[Supreme Court of the District of Columbia. ]

MURRAY v. AGER ET AL.

Decided January Term, 1881.

20 O. G., 1311.

SALE OF PATENT BY ORDER OF COURT-TRUSTEE TO ASSIGN.

A court of equity may direct the sale of the interest of an inventor in his patent in order to satisfy a judgment obtained against him in a court of law, the writ of execution having been returned nulla bona, and for that purpose will require the patentee to make an assignment of the patent, as provided in section 4898 of the Revised Statutes of the United States, and in default of such assignment within a limited time will appoint a trustee, with authority to execute the same. Messrs. Hine & Thomas for the plaintiff.

Mr. T. T. Crittenden and Mr. Warrick Martin for the defendants.

Mr. Justice HAGNER delivered the opinion of the court:

The bill in this case is filed by Talbot C. Murray, alleging the recovery by him of a judgment on the law side of this court against the defendants, Wilson Ager and others, for $2,164.66. It avers that an ex. ecution was duly issued upon the judgment, which was returned nulla bona by the marshal; that the defendant, Wilson, Ager, is the inventor and owner of certain inventions secured to him by letters patent from the United States, which are described in the bill "for improvement in machines and processes for decorticating grain;" that the complainant is without any means of realizing his judgment, except by the subjection of the patent right to its payment, and, the bill prays that his rights as patentee may be sold under the decree of the court and the proceeds applied to the payment of the judgment; that an injunction may be granted to restrain the defendant, Wilson Ager, from selling or assigning the patents during the pendency of the suit, and that the defendant, after sale had been made, may be compelled to execute such assignment of the patents to the purchaser as may be necessary to vest the title in conformity with the patent laws of the United States.

The defendant's answer admits the rendition of the judgment, the return unsatisfied of the execution issued thereon, and that he is the owner of the patent rights described in the bill; but he claims that these are not subject to seizure and sale under the proceedings instituted by the complainant.

The court below passed a decree dismissing the bill, and the complainant appealed to this court.

The question involved in the case is one of great interest and of novelty, so far as we have been able to discover.

It is insisted upon the part of the patentee that the rights secured to him by his patent cannot be made the subject of sale by any process at law or in equity against his consent.

The Constitution, by article 1, section 8, declares that Congress shall

have power to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. In conformity with this provision a careful system of laws has been devised regulating the issue of patents and directing the mode in which they may be assigned. Section 4898 of the Revised Statutes declares that every such patent or interest therein shall be assignable in law by an instrument in writing, and that such assignment or conveyance shall be void as against any subsequent purchaser or mortgagee, for valuable consideration without notice, unless recorded in the Patent Office within three months from its date. Section 4896 prescribes the mode in which a patent may be issued to an executor or administrator of an inventor, in trust for his heirs at law or devisees, in case of the death of the patentee before the issue of the patent, and declares that the patent shall be enjoyed by his representatives or devisees in as full manner and on the same terms and conditions as it might have been enjoyed by the original patentee. Similar provisions exist in the statutes with reference to copyrights, which are declared to be assignable by an instrument in its prescribed form recorded in the office of the Librarian of Congress.

It is insisted upon the part of the patentee that it is well settled upon authority that the patent right in the hand of the inventor cannot be made the subject of sale under an execution at law, and the case in 14 Howard, 528, Stevens v. Cady, is relied upon as establishing this proposition. It is to be observed that the case refers to a copyright, and not to a patent right, and although it is intimated in the case of Stevens v. Gladding, in 17 Howard, 454, that there is no common law copyright in this country, it is well settled that there existed at the common law a marked distinction between the rights of an author to his writings and those of an inventor in his invention. The authorities declare that, independent of statute or of grant from the government, an author had a right to the exclusive publication of his writings while no such exclusive right existed, independent of statute, in an inventor. This last position is asserted by Judge Taney, in 10 Howard, Gaylor v. Wilder, who declares that an inventor has no exclusive right to his invention until he obtains a patent, and that no action could be maintained by an inventor against any one for using it before the issuing of the patent. The text-writers explain this distinction upon the idea that the writer creates something which had no existence until produced by himself, as the "Paradise Lost" could never have been written unless Milton had composed 'it; whereas an inventor, like a discoverer in astronomy or geography, only brings to light matters which had existed long previously, as the propulsive power of steam must have been discovered sooner or later if the attention of Watt had never been turned to the subject.

