Arguments before the Committee on Patents of the House of Representatives Part 52

My client, the Automusic Perforating Company, has a plant that cost $50,000. That mechanism is adapted to perforating rolls, and if they should use that mechanism in perforating 500 rolls with perfect right, and then inadvertently use that mechanism in perforating one roll that was held to infringe, under this bill their whole plant would be cleared out of their place and would be destroyed.

Gentlemen, that is so surprising a proposition that I presume it may be of interest to know the origin of it. The patent laws of England provide that, at the discretion of the court, infringing material may be destroyed. That is because the Parliament of England is not subject to any const.i.tutional limitations, and can pa.s.s any kind of a law that it pleases. Mr. Justice Gray knew more about the laws of England than he did about the laws of America; and at one time, one of the two times when he was deciding a patent case while he was on the bench, he ran across an English decision in which it was held that the infringing goods might be destroyed. And then, by way of obiter dictum, without having the slightest occasion to do so, he wrote into the decision an obiter dictum to the effect that that was the law of this country. But the judges of the circuit courts know better, and never have enforced that obiter dictum. And if they were to enforce it they would violate two or three provisions of the Const.i.tution, among others that no person shall be deprived of property without due process of law.

But the authors of this provision, taking the hint from that obiter dictum of Justice Gray, have not only applied it to the same matter that Judge Gray applied it to, namely, the infringing thing itself, but to the entire plant of the infringer.

(At this point it was announced that Mr. Walker's time was up.)

Mr. WALKER. I promised to stop at the end of an hour, and I will do so.

The CHAIRMAN. Can you finish what you desire to say regarding the provisions of this bill in five minutes additional?

Mr. WALKER. Well, I can talk five minutes; I ought to have ten.

[Laughter.]

The CHAIRMAN. We will give you five minutes more because of the interruptions.

Mr. WALKER. Yes.

Section 30, in respect to this matter of importations--I am now speaking on behalf of the gentlemen, no one of whom I know, namely, those who desire to be protected in this country against the compet.i.tion of the labor of Europe in getting up copyrighted books.

Section 30 reads:

That during the existence of the American copyright in any book the importation into the United States of any foreign edition or editions thereof (although authorized by the author or proprietor) not printed from type set within the limits of the United States or from plates made therefrom, or any plates of the same not made from type set within the limits of the United States, or any editions thereof produced by lithographic process not performed within the limits of the United States, in accordance with the requirements of section 13 of this act, shall be, and is hereby, prohibited.

Now, gentlemen of the committee, that prohibition does not amount to a row of pins. It is as void as is the atmosphere around the North Pole at Christmas time of all human interest, because, although one would suppose by a superficial reading that it put a fence up around all parts of the lot, it leaves at least half the sides of the lot entirely uninclosed. Thus, it prohibits nothing except the importation of an entire edition. Now, somebody may say: "No; it is not an entire edition it is aimed at, but only one specimen of the edition."

But I say in response to that, that that language "Edition or editions"

is taken out of the present statute, and in the present statute the words "edition or editions" are confined in their meaning to entire editions by the circ.u.mstance that the present statute prohibits also the importation of individual copies. So that if Congress were to enact that section, and it should come before a court, the lawyer for the defendant would say: "It is perfectly plain that Congress intended to change the law. Formerly, in its wisdom, it prohibited the importation of an edition or editions, and also the importation of individual copies. Now it has expressly left out prohibition of the importation of individual copies and prohibited only the importation of an entire edition," and there would not be any answer whatever to that argument.

Mr. SULZER. Then, in the interest of the working people of the United States, you would prefer to have the law left just as it is now?

Mr. WALKER. That would be much better than this; but I would strengthen that law. I know how to strengthen it, and I----

Mr. SULZER. Will you tell us, briefly, how you would strengthen the present law?

Mr. WALKER. Yes; I would do it by amending this section in three places, very simply, if the stenographer will take this down.

Mr. SULZER. He takes everything down.

Mr. WALKER. Very well. I propose that section 30 be amended in the interest of American mechanics by subst.i.tuting the word "copy" for the words "edition or editions" in line 5 of page 23. Then in line 9 of that section----

Mr. SULZER. "Or any part thereof?"

Mr. WALKER. Wait a moment--and by subst.i.tuting the word "copy" for the word "editions" in line 9 of page 23; and by subst.i.tuting the words "any other" for the word "lithographic" in line 10 of page 23. Now, with those amendments, every door would be closed, and the American mechanic would be protected at every point.

Mr. SULZER. Would that preclude any part of that edition being imported?

Mr. WALKER. It would, because that language, "or any part thereof," is contained elsewhere.

