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Vol. II.)

LAWRENCE v. Dana.

[No. 9.

that it is a legal defence where it appears that the party setting it up has invaded a copyright. Cary v. Faden, 5 Ves. 23; Reade v. Lacy, supra; Bramwell v. Halcomb, 3 Myl. & Cr. 738. Few judges have devised safer rules upon the subject than Judge Story. He held that, to constitute an invasion of copyright, it was not necessary that the whole of a work should be copied, nor even a large portion of it, in form or substance; that if so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another, that is sufficient in point of law to constitute an infringement; that, in deciding questions of this sort, courts must “ look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects of the original work.” Folsom v. Marsh, supra. Mere honest intention on the part of the appropriator will not suffice, said Vice-chancellor Wood, as the court can only look at the result, and not at the intention in the man's mind at the time of doing the act complained of, and he must be presumed to intend all that the publication of his work effects. Scott v. Stanford, supra; Hodges v. Welsh, 2 Irish Eq. R. 266. Twenty years before that decision was made Mr. Curtis, in his valuable work on the law of copyright, expressed the same views, and this court entertains no doubt they are correct. Curtis on C. 240. Recent decisions afford more ample protection to copyright than those of an earlier date, and they also restrict the privilege of the subsequent writer or compiler in respect to the use of the matter protected by the copyright within narrower limits. Express decision in Kelley v. Morris, Law Rep. 1 Eq. 697, is, that in the case of a map, guide-book, or directory, or the like, where there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to do for himself that which was done by the first compiler; that he is not entitled to take one word of the information published without independently working out the matter for himself so as to arrive at the same result from the same common sources of information; and that the only use he can make of a previous publication of that kind is to verify his own calculations and results when obtained. Rights secured by copyright are property within the meaning of the law of copyright, and whoever invades that property beyond the privilege conceded to subsequent authors commits a tort, and is liable to an action. None of these rules of decision are inconsistent with the privilege of a subsequent writer to make what is called a fair use of a prior publication ; but their effect undoubtedly is to limit that privilege so that it shall not be exercised to an extent to work substantial injury to the property which is under the legal protection of copyright. Reviewers may make extracts sufficient to show the merits or demerits of the work, but they cannot so exercise the privilege as to supersede the original book. Sufficient may be taken to give a correct view of the whole, but the privilege of making extracts is limited to those objects, and cannot be exercised to such an extent that the review shall become a substitute for the book reviewed. Story v. Holcombe, 4 McLean, 309. Examined as a question of strict law, apart from exceptional cases, the privilege of fair use accorded to a subsequent

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Vol. II.]

LAWRENCE v. Dana.

(No. 9.

writer must be such, and such only, as will not cause substantial injury to · the proprietor of the first publication ; but cases frequently arise in which, though there is some injury, yet equity will not interpose by injunction to prevent the further use, as where the amount copied is small and of little value, if there is no proof of bad motive, or where there is a well founded doubt as to the legal title, or where there has been long acquiescence in the infringement, or culpable laches and negligence in seeking redress, especially if it appear that the delay has misled the respondent. Sweet v. Cater, 11 Sim. 580; Tinsley v. Lacy, supra; Spiers v. Brown, supra ; Strahan y. Graham, 15 W. R. 487; Bramwell v. Halcomb, 3 Myl. & Cr. 738; Reade v. Lacy, supra; Jerrold v. Houlston, 3 Kay & Johns. 717; Lewis v. Fullerton, 2 Beav. 6; Bell v. Whitehead, 17 L. T. 141; Curtis on C. 326; Saunders v. Smith, 3 Myl. and Cr. 711.

