221 U. S.

Argument for Plaintiff in Error.

the authority to issue the subpoena duces tecum, Section 724 controls the production of book evidence from the adversary party at the trial and excludes all other modes of compelling production. Ex parte Fisk, 113 U. S. 713; Union Pacific R. R. Co. v. Botsford, 141 U. S. 250; Hanks Dental Assn. v. Tooth Crown Co., 194 U. S. 303.

The history of § 724 shows that its object was to provide in actions at law a method of obtaining inspection of books and papers analogous to discovery in equity. Owyhee Land Co. v. Tautphaus, 109 Fed. Rep. 547; Hylton's Lessee v. Brown, 1 Wash. C. C. 298; Finch v. Rikeman, 2 Blatch. 302.

In Blackstone's time the subpoena duces tecum was not available in actions at law for bringing into court the books of a party, and hence was not a writ "agreeable to the usages and principles of law," under § 14 of the Judiciary Act of 1789 (Rev. Stat., §716). In Merchants' Nat. Bank v. State Nat. Bank, 3 Cliff. 201, the court held that at common law parties could not be compelled to attend or by subpoena duces tecum to produce books. United States v. Reyburn, 6 Pet. 363; President &c. v. Hillard, 5 Cowen, 419.

In suits in equity resort has sometimes been had to subpœnas duces tecum to obtain from the adverse party production of books, as in Bischoffsheim v. Brown, 29 Fed. Rep. 341; Johnson Steel Co. v. North Branch Co., 48 Fed. Rep. 191, 195; Edison Elec. Co. v. U. S. Elec. Co., 44 Fed. Rep. 294; Same v. Same, 45 Fed. Rep. 55.. But see Gregory v. Chicago, M. & St. P. R. Co., 10 Fed. Rep. 529; Kirkpatrick v. Pope Mfg. Co., 61 Fed. Rep. 46.

Section 724 has not been modified expressly or by implication.

Section 860 is expressly applicable to actions for the enforcement of a penalty and prescribes that "No pleading of a party, nor any discovery or evidence obtained from a party or witness by means of a judicial proceed

ing

shall be given in evidence, or in any manner

used against him" in such an action.

Mr. Antonio Knauth for defendant in error.

MR. JUSTICE HUGHES delivered the opinion of the court.

This is a writ of error to review a judgment of the Circuit Court of Appeals affirming a judgment upon a verdict in favor of Emil Werckmeister, plaintiff below. The action was brought under § 4965, p. 959, ch. 3, of the United States Revised Statutes, to recover penalties for the infringement of a copyright. The subject of the copyright was the painting "Chorus," and the penalties demanded were for copies printed and sold by the Lithographic Company.

It is contended that the recovery was unauthorized by the statute, for the reason that the copies were not found in the defendant's possession. Section 4965, Rev. Stat.; 3 U. S. Comp. Stat., p. 3414, so far as material, provides: "SEC. 4965. If any person, after the recording of the title of any map, chart, dramatic or musical composition, print, cut, engraving, or photograph, or chromo, or of the description of any painting, drawing, statue,

engrave, etch, work, copy, print, pubor import, either in whole or in part,

or, knowing the same to be so printed, published, or imported, shall sell or expose to sale any copy of such map or other article, as aforesaid, he shall forfeit to the proprietor all the plates on which the same shall be copied, and every sheet thereof, either copied or printed, and shall further forfeit one dollar for every sheet of the same found in his possession, either printing, printed, copied, published, imported, or exposed for sale; and in case of a painting, statue, or statuary, he shall forfeit ten dollars for every copy of the same in his possession, or by him sold or exposed for sale."

The contention is "that the penalty attaches in the case of a painting only under the same conditions as in the case of a print; that the intent of the statute is to differentiate a painting from a print only in respect to the amount of the penalty, $1 in case of a print, and $10 in case of a painting; and that, in both cases, a finding in possession of the defendant is a condition precedent to the recovery of the penalty." It is further urged that only one action can be maintained for forfeiture of the copies and for the penalties, and that the action lies only against the person in whose possession the copies are found, and that the penalties are to be computed upon the number so found.

