December 7th, 1854
[Affirmed, 6 De G. M. & G. 223; 43 E. R. 1218 (with note, to which add London Printing and Publishing Alliance v. Cox Ltd. [1891], 3 Ch. 297; Griffith v. Tower Publishing Co. Ltd. [1897], 1 Ch. 21; Jude v. Reid, 1906, 22 T. L. R. 750).]
Agreement between Author and Publisher - Copyright - Injunction
An agreement in writing between an author and certain publishers, that they should print, reprint and publish his book, upon condition that the author should prepare it all before a certain day, and should correct the press, and that the publishers should direct the mode of printing and pay all the expenses and take all the risk of publishing, and out of the produce should first repay such expenses and then divide the profits between themselves and the author equally; and that, if all the copies should be sold and a new edition should be required, the author should prepare the same, and the publishers should print and publish it on the same conditions; and that, if all the copies of any edition should not be sold in five years from the time of publication, the publishers might sell the remaining copies by auction or otherwise, in order to close the account: Held, to be a personal contract by the author, and not a contract for an assignment of his copyright; and that, therefore, the benefit thereof could not be assigned by the publishers.
One of the publishers having retired from the partnership, another person was admitted, and subsequently the remaining partner, who had been a party to the contract, became bankrupt, and his assignees and the new partner, more than five years after the publication of the work, sold and assigned the remaining copies of it and all benefit of the contract to the Plaintiffs. Afterwards the author, not knowing of this assignment, prepared a new edition for other persons trading in the name of the original firm, who were cognisant of it; and an application for an injunction by the purchasers of the interest of the original firm was refused, but without costs.
Mr. Forsyth, having written a book intitled "A Treatise on the Law Relating to Composition with Creditors," on the 4th of December 1840 signed a memorandum of agreement of that date, made between himself of the one part and Robert Saunders and William Benning, law booksellers, of the other part, by which he, as the author of such book, agreed with the said Robert Saunders and William Benning that they should print, reprint and publish the same on the following conditions, to which they also agreed: First. That Mr. Forsyth should fully prepare the whole of the said book for the press on or before the 1st of June 1841; and that he would correct the proof sheets, and superintend the printing thereof. 2. That the said Robert Saunders and William Benning should direct the mode of printing the said book, and should bear and pay all the charges thereof, and of publishing the same (except as thereafter mentioned), and should take all the risk of the publication on themselves. 3. That the said Robert Saunders and William Benning should, out of the produce of the sale of the said book, in the first instance be refunded all the charges and expenses which they should have incurred respecting the said book, after which the profits should be equally divided between Mr. Forsyth and the said Robert [169] Saunders and William Benning. 4. That the accounts should be made up at the end of every year, and the profits, if any, be then divided. 5. That the said Robert Saunders and William Benning should account for all the copies which they should sell of the said book, at the wholesale booksellers' price, deducting therefrom a commission of £7, 10s. per centum, they taking the risk of all credits which they should give on the same. 6. That alterations and corrections in the proof sheets and revises which should exceed the charge of 8s. per sheet should be borne and paid by the said William Forsyth, and should be deducted out of his share of the profits. 7. That, in case all the copies of the said book should have been sold off, and a second or any subsequent edition of the said book be required by the public, the said William Forsyth should make all necessary alterations and additions thereto: and the said Robert Saunders and William Benning should print the second and every subsequent edition of the said book on the above conditions. 8. That, in case all the copies of any edition of the said work should not be sold off within five years after the time of publication, the said Robert Saunders and William Benning should be at full liberty to dispose of the remaining copies so unsold, either by public auction or private sale, or in such a manner as they might deem most advisable, so that the account might be finally settled and closed.
The first edition of the book was printed and published by Messrs. Robert Saunders and William Benning in 1841 in pursuance of this agreement.
Afterwards Mr. Saunders retired from the trade, and thereupon Mr Benning and one John Kirton Gilliat entered into partnership together in the same business under the style or firm of "William Benning & Co."
In the year 1844 William Benning and John Kirton [170] Gilliat, as such co-partners, printed and published a second edition of the same book, revised by the author; and in 1849 they published a reissue of this edition with a supplement containing the new statutes.
On the 20th of August 1851 William Benning was adjudged a bankrupt.
