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Published online by Cambridge University Press: 28 October 2011
Scholarly treatments of the history of early federal copyright litigation have overlooked what may be the earliest and must certainly be the most interesting decision of the period—Morse v. Reid, decided in the United States Circuit Court for the District of New York on April 4 and 6, 1798. Absent its identification in Wilfred J. Ritz's invaluable American Judicial Proceedings First Printed Before 1801, Morse v. Reid would probably remain unknown.
1. E.g., Ginsberg, , A Tale of Two Copyrights: Literary Property in Revolutionary France and America, 64 Tulane L. Rev. 991, 1004–1005 & nn. 58–60 (1990)Google Scholar; Kaplan, B., An Unhurried View of Copyright (1967).Google Scholar
2. (1984) at 139, ¦2.03(8). ProfessorRitz, cites to 5 Collections of the Massa Chusetts Historical Society 123 (1798)Google Scholar, which reports the case with substantial accuracy and advertises the plaintiff's several publications, including the one in controversy, The American Universal Geography.
3. 20 The Papers of Alexander Hamilton 11 & n.3. (Syrett, H. C ed. 1974)Google Scholar [hereinafter Alexander Hamilton] 26 id. at 856; The Law Practice of Alexander Hamilton (Goebel, J. ed. 1964–81).Google Scholar
4. “The case of Morse v. Reid was an injunction bill filed in 1796, to restrain the defendant from reprinting Winterbotham's History, which, the complainant alleged, was an invasion of the copyright of his American Geography. The propriety of the injunction was not questioned; it issued in the first instance. The complainant recovered 1,500 dollars, and the injunction was made perpetual.” 9 Johns. Rep. 507, 587–88 (1812). For a general discussion of the case, see Horton, J. T., Kent, James: A Study in Conservatism 1763–1847, at 166–75 (1939).Google Scholar
5. Kent, J., 2 Commentaries on American Law 309–10 (1827).Google Scholar
6. Conkling, A., A Treatise on the Organization, Jurisdiction and Practice of the Courts of the United States 57 n.b. (1831)Google Scholar
7. Morse v. Reed, 17 Fed. Cas. 873 (C.C.D.N.Y. 1796) (Case No. 9,860).
8. Kent, W., Memoirs and Letters of James Kent, LL.D. 74–83 (1898).Google Scholar
9. Id. at 117.
10. 4 Documentary History of the First Federal Congress of the United States of America 509–21, 522 (1986)Google Scholar [hereinafter First Federal Congress]. 1 Stat. 124; Solberg, T., Copyright in Congress 1789–1904, at 115 (1905).Google Scholar
11. Federal Copyright Records 1790–1800, at 74, 75 (J. Gilreath ed. 1987).
12. 22 Howell's State Trials 823, 875, 877, 906–8 (1817).
13. Sprague, W. B., The Life of Jedidiah Morse, D.D., 216–17 (1874)Google Scholar. The Stock-dale letter from which Sprague quotes has not been found. He also reports a failed effort by Noah Webster to intercede with the “offending party.”
14. Morse Family Papers, Yale University Library.
15. Deposition of John Tiebout, sworn to February 1,1798 (Case File, Morse v. Reid, United States Federal Archives and Record Center, Bayonne, N.J.). John Reid, the defendant, whose deposition was sworn the following day, placed both the engagement of Tiebout and O'Brien and much of the printing in 1794. Given the sequence of events in both England and America, Tiebout's dates seem more reliable.
16. The bibliographical history of this four-volume work in the United States is not without other complexities. There survive at the American Antiquarian Society in Worcester, Mass., the first two volumes of the book, as issued in parts as a “Volume The First” and “Volume The Second,” with the short title set out above and publication dates of 1795; the first volume is said to have been: “Printed by Tiebout and O'Brien For J. Reid, L. Wayland and C. Smith, and sold by Thomas Stephens, No. 57, Second Street, Philadelphia and All Other Book Sellers Throughout the United States” but the second only “Printed by Tiebout and O'Brien for John Reid and Charles Smith.” Volume 1 contains a portrait of George Washington as its frontispiece, but the two volumes are otherwise unillustrated.
