous offer to restore the money paid by the sale of the plate.

A party in chancery, who seeks equity, must first do equity; and till the rights, if contested, are settled by an action at law, it does not seem just to interfere, unless the complainant, at least, offers in his bill to pay back what he or his agent, the officer in his behalf, has received of the respondent for the plaintiff and his creditors. (Woodworth v. Woodbury, 4 Wood. & Minot, or Curtis.)

Should the complainant be willing to do this, and move to amend his bill for that purpose, it can be allowed, and there then would be some plausable ground for this relief asked for, though not a very decisive one till it is settled at law that the right to the use of the engraving on the plate did not pass with the plate itself. (Platt v. Button, 17 Ves. 447.) But it would seem palpably unjust in equity to let the complainant retain the right in a contested and very doubtful case, for which he has been paid through the sheriff, and not refund the money thus received. (Walcot v. Walker, 7 Ves. 1; Millar v. Taylor, Burr. 2401.)

The plaintiff declined to make any amendment, or to restore the money received, the application for an injunction was therefore overruled, and the bill dismissed.

N. Y. Superior Court.-Kanouse v. Martin.

N. P. Superior Court:

Before DUER, MASON, and CAMPBELL, Justices.

CORNELIUS KANOUSE V. JOHN M. MARTIN.

In an action of assumpsit, commenced in New-York Common Pleas by declaration, in which the plaintiff claimed $1000. The plaintiff being a citizen of New-York, and the defendant a citizen of New Jersey, the defendant made application under the 12th section of the U. States Judieiary Act, of 1789, for the removal of the cause to the Circuit Court of the United States, and offered the surety required by law. After the presentment and filing of his petition for that purpose, the court permitted the plaintiff to amend his declaration by reducing his claim below $500, and denied the motion for removal. The defendant suffered judgment to be rendered against him by default, and brought a writ of error. The return made by the court below to the writ, was the judgment-record, which made no mention of the original declaration, or of the petition, but contained merely the declaration as amended, and the proceedings subsequent to the amendment. The plaintiff in error put in a special assignment of errors, alleging diminution, and brought up by certiorari the original declaration, the petition, and all the other proceedings that were not contained in the judment-record: Held, that the matters thus brought up by the certiorari were extrinsic, and collateral proceedings were inconsistent with the record, and could not be noticed by the appellate court for any purpose whatever: Held also, that the defendant below should have pleaded to the jurisdiction, and not having done so, he could not raise the objection upon writ of

error.

THIS was an action of assumpsit, commenced in New-York Common Pleas by declaration, in which the plaintiff claimed $1000. The plaintiff being a citizen of New-York, and the defendant a citizen of New Jersey, the defendant made application under the 12th section of the U. States Judiciary Act, of 1789, for the removal of the cause to the Circut Court of the United States, and offered the surety required by law. After the presentment and filing of his petition for that purpose, the court permitted the plaintiff to amend his declaration by reducing his claim below $500, and denied the motion for removal. The defendant suffered judgment to be rendered against him by default, and brought a writ of error. The return made by the court below to the writ, was the judgment-record, which made no mention of the original declaration, or of the petition, but contained merely the declaration as amended, and the proceedings subsequent to the amendment. The plaintiff in error put in a special assignment of errors, alleging diminution, and brought up by certiorari the original declaration, the petition, and all the other proceedings that were not contained in the judgment-record.

A. S. Garr, for the plaintiff, made and argued the following points :

1. Upon a writ of error from a Court of Common Pleas to the Supreme Court, it is the right and duty of the latter court to correct every substantial error in law, which, upon examination of the whole record, shall appear to have been committed by the court below, to the

N Y. Superior Court.-Kanouse v. Martin.

prejudice of the plaintiff in error. And whether such error appear in the judgment record proper, or in the other proceedings in the court below that are brought before the Supreme Court by certiorari, is wholly immaterial. (Co. Litt., 288 b.; 3 Bl. Comm. 406-7; Stephen on Pleading, 1st ed. 140, 141; Graham on Jurisdiction, 237-8; Per Walworth, C., in Campbell v. Stakes, 2 Wend. 145.)

II. The defendant below had, by law, a right to remove the cause to the Circuit Court of the U. S. (12th sec. Judiciary Act of 1789; Gordon v. Longest, 16 Peters, 97.

III. The defendant exercised that right in the manner and at the time prescribed by law. He could not do it by a formal plea to the jurisdiction, for the statute directs it to be done by petition. The petition signed and sworn to by himself was filed at the time of his appearance in the cause; and whether such appearance was by an attorney of the court, or in person, is unimportant.

IV. By the filing of the petition, and the offer of the surety prescribed by the statute, (on the 18th of September,) the defendant's right to a removal of the cause was perfectly and absolutely vested; and it thereupon instantly became "the duty of the court to accept the surety, and procecd no further in the cause." (12th Sec. Judiciary Act.)

V. The court below erred in afterwards receiving (on the 1st of October) an affidavit of the plaintiff, reducing his claim below $500, and thereupon denying (on the 6th of October) the application for removal, (Error Book, fol 73,) because:

1. The affidavit did not deny any of the facts alleged in the petition, but went merely to vary or contradict what the plaintiff had stated on record, by the declaration.

2. By the words in the statute, "to be made to appear to the satisfaction of the court," it was not intended to authorize the state courts to disregard the rules of evidence. Those words were inserted, be-. cause, in the generality of cases, the process by which the defendant is brought into court does not show the amount of the matter in dispute. In this case, the declaration was the process, and the rule is, that in actions of damages, if there be a declaration in the cause, the sum claimed in the declaration is the sole criterion by which to determine the amount in dispute. (Martin v. Taylor, 1 Wash. C. C.. Rep. 2; Muns v. Dupont, 2 Ib. 463; Sherman v. Clark, 3 McLean's Rep. 91, Read's; 1 Kent's Comm. 6th ed. 302, note b; Scott v. Lunt's Adm'r, 6 Peters, 349; Gordon v. Longest, 16 Ib. 97; Smets v. Williams, 4 Paige, 364; Shotwell v. Daniels, 8 Johns. Rep. 341; Opinion of Judges Nelson and Betts, in Martin v. Kanouse, U. S. Circuit Court, April 25, 1846.

3. It is only where property, and not damages, is the matter in dispute, that the court, for the purpose of determining the amount, looks at any evidence beyond the declaration. In such a case, the court will receive affidavits, in order to ascertain the value. (Cook v. Woodrow, 5 Cranch, 13.)

4. The Act of Congress does not provide, that the state court.