By indentures, dated respectively the 17th of July 1852 and the 16th of August 1854, John Kirton Gilliat and the assignees of William Benning, for valuable consideration, assigned to Messrs. Stevens & Norton, their executors, administrators and assigns, all the copyright or sole and exclusive right, privilege and liberty of printing, reprinting, publishing and vending the several books, pamphlets, works and other publications therein mentioned, which included the publication in question, and all and singular the copyrights, and parts or shares of and interests in copyright, and rights and privileges of printing, reprinting, publishing and vending any books, pamphlets and other publications, and all agreements with any authors, editors or proprietors of books, pamphlets or publications of, to or in which the said late firm of William Benning & Co. at the time of the said bankruptcy were possessed, entitled or in any manner interested, and all the right, title and interest whatsoever of the said parties to and in the said respective copyrights, parts or shares of copyright, agreements and other rights, privileges and premises, to have and to hold the said copyrights and other premises unto Messrs. Stevens & Norton, their executors, administrators and assigns, absolutely, for their own use and benefit; and Messrs. Stevens & Norton covenanted with the said assignees to take upon themselves the liabilities and engagements of the said late firm of William Benning & Co. in manner therein mentioned.
About 400 copies of the unsold second edition of Mr. [171] Forsyth's book were delivered to Messrs. Stevens & Norton pursuant to these assignments, and they entered the work at Stationers' Hall.
William Granger Benning, the son of William Benning, carrying on business as a law bookseller, had lately published a third edition of the work in question, which Mr. Forsyth had edited without any knowledge of the transactions between Mr. William Benning's assignees or Mr. Gilliat and Messrs. Stevens & Norton.
The members of the latter firm now filed the bill in this suit against Mr. William Granger Benning and Mr. Forsyth for an account of the profits of the third edition of the book, and an injunction to restrain Mr. William Granger Benning, his partners, servants and agents, from publishing and exposing for sale, and from selling, parting with, or otherwise disposing of any copies of the third or any subsequent edition of the said book or treatise, called "Forsyth on Composition with Creditors," and also from advertising the publication, or the intended or prospective publication of the third or any subsequent edition of the said book or treatise, and that he might be decreed to deliver up to the Plaintiffs to be cancelled all such copies of the said third edition of the said book or treatise as were unsold or undisposed of and in his possession or power.
Mr. Rolt, Q.C., Mr. J. T. Humphrey and Mr. Cairns, for the motion. The Plaintiffs purchased the second edition of this book, and therefore have a right to restrain the publication of a third edition, which will interfere with the subject of their purchase until the whole of this edition is sold, as in Sweet v. Cater (11 Sim. 572).
[172]Then the whole benefit of the agreement is here assigned, and there is nothing in the nature of the agreement which prevents it from being assignable. The agreement here was, in fact, for the sale of the copyright, for copyright is only the author's right to his manuscript copy (8 Ann. c. 19): Donaldson v. Beckett (2 B. P. C. 129; 15 & 16 Vict. c. 45). The assignees in bankruptcy of Benning could maintain a suit for an injunction: Mawman v. Tegg (2 Russ. 355). At least, the Plaintiffs are entitled to be protected until the remaining copies are sold.
Mr. James, Q.C., Mr. Piggott and Mr. Hindmarsh, contra. This agreement was not for the assignment of any copyright, but was a mere personal contract which was not assignable: Robson v. Drummond (2 B. & Ad. 303); it created a species of joint ownership, and Messrs. Saunders & Benning were publishers upon commission by the terms of it. The agreement only related to the first edition. Directly all the copies of that edition were sold, as they were, to Messrs. Saunders & Benning, the right of the author became absolute; for the Plaintiffs could not take advantage of the seventh clause of the agreement, nor could Mr. Forsyth compel them; and the third edition was accordingly prepared by him for a new firm under a fresh contract. The sale to the Plaintiffs was as complete a disposal of the edition so sold as if the remaining copies had been sold by auction.
Then there was no proper assignment to Gilliat if this was an assignable interest; for an assignment of a copyright must be by writing: Power v. Walker (3 M. & Selw. 7). And the Court will not exercise its extraordinary jurisdiction unless the Plaintiff's title is clear.