Section 32: There is a statement that--

all actions arising under the copyright laws of the United States shall be originally cognizable by the circuit courts of the United States, the district court of any Territory, the supreme court of the District of Columbia, the district courts of Alaska, Hawaii, and Porto Rico, and the courts of first instance of the Philippine Islands.

Gentlemen, one of the compet.i.tors of the gentlemen before me wrote an opera, and that was George Ade, and in this opera he inserted this witticism:

The Const.i.tution may follow the flag, but the c.o.c.ktail is sure to.

We are told by the Supreme Court that the Const.i.tution does not follow the flag necessarily; it follows it if Congress sends it there. Now, if in the wisdom of Congress the copyright law should be extended to Hawaii, Porto Rico, and the Philippine Islands, that can be accomplished only by a statute expressing that intention. And the statement that the courts in those outlying regions shall have jurisdiction of copyright cases amounts to nothing unless you extend the copyright laws to those portions of the earth's surface. I am not in favor of doing it; but if you want to make copyrights effective in those outlying regions you must do so by express enactment.

Here is a more important matter:

Actions arising under this act may be inst.i.tuted in the district of which the defendant is an inhabitant, or in the district where the violation of any provision of this act has occurred.

That ought to be amended by subst.i.tuting the word "his" for the word "the," because as it reads now you can sue a man for somebody else's infringement.

Mr. CHANEY. So that it would read "his violation?"

Mr. WALKER. Yes; subst.i.tute "his" for "the." Then there should be added to that section this language: "And wherein the defendant has a regular and established place of business."

The public policy involved in that point has been threshed out for many years in patent cases; and in patent cases it has been found to be unjust to compel anybody to submit to an action for infringement of a patent in any district unless it be in the district of which he is an inhabitant, or a district where he has a regular and established place of business. You can not sue somebody for infringing a patent merely by proving that he did formerly infringe that patent in a particular district away from home, or by finding him in that particular place. You can not go to Chicago and sue a New York man for infringing a patent on the allegation that a year or so ago he did infringe that patent in the northern district of Illinois, unless you prove also that he has a regular and established place of business in Chicago. No man ought to be sued for infringing a copyright except in the district where he resides; or, lacking that, in the district where he is engaged in business.

Mr. CHANEY. Then you would favor the defendant rather than the complainant in such a case?

Mr. WALKER. No; I would be just to both; and my proposition is deduced from the present patent statute, and that patent statute is deduced from considerations of justice as they have worked out during fifty years of patent litigation as on the whole being most equitable.

Section 35 provides that "In all recoveries under this act full costs shall be allowed."

That ought to be amended by subst.i.tuting the word "actions" for the word "recoveries," so as to permit recovery in behalf of a successful defendant as well as in behalf of a successful complainant; and the word "full" ought to be erased, and these words ought to be added "in accordance with law," so that the section would read:

That in all actions under this act, costs shall be allowed in accordance with law;

and the law that would be put into operation by that amendment would be those general statutes of the United States which relate to the taxation of costs in all litigations in the United States courts.

Here is a bad section, 43--

That in place of the original instrument of a.s.signment there may be sent for record a true copy of the same, duly certified as such by any official authorized to take an acknowledgment to a deed.

That opens the door wide to fraud, because hardly anything is easier than to get a notary public to certify that one doc.u.ment is a copy of another, particularly where he is acting in a capacity outside of his office, and therefore would not be liable for any inconvenience or penalty if the certificate should turn out to be false. So here is a proposition to make the owners.h.i.+p of a copyright depend upon the record in the copyright office of an alleged copy of an a.s.signment, which alleged copy may be fraudulent, and if fraudulent then resulting in no punishment to the wrongdoer.

Mr. CHANEY. You would confine that to some other official, then; would you?

Mr. WALKER. No; I would take it out altogether, and leave it as in patent cases--that only originals are ent.i.tled to be recorded. Such a thing as allowing a copy of an a.s.signment of a patent or a copyright to be recorded in the place of the original is entirely unknown, and it would open the door widely to fraud.

The CHAIRMAN. Your time has expired, Mr. Walker.

Mr. WALKER. Yes. I wish to express my thanks to the committee for hearing me so long and so patiently, and to express my best wishes for the future of the bill, and my own entire willingness to contribute, if I am found to be competent to contribute, to the perfection of the bill hereafter.

Senator SMOOT. Mr. Walker, I have been wondering, for the hour that you have been delivering your intelligent speech here, on what basis your congratulations were extended to Mr. Putnam and other persons who took part in the preparation of this bill. [Laughter.]

Mr. WALKER. Why, I am surprised that you did not see that.