Guided by the rules of law, as already explained, the court, after having examined the whole case with care, is of the opinion that many of the notes presented in the edition edited by the respondent, whose case is under consideration, do infringe the corresponding notes in the two editions edited and annotated by the complainant, and that the respondent borrowed very largely the arrangement of the antecedent edition, as well as the mode in which the notes in that edition are combined and connected with the text. Judge Story held, in the case of Emerson v. Davies, 3 Story, 780, that every author had a copyright in the plan, arrangement, and combination of his materials, and in his mode of illustrating his subject, if it be new and original; and it was also held, in Greene v. Bishop, 1 Cliff. 199, that there may be a valid copyright in the plan of a book, as connected with the arrangement and combination of the materials ; and no doubt is entertained that both those decisions were correct; but it is a mistake to suppose that a subsequent writer can be held to have infringed a book where he has not borrowed any of the materials of which the book is composed. New materials are certainly the proper objects of copyright; and old materials, when subsequently collected, arranged, and combined in a new and original form, are equally so; and in either case the plan, arrangement, and combination of the materials are as fully protected by the copyright as the materials embodied in the plan, arrangement, and combination. Damages may be recovered in either of the supposed cases for the infringement of the property protected by the copyright; but the property in the latter case consists chiefly, if not entirely, in the plan, arrangement, and combination of the materials collected and presented in the book, as any other person may collect from the original sources the same materials, and arrange and combine them in any other manner not substantially the same as that of the antecedent author. Barfield v. Nicholson, 2 Sim. & St. 6.

Detailed specification of the instances of infringement, as shown by a comparison of the two books, would be impracticable, and will not be attempted; as the settled practice in equity is, where the works are voluminous and of a complex character, containing, as in this case, much original matter mixed with common property, the cause will, at some stage of the case, be referred to a master to state the facts, together with his opinion, for the consideration of the court. Much the better course is to make the references before the final hearing ; but the parties in this case waived

(No. 9.

Vol. II.)

LAWRENCE v. Dana.

the respon ethich have Whateve

in this court than other parts such a case it evaded beyond theun. Halcombe,

any reference at that stage of the cause, and elected to proceed to final hearing without any such report. Cases arise where the court, under such circumstances, would not order a reference, but would proceed to compare the books and ascertain the details of the infringement; but the case before the court is far too complex to admit of that course of action. Curtis on C. 325; Mawman v. Tegg, supra; 2 Story Eq. Jurisp. $ 941. Details have been examined, as far as practicable, consistent with the claims of other official duties ; but the judges are of the opinion that they should be further examined, and the results classified, before the court proceeds to determine the extent of the infringement, as the danger of injustice cannot well be avoided in any other way. New matter of value has been collected and presented by the respondent, and he has added much that is valuable in his references to events which have occurred since the publication of the last preceding annotated edition. Whatever may have been the rule in the earlier history of equity jurisprudence, it is now settled law in this court that a book may in one part of it infringe the copyright of another, while in other parts it may be entirely original and the proper object of a copyright; and in such a case it was held, in Greene v. Bishop, 1 Cliff. 201, that the remedy will not be extended beyond the injury. Preceding that decision, the same rule had been adopted in Story v. Halcombe, 4 McLean, 315, in which the opinion was given by the late Mr. Justice McLean. Modern practice in the chancery courts of England is the same, as appears in the case of Jarrold v. Houlston, 3 Kay & Johns. 721, in which the opinion was given by Vice-chancellor Wood, since promoted to the office of chancellor. Kelly v. Morris, Law. Rep. 1 Eq. 701 ; Carnan v. Bowles, 2 Bro. Ch. R. 80 ; Curtis on C. 325. Suggestion is made that it will be impossible to separate that which is original from that which is borrowed, and to some extent the suggestion may be of weight; but the court is of the opinion that the difficulties in that behalf, when the matters pass under the searching examination of a master, will be much less than is apprehended by the parties. Should the difficulty in any instance or class prove to be insurmountable, then the rule in equity is, that if the parts which have been copied cannot be separated from those which are original without destroying the use of the original matter, he who made the improper use of that which did not belong to him must suffer the consequences of so doing. If a second writer mixes the literary matter of another, which is under the protection of a copyright, with his own, without the license or consent of the proprietor, he must nevertheless be restrained from publishing what does not belong to him; and if the parts of the work cannot be separated, so that the injunction prevents also the publication of his own literary production so mixed with that of another, he has only himself to blame. Mawman v. Tegg, supra ; Lewis v. Fullarton, 2 Beav. 11. Extended application of that rule, it is believed, will not be required, in view of the proofs exhibited in the record, and of the facilities afforded by the comparison of the notes in the respective editions to separate what is original from that which has been copied.

Attention is called by the respondent to the fact that some of the notes in the edition edited by him are entirely original; that in others the material copied is much condensed, or the notes reduced to a mere reproduc

Vol. II.]

LAWRENCE v. DANA.