But conceding that patent rights and copyrights stand on the same footing, let us examine how the decision in 14 Howard controls the

present inquiry. The facts of that case are that the complainant took out a copyright of a map of the State of Rhode Island; that while engaged in publishing and selling the map, by virtue of the copyright, a judgment was recovered against him by a creditor, execution issued, and the copper-plate upon which the map in question was engraved was seized and sold by the sheriff to the defendant, who thereupon proceeded to strike from the plate copies of the map; and the prayer of the bill was that an injunction might be granted to restrain its printing and publishing in violation of the complainant's copyright.

The single question in the case, say the court, is whether or not the property acquired by the defendant in the copper-plate at the sheriff's sale carried with it, as an incident, the right to print and publish the map engraved upon its face. The Supreme Court declare that all that was sold by the sheriff was the piece of copper upon which the map was engraved; that the sheriff did not attempt to sell, and had no right to sell under the execution, the copyright.

The copyright is the exclusive right to the multiplication of the copies for the benefit of the author or his assignees, disconnected from the plate or any other physical existence. It is an incorporeal right to print and publish the map, or, as said by Lord Mansfield in Miller v. Taylor (4 Burr., 2396), a property in motion, and has no corporeal tangible substance.

The court proceeds:

The copper-plate engraving, like any other tangible personal property, is the subject of seizure and sale on execution, and the title passes to the purchaser the same as if made at a private sale; but the incorporeal right secured by the statute to the author to multiply copies of the map by the use of the plate being intangible and resting altogether in grant, is not the subject of seizure or sale by means of this process; certainly not at common law.

So far as this applies to copyrights, it seems explicit enough. But the court proceeds:

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No doubt the property may be reached by a creditor's bill and be applied to the payment of the debts of the author the same as stock of the debtor is reached and applied, the court compelling a transfer and sale of the stock for the benefit of the creditors. But in case of such a remedy we suppose it would be necessary for the court to compel a transfer to the purchaser in conformity with the requirement of the copyright. act in order to invest him with a complete title to the property." An assignment, therefore, that would invest the assignee with the property of the copyright according to the act of Congress must be in writing and signed in the presence of two witnesses, and it may be well doubted whether a transfer even by a sale under a decree of a court of chancery would pass the title so as to protect the purchaser unless by a conveyance in conformity with this requirement.

The bill in the present case is evidently framed in conformity with the suggestion in the opinion of the Supreme Court, and, as we understand it, is warranted by the deliberate judgment of that tribunal.

It is insisted, however, upon the part of the patentee that so much of the opinion as asserts that the copyright may be subjected to a decree in equity is obiter dictum, and that it is overruled in the subsequent case of Stevens v. Gladding (17 How., 450). That case arose under the same

state of facts and involved the same controversy which was determined in 14 Howard. It appears that under the opinion in 14 Howard the case was remanded to the circuit court for the district of Rhode Island. When the mandate arrived the judge who heard the case below had died, and when the case of Stevens v. Gladding was called, the counsel for the respondent desired to be heard, "though," as the judge states, "he frankly avowed that the question passed on in the former case was the only one which could now be raised."

We have examined that decision with care, and we can see nothing in it that can be considered as reversing the ruling in 14 Howard, which asserts, as we understand, the right to maintain such a bill as the present one. Judge Curtis, in his opinion, states that the positions assumed by the counsel of the judgment creditor are that copy and patent rights are subject to seizure and sale on execution; that whenever the owner of the copyright of a map causes a plate to be made which is capable of no beneficial use except to print his map, he thereby annexes to the plate the right to use it for printing the map, and also the right to publish and sell the copies and print it; and that when the plate is sold on execution these rights pass with the plate as incidents or accessories thereto, though no mention is made of them in the sale.