[173] THE VICE-CHANCELLOR Sir W. PAGE WOOD. This is a case of considerable importance to publishers, with reference to their contracts with authors; though I think publishers must be very careless if they are in the habit of taking contracts so imperfectly framed as this is as a mode of acquiring the copyright of their publications. It would also be a matter of serious consequence to authors if I were to hold that contracts in this form amount to such a parting with the copyright of a book as to deprive the author of control over it for ever afterwards.
I think it is probable that Mr. Forsyth considered that might be the effect of this particular contract; and, so long as the work is in the hands of respectable publishers, the question is not of great moment to him. In the contract, however, no mention is made of copyright, which is a right so well known and defined that I should expect, if it was intended to part with it, the intention would have been clearly expressed. However, such an intention may be inferred; and it is argued that it must necessarily be inferred here, because Mr. Forsyth agreed that Messrs. Saunders & Benning should "print, reprint and publish" his work upon certain conditions, of which one was that, if any further edition should be required, as soon as the first and subsequent editions were sold, Mr. Forsyth would make all the necessary alterations and additions thereto, and the publishers would print and publish every subsequent edition, upon certain specified conditions; and they were to have the power of selling by auction or otherwise all copies unsold five years after the date of publication. The conditions in favour of the publishers are that they were to have the sole control of the mode of printing and publishing, taking all the risk; and, after deducting the charges and expenses incurred, they were to give Mr. Forsyth one-half of the profits, and to account with him in a certain manner. The most that I could infer [174] upon this contract, as to its equitable effect in favour of Messrs. Saunders & Benning, if they were now before me, would be that, during its subsistence, they performing all the conditions on their part, Mr. Forsyth would not be at liberty to transfer to any other person the right of printing and publishing this work, nor himself to conduct the publication of it through other hands.
Then it is argued that the sole power of printing, reprinting and publishing is, in fact, the copyright. And no doubt, if an author, in consideration of a sum of money paid to him, agrees that certain persons shall have the sole power of printing, reprinting and publishing a certain work for all time, that would be parting with the copyright; but if the agreement is that the publishers, performing certain conditions on their part, should, so long as they do perform such conditions, have the right of printing and publishing the book, that is a very different agreement. The legitimate inference from this contract is that, so long as the publishers duly and properly perform their duty with reference to all that they have engaged to do, Mr. Forsyth should not be at liberty to defeat the benefit of his own agreement by publishing a new edition before the former editions are sold off. As the Vice-Chancellor observed, in Sweet v. Cater (11 Sim. 572), by such an agreement, although not an assignment of the copyright, the author would incur obligations, and therefore could not interfere with the interest acquired by the publishers under it.
The principal question then is whether this agreement is a personal engagement or not. It would be difficult for me to say that, in a contract of this kind, the author is utterly indifferent into whose hands his interests under such an engagement are to be entrusted. It is not merely a question [175] of his literary interests, but certain publishers undertaking to incur the expenses of bringing out the work and fixing the price, the author is to have a share of the profits, and they are to decide in what shape the book is to come out, and at what price it is to be sold, and are to account with him. I must say that, in my opinion, these are peculiarly personal considerations; and that this contract bears the impress of being a personal contract in all these respects. It could not be a matter of indifference to Mr. Forsyth that the assignees in bankruptcy of Mr. Benning should be at liberty to transfer the future right of fixing the price of this and subsequent editions, and the right to call upon him to fulfil his duty of preparing a new edition, and the risk which might be incurred in conducting it, and the other benefits and obligations of the agreement, to anyone they might think proper, possibly to some one not even carrying on the trade of a bookseller, as might happen in case of an absolute sale to the best bidder. Regarding the agreement as a contract for the purchase of a limited right, according to the view of the Vice-Chancellor of England in Sweet v. Cater (11 Sim. 572), it is still impossible that it should be indifferent to Mr. Forsyth that it should pass from a respectable firm in London to booksellers residing in a remote part of the country, or to other persons unable to fulfil the engagements entered into with him. The contract, therefore, is one which involves personal considerations; and, framed as it is, I must regard it as a special kind of agency, under which the agents were bound to sell, and to take the risk of there being no profits upon themselves.