(No. 9.

tion of the authorities cited in the prior edition, and that other notes have been enlarged and improved by the addition of new matter, and, in view of those circumstances, he contends that the edition edited by him should be regarded as a new and original work; but the decisive answer to the first and last suggestion is, that no man is entitled to avail himself of the previous labors of another for the purpose of conveying to the public the same information, even though he may append additional information to that already published. Scott v. Stanford, supra; 2 Story Eq. Jurisp. $ 940; 2 Kent Com. 382 and 383; Cary v. Faden, 5 Ves. 25, and note; Wheaton v. Peters, 8 Pet. 591 ; Bramwell v. Halcomb, supra.

Additional remarks in respect to the alleged fact that the contents of the notes copied were condensed is unnecessary, as it is quite clear, as before explained, that the change made in that behalf is not of a character to afford the respondent any defence.

Supported by these reasons, the conclusions of the court are as follows:

1. That the complainant in a court of equity is the equitable owner of the notes in the two annotated editions described in the pleadings as arranged; and the mode in which they are combined and connected with the text.

2. That the title to the entire text, together with the title to the memoir and indices, is in the proprietor of the book, and not in the complainant, as alleged in the bill of complaint.

3. That there are notes in the edition edited by the respondent of substantial importance in point of number and the value of the materials which do infringe the equitable rights of the complainant, as explained and defined by the court

4. That all the respondents had notice of the claim of the complainant, as explained and defined by the court.

5. That there are notes in that edition of substantial importance in point of number and the value of the materials which do not infringe any rights of the complainant.

6. That the notes in that edition consisting wholly of citations found in the corresponding notes of the complainant do infringe his rights, as explained and defined by the court, though many of them are unaccompanied by the extracts collected and presented in the next preceding edition.

7. That notes consisting of authorities or collections of authorities, copied in like manner as described in the preceding proposition, and without remarks or comments, do also infringe the complainant's rights, though they are found inserted in, or prefixed or appended to, notes otherwise not objectionable.

8. That notes of which the whole or some substantial and material part is condensed from the corresponding notes in the preceding edition, or from the extracts therein printed and published, without any marks of original labor, or of any such labor except the study of the notes copied and adopted, do also infringe the complainant's rights, as explained and defined.

9. That notes wholly original do not infringe. 10. That notes partly original and partly copied from the preceding

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Vol. II.)

LAWRENCE v. Dana.

(No. 9.

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edition do not infringe, except for the matter copied, if it be practicable to ascertain and define the separate proportions and make the separation of the same; but if not, still the respondent, at the proper stage of the case, must be restrained from using the part copied.

11. That the cause must be referred to a master to examine the pleadings and proofs, and report the extent of the infringement as adjudged by the court in this investigation, and also to examine and ascertain what, if any, other instances of the alleged infringements within the principles here explained and proved; and if any, to classify the same, and report the details, together with the reasons for his conclusions, for the consideration of the court.

12. That all other matters in the cause will be reserved until the coming in of the master's report.

13. That the cause is referred to Henry W. Paine, as master, for his examination and report in the premises, in conformity to the opinion and directions of the court.

Equity suits for the infringement of a copyright are usually referred to a master before the final hearing, to ascertain whether the charge is proved, and, if so, for a final report as to the nature and extent of the infringement; and in such cases the general rule is, that the complainant, if he prevails in the suit, is entitled, if at all, to an injunction at the time the decretal order is entered, to restrain the respondent from any further violation of his rights, as the whole case is then before the court. Even when the case is heard before any such reference and report, if the charges of infringement are few and of a character that the extent of the infringement can be conveniently determined by the court, without sending the case to a master, the court, if the case be one where an injunction is the proper remedy, will order it at the same time that the decision is announced upon the merits. But where the cause comes to a final hearing without any such report, the court, if the charges of infringement are numerous and of a character to require extended examination before the the extent of the infringement can be ascertained, will ordinarily send the case to a master for further examination and report, in respect to all matters not previously adjudged by the court; and the general rule in such cases is, that the injunction will not be granted until the nature and extent of the infringement are fully ascertained and determined, as its effects and operation might work great injustice. Obviously the present case falls within the latter rule, and, therefore, an injunction will not be ordered until the court shall have acted finally upon the report of the master.

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