No edition in parts of volumes 3 and 4 has been located. There is, however, a four-volume “First American Edition, with Additions and Corrections,” retitled An Historical, Geographical, Commercial and Philosophical View of the United States of America and of the European Settlements in America and the West-Indies, and “printed by Tiebout and O'Brien for John Reid, Bookseller and Stationer,” with a 1796 publication date. There also survives at the New York Public Library, but lacking the George Washington frontispiece, a volume 1 “Printed by Tiebout and O'Brien for Thomas Stephens, Philadelphia,” with a 1796 publication date.
This 1796 edition differs from the inparts volumes at the American Antiquarian Society by the inclusions of a different portrait of Washington as the frontispiece for volume 1 and of the author's preface from the London edition, significantly minus its last paragraph. In addition, there are a further illustration bound into volume 1 and two illustrations, including a frontispiece of William Penn, bound into volume 2. Nevertheless, although Levi Wayland had dropped off the title page of volume 2 of the inparts edition and Smith was gone as well by the time of the 1796 “First American Edition,” several of the plates in volumes 3 and 4 of the latter edition bear the legend “Published by Smith, Reid and Wayland New-York.”
Finally, in 1796 John Reid also published The American Atlas, which is bibliographically linked to his 1796 edition of Winterbotham by the legend on its maps of Connecticut and Rhode Island “Engraved for the American Edition of Winterbotham's America.” The atlas, now a collector's prize if found intact, played no part in Morse v. Reid.
17. 20 Alexander Hamilton, supra note 3, at 11 n.3.
18. In the matter of the illustrations, “faithful” must be a relative term because of unexplained variations among copies of the English edition. For example, a number of illustrations in volume 4 have elaborate backgrounds in certain copies of the English edition, but not in others; in one case, the caption varies as well. Moreover, the variations differ even among the few examples of the English edition reviewed by the author of this paper.
19. 20 Alexander Hamilton, supra note 3, at 11.
20. Noah Webster to Jedidiah Morse, April 23, 1796, Morse Family Papers. Kent's letter of May 12, 1796, to Morse explained the lack of progress by the fact that “the Supreme court of this state has been constantly Sitting from the beginning of April til last Saturday evening & gave us no respite til then[.]” Id.
21. 2 Stat. 89, 3 Stat. 481. Had Morse sued for the statutory penalty for infringement of copyright, it seems probable that his action could have been brought in a United States district court under the jurisdictional grant of section 9 of the Judiciary Act of 1789 for “all suits for penalties and forfeitures incurred, under the laws of the United States.” Cf. United States v. Mann, 26 Fed. Cas. 1153 (C.C.D.N.H. 1812) (Case No. 15, 718).
22. Livingston v. Van Ingen, 15 Fed. Cas. 697 (C.C.D.N.Y. 1811) (Fed. Cas. No. 8,420). Justice Livingston was unwilling to presume the existence of equitable jurisdiction from the specific statutory grant of jurisdiction to award damages for patent infringement.
23. 4 First Federal Congress, supra note 10, at 523. The act authorized actions for damages and injunctive relief only in the case of the publication of a manuscript without the author's consent but not for infringement of the copyright of a published work.
24. James Kent to Jedidiah Morse, May 12, 1796, Morse Family Papers. The precedents for the “summary remedy by injunction” are undoubtedly the English cases cited by Kent in Livingston v. Van Ingen, supra, 9 Johns. Rep. at 585–87.
25. 9 Johns. Rep. at 587–88, quoted supra note 4.
26. “The subpoena or process from the Equity side of the federal court issued as you know last summer returnable at the then next circuit court to be holden in this city the 5th of Sept. On that day the process was returned by the Sergeant at Arms served & within the time prescribed the defendant entered his appearance & procured a copy of our Bill. The time is expired in which he ought to put in his answer on Oath & I called before I received your last letter on Mr Harrison his principal counsel, who told me the answer would be exhibited as soon as he possibly could. If he does not answer it, I am entitled to an attachment against the defendant for that default, but he will answer, I expect every day. The delay is owing to the pressure of Mr Harrison's business, nor are a few days material one way or the other. The circuit court does not sit again until the 5th of next April, as the act of Congress allows but two courts a year in this state, the 5th of Sept. and the 5th of April. Proceedings of course & of necessity are slow. I hope & trust the cause will be matured so as to receive some decision [illeg. word] by the next court.” James Kent to Jedidiah Morse, November 14, 1796, Morse Family Papers.