I do not follow the argument that, with reference to a mere sale of property, it cannot in any case be considered such a personal confidence as that no other person than [176] the contracting party is to be at liberty to perform the duty incurred. Take, for instance, the case of a merchant in the West Indies consigning goods to a person in London, for the purpose of having them sold there, such person alone would have a right to sell them. I do not see how the question of lien arises. Of course, the persons entrusted with the sale would have a lien, and that would pass to their assignees on their bankruptcy; but it would be a new doctrine to hold, if a person had engaged with an eminent firm to sell sugars or other goods for him during a period say of five years, that, on the bankruptcy of such firm, their assignees could sell the benefit of such an agreement for the remainder of the five years. The question which struck me, and on which I desired to hear the Defendant's counsel, was whether, combining the clause of the agreement which obliges the publishers to incur all the expenses of printing and publishing with the last clause, which provides that, in case all the copies of any edition should not be sold off within five years after the time of publication, they might sell them by auction or otherwise, the result was not, that when once an edition of the book had been printed, and all the expenses incurred, the publishers might have a right in that edition somewhat similar to that recognised in Sweet v. Cater (11 Sim. 572), so that they might contend that, having incurred all the liabilities, and having performed their duty by doing everything necessary on their part to bring the book into the market, they had a right, until they realised their profit, to prevent the author from interfering with them by bringing into the market anything which might deteriorate the value of what they had on hand, and that, therefore, no new edition of the work should be published which would destroy the value of the former one. I still think that Messrs. Saunders & Benning, suing under this agreement, and shewing that they had performed their part and were ready to continue to do so, would be entitled to [177] prevent Mr. Forsyth from disposing of a third edition of his work until they had sold the preceding edition. But the case here is a very different one. It is not necessary for me even to say what would be the position of the assignees in bankruptcy in this case. I think it would be very possible for the assignees, disposing of the remaining copies of this work as part of the bankrupt's effects, as they might properly do, if they could prove clearly that no disadvantage would thereby be occasioned to Mr. Forsyth, and if they made such sale within a reasonable time, to sustain a suit for an injunction under similar circumstances. The case here, however, is different. Mr. Benning's assignees and Mr. Gilliat have disposed of this property to the present Plaintiffs; and they now say that the rights under the agreement have been transferred to them, and that they are, therefore, entitled to prevent Mr. Forsyth from selling or disposing of a third edition of this book. If that be the correct view, I must hold that every right which Messrs. Saunders & Benning had under the agreement has passed to the present Plaintiffs, and that they have a right to call upon Mr. Forsyth to publish a new edition, and have been put in all respects in the place of Messrs. Saunders & Benning; and that this personal agreement, as I must consider it, has been transferred to these Plaintiffs, with whom Mr. Forsyth has entered into no contract. In the particular case before me, if that were so, of course Mr. Forsyth would be in as good hands as he was before, but that can make no difference in the law of the case. The assignees were not bound to take care to whom they sold the property, their only duty being to get the best price they could for it; and if any other gentleman, in a remote part of the country, or even residing abroad, had been the purchaser they would have been at liberty to part with it to him; in which last case the purchaser could not have interfered with Mr. Forsyth in bringing out a new edition. Mr. Forsyth's letters seem to shew that he was entirely ignorant of the assignment to the Plaintiffs.
[178] I feel sure that, if he had known all the circumstances, the course which has been adopted would not have been taken. There is no doubt, however, that William Granger Benning was aware of the assignment by Gilliat and the assignees at the time of his entering into the fresh contract with Mr. Forsyth. I shall, therefore, refuse this motion without costs.
Since the above case was in type, it has been affirmed by the Lords Justices. [6 De G. M. & G. 223.]
6 De G. M. & G. 223.
before the Lords Justices
December 21st, 1854; January 12th, 1855
[S. C. 3 Eq. Rep. 457: 24 L. J. Ch.153; 1 Jur. N. S. 74; 3 W. R. 149; 1 K. & J. 168. Followed, Hole v. Bradbury, 1879, 12 Ch. D. 886.]
Publishers agreed with an author to print, reprint and publish a work by him at their own risk, on the terms of dividing equally with him any profits that there might be after payment of all expenses: and that if all the copies should be sold and another edition should be required, the author should make all necessary alterations and additions, and the publishers should print and publish a second and subsequent editions on the same terms. After the publication of the first edition the firm of the publishers was changed, and the interest of the old firm in the work was expressed to be assigned to the new firm. The author prepared and the new firm published a second edition without any new agreement being entered into. Afterwards, a partner in the new firm (the only remaining member of the old firm) became bankrupt, and his assignees, with the solvent partner, sold and assigned to other law publishers all the interest of the firm in the work and all the unsold copies. Held, that the purchasers had no share in the copyright of the work, and were not entitled to an injunction to restrain the publication of a third edition by another publisher with the author's concurrence, the agreement being held to be of a personal nature on both sides, and the benefit of it not assignable by either party without the other's consent.