It is in reference to this contention that Judge Curtis uses the language which has been relied upon in behalf of the patentee in this case. He declares that there would be "great difficulty in assenting to the proposition that patent and copy rights held under the laws of the United States are subject to seizure and sale on execution." Not to repeat what he said on this subject in 14 Howard, 531, it may be added that these incorporeal rights do not subsist in any particular State or district-they are co-extensive with the United States. There is noth

ing in any act of Congress or in the nature of the rights themselves to give them locality anywhere so as to subject them to the process of courts having jurisdiction limited by the lines of States and districts; that an execution out of the court of common pleas for the county of Bristol, in the State of Massachusetts, can be levied on an incorporeal right subsisting in Rhode Island or New York will hardly be pretended; that by the levy of such an execution the entire right could be divided, and so much of it as might be exercised within the county of Bristol sold, would be a position subject to much difficulty.

It thus appears that the question alluded to by Judge Curtis is that which had been urged in argument by counsel, viz: the right to subject the copy and patent right to sale by execution at law, and that the difficulties suggested by the judge have reference only to the sale under such an execution. But the Supreme Court in the next sentence show that they do not design to decide even this point. Judge Curtis adds:

These are important questions, on which we do not find it necessary to express au opinion, because in this case neither the copyright as such nor any part of it was attempted to be sold.

And the judge proceeds to show that the only thing attempted to be sold by the sheriff was the right to the copper-plate on which the map had been engraved.

In a later part of the opinion the judge says:

For these reasons, as well as those stated in 14 Howard, our conclusion is that the mere ownership of the copper-plate of a map by the owner of the copyright does not attach to the plate the exclusive right of printing and publishing the map held under the act of Congress or any part thereof, but the incorporeal right subsists wholly separate from and independent of the plate, and does not pass with it by a sale thereof on execution.

The only questions beyond this which are discussed by the court are whether the prayer of the bill that the penalties imposed by the act of Congress shall be decreed against the purchaser, and whether there should be an account of the profits. We see nothing in the decision which in any way can be held as a withdrawal by the Supreme Court of the distinct assertion in 14 Howard that an interest under a copy or patent right can be subjected to the payment of the debts of the patentee by a proceeding in equity.

The argument ab inconveniente urged by Judge Curtis as a reason why such rights should not be considered as liable to seizure under an execu tion at law is invoked in the present case. It is insisted that the Constitution and laws passed are designed to secure to the inventor and author the rights to their inventions and writings, and that this provision would be nullified if those rights were subject to seizure in any way be creditors. But it is plain that the benefit designed by the constitutional provision would be no more destroyed by their sale for the payment of the inventor's creditors than by the voluntary sale by himself. If sold to pay his debts, he has already obtained the benefit of the grant as much as if sold of his own motion. It is clear that he would have the right voluntarily to sell his entire right in any, the remotest, portion of the country. Notwithstanding that those rights are co-extensive with the Union, they would pass to his personal representative or legatee, and could be subjected to the payment of the debts of such heir or devisee in any part of the country.

It was long ago settled, as far back as the case in 3 Bos. & Pul., 777, Hesse v. Stevenson, decided in 1803, that, independent of any provision in the English bankrupt law, the right of the patentee in an invention would pass as assets to his assignee in bankruptcy. Lord Alvanley, in delivering the opinion in the case, says:

But if the inventor avail himself of his knowledge and skill, and thereby acquire a beneficial interest which may be 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. We are therefore clearly of the opinion that the interest in the letters patent was an interest of such a nature as to be the subject of an assignment by the commissioners in bankruptcy.

And by the last bankrupt law, Revised Statutes of the United States, section 5046, patent rights and copyrights, with the other classes of