27. Circuit court minute book, April 8, 1797, Federal Archives and Records Center, Bayonne.
28. James Kent to Jedidiah Morse, April 17, 1797, Morse Family Papers.
29. J. T. Horton, supra note 4, at 115–16. 1 Diary of William Dunlap 149, 151 (1930) (September 30, 1797: “Wm Johnson drinks tea with us & I attend club with him it being his night. Kent, Smith, Johnson & me made the little party but it was very pleasant”).
30. Federal Copyright Records, supra note 11, at 105–9. Haifa century late, Kent would condemn Smith as “a terrible free thinker.” J.T. Horton, supra note 4, at 116.188.
31. James Kent to Jedidiah Morse, July 28, 1797, Morse Family Papers.
32. Case File, Morse v. Reid. This section of the report concludes: “Some pages are from a former edition of Morse's Geography; none of which are comprised in the pages above referred to – Having omitted all such parts of the book of the Complainant, as appeared to be transcribed or taken from other books, & noting only such parts as we supposed strictly original, & which are copied almost verbatim into the Book published by the Defendant.”
33. It may be that Kent had learned, as many lawyers still do, that no client is more demanding than one who pays no fee.
34. Jedidiah Morse to Elizabeth Ann Breese Morse, August 31, 1797, Morse Family Papers. A second such letter is dated August 29, 1797.
35. Circuit court minute book, September 5, 1797.
36. Case File, Morse v. Reid. See note 15, supra.
37. This sworn testimony, coupled with a limited review of the existing American versions of the work discussed supra at note 16, leads to the surmise that there was but a single printing of the text of the four volumes by Tiebout and O'Brien, and that the variations among these editions depend solely on the binding in of different title pages, an edited version of Winterbotham's introduction to the London edition and additional (and different) illustrations. This conclusion is substantially supported by the existence, in the New York State Library in Albany, of a “pamphlet” consisting of the last sixty pages of volume 4, the George Washington frontispiece for volume 1, the title and contents pages for all four volumes, the introduction, a list of subscribers and directions to the binder.
38. James Kent to Jedidiah Morse, February 26, 1798 (Courtesy of the New York Historical Society). Evidently concerned about Hamilton's attentiveness to detail, Kent continued: “[L]lest his attention to the more formal parts of your suit not be close Enough, I intend to leave the superintendence of your suit as well as the other business of mine remaining unfinished to Jacob Radcliff Esq of this city, a lawyer of probity, diligence & good sense….” Radcliff followed Kent to the Supreme Court in late December 1798, resigning in 1804 to serve as Mayor of New York.
39. Case File, Morse v. Reid.
40. Circuit court minute book, April 4, 1798. The case file also contains what appears to be Dunscomb's rough notes of the order that became the minute entry. In the notes there is an asterisk after the words “1700 Copies” and at the bottom of the page another asterisk and the words “Shall these words be added,—being Part of an Edition of 3000 copies.”
41. Circuit court minute book, April 6, 1798.
42. W. B. Sprague, supra note 13, at 218.
43. 12 Statutes at Large 82 (1764).
44. 8 Journals of Congress 189 (1800).
45. These statutes are collected in Copyright Office, Copyright Enactments: Laws Passed in the United States Since 1783 Relating to Copyright 1–21 (1963).
46. The Maryland statute does not indicate to whom the monetary penalty is to be paid.
47. Story, J., 2 Commentaries on Equity Jurisprudence §§794–99 (13th ed. 1886).Google Scholar
48. 4 First Federal Congress, supra note 10, at 513. The bill, introduced at the first session of Congress but postponed until the second, provides further evidence of the discrimination of Congress in creating remedies in the legislation subsequently enacted. As proposed, the bill provided not only the per-page penalty forfeiture (with the amount left blank) later included in the Copyright Act, it similarly limited recoveries for patent infringement to “the sum of [left blank] over and besides the full value of the thing or things so devised.”