This was an appeal from the decision of Vice-Chancellor Wood refusing a motion for an injunction to restrain the publication by the defendant William Granger Benning of a third edition of "Forsyth on the Law of Composition with Creditors."
By an agreement dated the 4th December, 1840, made between Mr. Forsyth, the author of the work, of the one part, and Robert Saunders and William Benning, publishers, of the other part, Mr. Forsyth agreed with the said Robert Saunders and William Benning that the said Robert Saunders and William Benning should print, reprint and publish the work on the following conditions, to which they also agreed:- That the said William Forsyth should fully prepare the whole of the said book for the press on or before the 1st day of June 1841; and that he would correct the proof sheets, and superintend the printing thereof. 2dly. That the said Robert Saunders and William Benning should direct the mode of printing the said book, and should bear and pay all the charges thereof, and of publishing the same (except as thereafter mentioned), and should take all the risk [224] of the publication on themselves. 3dly. That the said Robert Saunders and William Benning should, out of the produce of the sale of the said book, in the first instance be refunded all the charges and expenses which they should have incurred respecting the said book, after which the profits should be equally divided between Mr. Forsyth and the said Robert Saunders and William Benning. 4thly. That the accounts should be made up at the end of every year, and the profits, if any, be then divided. 5thly. That the said Robert Saunders and William Benning should account for all the copies which they should sell of the said book, at the wholesale booksellers' price, deducting therefrom a commission of £7, 10s. per centum, they taking the risk of all credits which they should give on the same. 6thly. That alterations and corrections in the proof sheets and revises which should exceed the charge of 8s. per sheet should be borne and paid by the said William Forsyth, and should be deducted out of his share of the profits. 7thly. That, in case all the copies of the said book should have been sold off, and a second or any subsequent edition of the said book be required by the public, the said William Forsyth should make all necessary alterations and additions thereto: and the said Robert Saunders and William Benning should print the second and every subsequent edition of the said book on the above conditions. 8thly. That, in case all the copies of any edition of the said work should not be sold off within five years after the time of publication, the said Robert Saunders and William Benning should be at full liberty to dispose of the remaining copies so unsold, either by public auction or private sale, or in such a manner as they might deem most advisable, so that the account might be finally settled and closed.
In 1841 the first edition of the book was published. [225] Afterwards, the partnership between Robert Saunders and William Benning was dissolved by the retirement of the former, and a new partnership was formed between William Benning and John Kirton Gilliat under the firm of "William Benning & Co.," whereupon the interest of the former firm in the work in question (among others) was expressed to be transferred to and vested in the new firm.
In 1849 Mr. Forsyth prepared a second edition of the work, which was printed and published by the firm of William Benning & Co. without any fresh agreement having been entered into.
In 1851 the partnership of William Benning & Co. was dissolved by the bankruptcy of William Benning.
By an indenture dated the 17th July 1852 Mr. Gilliat, in consideration of £6500, assigned to the Plaintiffs Messrs. Stevens & Norton, law publishers, all Mr. Gilliat's interest in the copyright or shares of copyright of the works specified in a schedule to the deed (which comprised Mr. Forsyth's work) with the MSS. and unsold copies of the several works then in the possession of Mr. Gilliat, and all things pertaining to the copyright and shares of copyright of which the late firm of William Benning & Co. were possessed of or interested in and over which Mr. Gilliat had any power of disposition, but so far only as Mr. Gilliat could lawfully grant the same.
On the 16th of August 1854, a further deed of assignment was executed by Mr. Gilliat and the assignees of Mr. Benning, whereby they assigned to the Plaintiffs all the copyright, parts or shares of copyright, agreements and other rights and privileges in any publications, and [226] all agreements with any authors, editors or proprietors of books and publications of or to which the late firm of William Benning & Co. were at the time of the bankruptcy of Mr. Benning possessed, entitled or in any manner interested.
