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Vol. II.]

LAWRENCE v. Dana.

[No. 9.

or digest of a published literary copyright, in a certain class of cases at least, is no infringement on the original. Phillips on C. 171; Newbery's case, Lofft, 775; Dodsley v. Kinnersley, Ambler, 403; Whittingham v. Wooler, 2 Swanst. 428; Giles v. Wilcox, 2 Atk. 141.

Strong doubts are expressed by Mr. Curtis, whether the definition of an allowable abridgment, as given in the earlier classes, can be sustained, except as applied to such works as histories, or works composed of translations, and others of like kind; but it was decided in this court, in the case of Folsom v. Marsh, 2 Story, 105, that an abridgment in which there is a substantial condensation of the materials of the original work, and which required intellectual labor and judgment to make the same, does not constitute an infringement of the copyright of the original author; and the court, as now constituted, is inclined to adopt that rule in cases where it also appears that the abridgment was made bona fide as such, and that it is not of a character to supersede the copyrighted publication. Unless it be denied that a legal copyright secures to the author "the sole right and liberty of printing, reprinting, publishing, and vending the book" copyrighted, it cannot be held that an abridgment, or digest of any kind, of the contents of the copyrighted publication, which is of a character to supersede the original work, is not an infringement of the franchise secured by the copyright. What constitutes a fair and bona fide abridgment in the sense of the law is, or may be under particular circumstances, one of the most difficult questions which can well arise for judicial consideration; but it is well settled that a mere selection or different arrangement of parts of the original work into a smaller compass will not be held to be such an abridgment. Campbell v. Scott, 11 Sim. 38, and note; Gyles v. Wilcox, 2 Atk. 141; Folsom v. Marsh, 2 Story, 107. Substantially the same views are expressed in the case of Tinsley v. Lacy, 1 Hem. & M. 753; and the vice-chancellor in that case, in speaking of the authorities by which fair abridgments have been sustained, goes on to say that the courts have gone far enough in that direction, and adds that it is difficult to acquiesce in the reason sometimes given, that the compiler of an abridgment is a benefactor to mankind, by assisting in the diffusion of knowledge. Viewed in the light of these principles, it is quite clear that the book of the respondent, even if it could be regarded as an abridgment of the prior editions, must still be held to be an infringement of the same; but the court is of the opinion that it is not an abridgment of those editions, in any sense known to the law of copyright. Instead of being an abridgment of the prior editions, it is precisely what it purports to be, a reprint of the text of the author, with notes by a new editor; and the proofs are full to the point that he was employed to edit a new edition of the work, to supersede the antecedent editions annotated by the complainant. Instructed as he was to make no use of the complainant's notes, his principal defence still is that he complied with those instructions, and that he did not make any use of the notes in his edition beyond what is allowable as fair quotations from the published work of a prior author treating upon the same subject. Copying is not confined to literal repetition, but includes also the various modes in which the matter of any publication may be adopted, imitated, or transferred, with more or less colorable alterations to disguise

Vol. II.]

LAWRENCE v. Dana.

[No. 9.

the source from which the material was derived; nor is it necessary that the whole or even the larger portion of a work should be taken, in order to constitute an invasion of a copyright. Some use may be made by a subsequent writer of the contents of a book or treatise antecedently made, composed, and copyrighted by another person, in making and composing a new book upon the same subject, whether the contents of the antecedent book or treatise were wholly original, or were partly original, and partly made up of selections from other authors. Copyright differs in this respect from patent right, which admits of no use of the patented thing without the consent or license of the patentee. Persons making, using, or vending to others to be used, the patented article, are guilty of infringing the letters patent even though they may have subsequently invented the same thing without any knowledge of the existence of the letters patent; but the recomposition of the same book without copying, though not likely to occur, would not be an infringement. Coincidence, if perfect, is sufficient to prove the infringement of a patent, as the charge is that the defendant, if it be a machine, has made machines in the similitude of the patented machine, and with the same mode of operation. Copying is essential to constitute an infringement of copyright, but identity of contents, arrangement, and combination is strong evidence that the second book was borrowed from the first, as it is highly improbable that two authors would express their thoughts and sentiments in the same language throughout a book or treatise of any considerable size, or adopt the same arrangement or combination in their publication. Reade v. Lacy, 1 Johns. & Hem. 526. Great difficulty attends every attempt to define in definite terms the privilege allowed by law to a subsequent writer to use without consent or license the contents of a book or treatise antecedently made, composed, and copyrighted by another author; or to mark the boundaries of the privilege of such subsequent writer to borrow the materials in a book like the annotated editions of the complainant, where the materials have been selected from such a variety of sources, and where the materials so selected are arranged and combined with certain chosen passages of the text of the original work, and in a manner showing the exercise of discretion, skill, learning, experience, and judgment. Decided cases are referred to where the principal criterion of determination is held to be the intent with which the person acted who is charged with infringement. Remarks to that effect are to be found in the opinion of the court in the case of Carey v. Kearsley, 4 Esp. R. 170, and the decision in the case of Spiers v. Brown, 6 W. R. 353, refusing the application for an injunction, turned to some extent upon the same consideration; but the vice-chancellor (now chancellor) refused to apply that doctrine in the subsequent case of Scott v. Stanford, Law Rep. 3 Eq. 722, and explained the grounds of his ruling in the former case, which show that he would not sanction that rule in any case unless it appeared that the defendant had bestowed such mental labor upon what he had taken as to produce an original result. Evidence of innocent intention may have a bearing upon the question of "fair use;" and where it appeared that the amount taken was small, it would doubtless have some probative force in a court of equity in determining whether an application for an injunction should be granted or refused; but it cannot be admitted

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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

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 v. 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 Šim. & 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

Vol. II.]

LAWRENCE v. DANA.

[No. 9.

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

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