49. Id., 1620, 1621; 1 Stat. 111.
50. Act of February 21, 1793, 1 Stat. 318; Act of April 17, 1800, 2 Stat. 37; Act of July 14, 1836, 5 Stat. 117.
51. Livingston v. Woodruff, 56 U.S. 546, 558–60 (1853). An extended review of the differences in remedies at law and in equity in patent cases may be found in Root v. Railway Co., 105 U.S. 189, 207–8 (1881), which also confirms that the English rule in copyright cases limited recoveries in equity to the extent of the defendant's profit, not the plaintiff's loss.
52. Stevens v. Gladding, 58 U.S. 447, 454–55 (1854).
53. Beckford v. Hood, 7 T.R. 620, 101 Eng. Rep. 1164 (1798).
54. Donaldson v. Beckett, 2 Brown 129, 1 Eng. Rep. 837 (1774).
55. 11 U.S. (7 Cranch) 32 (1812).
56. 33 U.S. 591, 658 (1834). For the intramural passions engendered by this action by the former Reporter of the decisions of the Supreme Court against the incumbent, see White, G.E., 3–4 The Oliver Wendell Holmes Devise History of the Supreme Court of the United States: The Marshall Court and Cultural Change, 1815–35, at 415–24.Google Scholar
57. 210 U.S. 356 (1908).
58. Act of July 8, 1870, §§99, 100, 16 Stat. 198.
59. Id. at 362–64.
60. Act of July 8,1870 §55,16 Stat. 198. The same remedy was extended in copyright cases by section 25 of the act of March 4, 1909, 35 Stat. 1075, and is now codified as 17 U.S.C. §504(b).
61. Presser, S. B., The Original Misunderstanding (1991)Google Scholar; see note 8, supra. See also Fletcher, , The General Common Law and Section 34 of the Judiciary Act of 1789: The Example of Marine Insurance, 97 Harv. L. Rev. 1513, 1555–57 (1984).CrossRefGoogle Scholar
62. 5 U.S. (1 Cranch) 137 (1803).
63. Bloch, & Marcus, , John Marshall's Selective Use of History in Marbury v. Madison, 1986 Wisc. L. Rev. 301, 327–31 (1986).Google Scholar
64. United States v. More, 7 U.S. (3 Cranch) 159 (1805); Gordan, United States v. Joseph Ravara, in Origins of the Federal Judiciary: Essays on the Judiciary Act of 1789, at 106, 135–37 (M. Marcus ed. 1992).
65. 3 U.S. (Dallas) 1, 3–4 (1794); United States v. Morris, 26 Fed. Cas. 1323, 1334 (CCD. Mass. 1851) (No. 15,815). Sparfand Hansen v. United States, 156 U.S. 51, 110, 157 (1895) (dissenting opinion of Gray and Shiras, JJ.); M. Marcus and J. R. Scperry, The Documentary History of the Supreme Court of the United States, 1789–1800, Vol. 1, Appointments and Proceedings: 220–23 (1985). Nor is it the only instance of a jury trial in the Supreme Court. See, e.g., id. at 233–34 [Oswald v. New York (1795)].
66. Holt, , The First Meeting of the Federal Circuit Court in New York: A Federal Common Law of Crimes?, Second Circuit Redbook 1990–91, Supplement 119 (1990)Google Scholar; Preyer, , Jurisdiction to Punish: Federal Authority, Federalism and the Common Law of Crime in the Early Republic, 4 L. Hist. Rev. 223, 246–48, 253–60 & n.127 (1986)CrossRefGoogle Scholar; Gordan, supra note 64.
67. Compare Preyer, supra note 66, at 231 with Jay, , Origins of Federal Common Law: Part One, 133 U. Pa. L. Rev. 1003,1052 n.243 (1985)CrossRefGoogle Scholar; Holt, , “To Establish Justice”: Politics, The Judiciary Act of 1789 and the Invention of the Federal Courts, 1989 Duke L. Screv. 1421, 1501–2 & n.286 (1989)CrossRefGoogle Scholar; Hoffer, P.C., The Law's Conscience 102–3 & n.76, 119 n.44 (1990).Google Scholar