Pursuant to these deeds all the stock-in-trade of the firm of William Benning & Co. was delivered to the Plaintiffs, including all the unsold copies of the second edition of "Forsyth on Composition with Creditors," of which the Plaintiffs had still 400 on hand.
In 1854 the Defendant William Granger Benning, a son of William Benning, published a third edition of the work edited by Mr. Forsyth, whereupon the present suit was instituted, and the motion for an injunction made, from the refusal of which the present appeal was brought. The case is reported below in the first volume of Messrs. Kay and Johnson's Reports (page 168).
Mr. Rolt, Mr. J. T. Humphrey and Mr. Cairns, for the Appellants. First, the agreement in this case is in substance an assignment of the copyright. By it one who has an exclusive right to print a work gives to others the right of printing and reprinting it. That is an assignment of a copyright. It is not necessary that the word "copyright" should be used, and in fact that term is not employed at all in the Act 8 Anne, c. 19, which first created the right. The words of the statute are the "sole liberty of printing."
Secondly. If the Court should not think that the copyright was assigned, then the agreement was one for a [227] partnership, which determined on the bankruptcy of one of the partners. His assignees and one of the solvent partners assigned their interest in the partnership property as upon a dissolution they had a right to do. The remaining partner could not be permitted to appropriate to himself or destroy the partnership property. [THE LORD JUSTICE KNIGHT BRUCE. But the bill does not ask for the appointment of a receiver, nor does the notice of motion state that application will be made for one.] That might have been the correct course if the sales of the new edition had been a proper exercise of the powers of one of the partners in the late partnership. But it was altogether an improper proceeding.
Lastly, we submit that, even if neither of these views could be supported, and the contract ought to be regarded as the Vice-Chancellor has considered it, in the light of one of agency, still the agents here had contracted to take all the risk of loss upon themselves, and the principal could not after entering into such an agreement bring out an edition in competition with that which was the subject of such an agreement. If he could, the booksellers might have incurred all the expense, and within a week lose all the benefit. [THE LORD JUSTICE KNIGHT BRUCE. Would you permit one of your servants to assign his place?] If he had paid me for it I could not give his profits to another. But the cases we submit are not at all analogous. [THE LORD JUSTICE KNIGHT BRUCE. Suppose the agreement had been assigned to a music publisher?] That might have afforded possibly an equity, but in this case the purchasers of the benefit of the agreement are as competent to execute their part as the original publishers were, when it was entered into, and no complaint is or could be made of them. [THE LORD JUSTICE TURNER. What remedy would Mr. Forsyth have against Messrs. [228] Stevens and Norton if they would not publish a new edition according to the agreement?] Such a refusal might also possibly give an equity, but no such case has arisen.
They referred to Millar v. Taylor (4 Burr. 2303); Power v. Walker (4 Campb. 8); Power v. Walker (3 Mau. & S. 7); Donaldson v. Beckett (2 Bro. P. C. 129); Morris v. Colman (18 Ves. 437); Rundell v. Murray (Jacob, 311); Sweet v. Cator (11 Sim. 572); Lumley v. Wagner (1 De G. Mac. & G. 604).
Their Lordships took time to consider whether they would call upon Mr. W. M. James, Mr. Piggott and Mr. Hindmarch, who appeared for the Respondents.
January 12th, 1855. THE LORD JUSTICE KNIGHT BRUCE. This application was one by way of appeal from the refusal of a motion made by the Plaintiffs before the Vice-Chancellor Wood for an injunction. It was an injunction alone, not a receiver, that he and ourselves were asked to grant. Indeed, a receiver is not prayed by the bill, and the motions were interlocutory merely.
In acceding as I do to the propriety of the course taken by the Vice-Chancellor, I consider it as perfectly consistent with the notion that the Plaintiffs may have some ground of claim under the agreement of December 1840, on which their bill is founded;- may be entitled to have an account or to maintain an action or actions against one or both of the Defendants. The only question, I repeat, with which we are dealing is one of granting or not granting [229] an interlocutory injunction; and for that purpose it must be observed that such interest, if any, in the copyright of Mr. Forsyth's work on "Composition with Creditors," as the other parties to the agreement acquired under it, they acquired, I apprehend, not exclusively of Mr. Forsyth, but by way of joint adventure with him or of partnership with him, in respect and for the objects of which he undertook the fulfilment, by himself personally, of certain duties to them, and they undertook the fulfilment by themselves personally of certain duties to him; nor, on either side, without the consent of the other, could there be a vicarious performance, a performance by deputy or by assignee, of the duties thus undertaken. At least, so I understand the instrument and the matter; nor do I see that the duties were on either side of such a nature as that their performance specifically could have been enforced by a Court of Equity. My impression, therefore, is, that, had Messrs. Saunders and Benning, parties to the agreement of 1840, retained their original position and rights under it, they could not successfully have asked an injunction against Mr. Forsyth, such as that prayed by the bill before us.