The argument fails to give effect to the express provision of the statute. Its words are "he shall forfeit ten dollars for every copy of the same in his possession, or by him sold or exposed for sale." No process of construction can override this explicit language. The prescribed forfeiture is not only for every copy found "in his possession," but, in the alternative, for every copy "by him sold." We need not search for the reason for the distinction between maps, charts, photographs, prints, etc., on the one hand, and paintings, statues and statuary on the other. The character of the latter suggests the basis; but the distinction is plainly made, and it must be given effect.

With respect to prints, photographs, etc., the money penalty for the acts defined is "one dollar for every sheet of the same found in his possession, either printing, printed, copied, published, imported, or exposed for sale." The words "found in his possession" limit the entire clause. And no penalty can be recovered in such case except for sheets found in the possession of the defendant. Bolles v. Outing Company, 175 U. S. 262.

The cases of American Tobacco Company v. Werckmeister, 207 U. S. 284, and Werckmeister v. American To

bacco Company, 207 U. S. 375, related to the same copyrighted painting that is involved here. In the first case there was a recovery in an action in the nature of replevin of 1196 sheets containing copies. The second action was brought to recover the money penalties for the sheets seized in the former action. The question was whether there could be two actions against the same party; one for the seizure of the sheets forfeited and another for the penalties, and it was held "that the statute contemplated but a single action in which the defendant should be brought into court, the plates and sheets seized and adjudicated to the owner of the copyright, and the penalty, provided for by the statute, recovered." See Hills & Company v. Hoover, 220 U. S. 334, 335. These decisions did not involve the determination that an action could not be brought to enforce the forfeiture prescribed by the statute in a case of the sale of copies of a copyrighted painting where there was no finding in possession, and hence no proceeding to forfeit copies so found. Here, there is no attempt to recover in a second action penalties which should have been embraced in a former action; and the recovery is based simply upon the forfeiture incurred by sales of the prohibited copies.

Assuming that the action for the penalties would lie, it is further contended by the defendant company that its rights under § 724, p. 137, c. 12, and § 860, p. 163, c. 17, of the Revised Statutes were violated by the compulsory production of its books and the reception in evidence of entries showing sales of infringing copies.

Without attempting to state in detail the proceedings which culminated in the introduction of the book entries in evidence, it is sufficient to say that after a review of the course of the trial, and of the directions and rulings of the court during its progress, we are satisfied that the enforced production of the books cannot properly be said to rest upon an order made under § 724, but that in fact they

were produced under a subpoena duces tecum served upon the company's officer.

But, it is urged, that the books were those of a party to the action, and hence that the limitations of § 724 must be deemed controlling; that in actions at law this section excludes all other modes of compelling production of books or writings by the adversary party.

Under § 14 of the Judiciary Act of 1789 (§ 716, Rev. Stat.), power was conferred upon the Federal courts to issue all writs not specially provided for by statute, which may be necessary for the exercise of their respective jurisdictions and agreeable to the practice and usages of law. This comprehended the authority to issue subpoenas duces tecum, for "the right to resort to means competent to compel the production of written, as well as oral, testimony, seems essential to the very existence and constitution of a court of common law." Amey v. Long, 9 East, 484. Section 724, which was originally § 15 of the Judiciary Act of 1789, was to meet the difficulty arising out of the rules relating to parties at common law and to provide, by motion, a substitute quoad hoc for a bill of discovery in aid of a legal action. Carpenter v. Winn, decided this day, ante, p. 533.

But by the act of July 2, 1864, c. 210, §3, 13 Stat. 351, it was provided that there should be "no exclusion of any witness on account of color, nor in civil actions because he is a party to, or interested in, the issue tried." This provision was continued in § 858 of the Revised Statutes. "The purpose of the act in making the parties competent was, except as to those named in the proviso, to put them upon a footing of equality with other witnesses, all to be admissible to testify for themselves and compellable to testify for the others." Texas v. Chiles, 21 Wall. 488, p. 492. Section 858 was amended by the act of June 29, 1906, ch. 3608 (34 Stat. 618), which refers the competency of witnesses in the courts of the VOL. CCXXI-39