If this opinion is correct, the present Plaintiffs clearly cannot do so, but if incorrect, it does not necessarily follow that such an injunction ought to be granted to them. For in them, however trustworthy, Mr. Forsyth has not agreed or intended to place confidence:- with them, however respectable, he has not consented to associate himself. In the way of specific performance, there must be at least as much difficulty between him and them as between him and the other parties to the agreement of 1840.
I do not assert that the Plaintiffs have not, or that they have, been wronged. If wronged, they may proceed for [230] damages or compensation, or an account, but any such injunction as that now sought seems to me plainly impossible. The appeal, not supported in my judgment by Morris v. Colman (18 Ves. 437), or Lumley v. Wagner (1 De G. Mac. & G. 604), (cases which I do not question) appears to me opposed by a great body of binding authority, as well as by principle, and one of course to be dismissed with costs.
THE LORD JUSTICE TURNER. The question in this case arises upon a motion for an injunction to restrain the publication of a book. The Plaintiff's case was rested wholly on the agreement of the 4th of December 1840. [His Lordship read it.]
Three points were raised in argument. First, that the agreement amounted to a valid assignment of the copyright of the work. Secondly, that if it did not amount to an assignment, it constituted a partnership between Mr. Forsyth and Messrs. Saunders and Benning in the copyright, and that the Plaintiffs are the assigns of the interest of Messrs. Saunders and Benning. Thirdly, it was said, that if it were neither an assignment nor a partnership, still there was a personal equity against Mr. Forsyth which would operate against the other Defendant claiming under him, to protect the unsold copies of the second edition of the book in question.
It is clear, on looking at the agreement, that it does not amount to an assignment of the copyright. All its provisions have reference to the printing and publishing the work, and to the mode of paying the expenses to be incurred. Clauses 1 and 2 of the agreement provide that Mr. Forsyth shall prepare the book for the press, and correct the proof sheets, and that Messrs. Saunders and Benning shall direct the printing and publishing, and bear all the charges and expenses. The end of the [231] second clause, and the four succeeding clauses, relate to the expenses and the mode of sale. The seventh clause relates to the conditions upon which a second and subsequent editions of the work are to be published, and these conditions refer back again to the mode of printing and publishing, and the mode in which the expenses are to be paid. The eighth clause provides for the closing of the account in a particular event. That clause shews that the agreement was not intended to operate as an assignment of the copyright, as it merely contains a provision for closing the account between them in respect of the interest in the copies of the work, and making no reference to the copyright. I think, therefore, that the agreement is not an assignment of the copyright.
Next, if there was a partnership, then if the agreement does not affect the copyright, the partnership was not in the copyright, but in the copies printed under the licence contained in the agreement. In that case the Court has nothing to do with the question of partnership, except as regards the unsold copies.
It was, however, said that there was a personal equity against Mr. Forsyth operating in this mode; that Mr. Forsyth could not, as between him and Messrs. Saunders and Benning, have permitted a third edition of the work to be issued whilst copies of the second remained unsold under the agreement. How the case would have stood if Messrs. Saunders and Benning had remained in a position to perform their part of the agreement, I need not give any opinion, but if there was a personal equity on one side, there must also be one on the other. If Messrs. Saunders and Benning are not in a situation to perform their personal part of the contract, neither in my view of the case could they in equity enforce as against Mr. Forsyth any contract which he had entered into with [232] them, and I think that the Plaintiffs, who are the assigns of Messrs. Saunders and Benning, can be in no better position than Messrs. Saunders and Benning.
It is quite clear that the view taken by the Vice-Chancellor is the correct view of the case, and that the appeal motion must be dismissed with costs. The costs of the proceedings before the Vice-Chancellor will be costs in the cause.
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