Copyright: Its History and Its Law Part 23

XIV

INFRINGEMENT OF COPYRIGHT: PIRACY, "FAIR USE" AND "UNFAIR COMPEt.i.tION"

{Sidenote: Piracy}

The word "piracy," since that gentle craft has disappeared from the high seas, has come commonly into use to mean free-booting with reference to literary property. In this sense it is used as early as 1771 by Luckombe in his history of printing, in which he says: "They ... would suffer by this act of piracy, since it was likely to prove a very bad edition." It was especially applied in America more or less jocularly in the days when there was no legal protection for works by English authors, to the reprinting chiefly of English novels without authority from or payment to their authors, when publishers whose imprints were chiefly on such reprints were commonly known as pirates. This secondary meaning has been accepted by the dictionary makers, and the use by English law authorities, and now in the new American code, of the phrases "pirated works" and "piratical copies," gives the word specific legal _status_.

It is the comprehensive term now in common and legal use to mean the stealing of an author's work by reprinting it in full or in substantial part without the authority of the copyright proprietor, and is in fact an infringement at wholesale or otherwise of the author's exclusive right. This is of course prohibited by the law to the full extent of its jurisdiction and is punishable as prescribed in the law.

{Sidenote: Test of piracy}

"The true test of piracy," said Judge Shipman in the U. S. Circuit Court in 1875, in Banks _v._ McDivitt, is "whether the defendant has in fact used the plan, arrangements and ill.u.s.trations as the model of his own book, with colorable alterations and variations, or whether his work is the result of his own labor, skill and use of common materials and common sources." Judge Story said in 1841, in Folsom _v._ Marsh: "If so much is taken that the value of the original is sensibly diminished, or the labours of the original author are substantially, to an injurious extent, appropriated by another, that is sufficient in point of law to const.i.tute a piracy _pro tanto_. The entirety of the copyright is the property of the author and it is no defence that another person has appropriated a part and not the whole of any property."

{Sidenote: Infringement in specific meaning}

Infringement is commonly taken to mean specific invasion of the author's rights rather than wholesale piracy; and the question of what is infringement or "literary larceny" is more often a question of the interpretation of the facts than the construction of the statute. The legal cases arising under infringement const.i.tute a very large proportion of copyright litigation, demanding as they do judicial determination as to the acts complained of in each particular case. It is therefore impossible in this volume to give citations or references for the hundreds of cases recorded in the law reports or in the various works on copyright, but it may be noted that the foot-note citations in MacGillivray's "Law of copyright" cover a very large number of American as well as English cases. No treatise on copyright can apply, however, in advance, the general principles of copyright to the infinite variety of possible cases; and only generalizations and a few ill.u.s.trative cases can here be given.

{Sidenote: Questions of fact and intent}

Infringement is a question of fact rather than of intent. It is not a valid defense that the infringer is ignorant; nor, on the other hand, can any one be held for intention to infringe, where the act of infringement has not been accomplished. The new American code, nevertheless, recognizes knowledge and intent in certain cases of punishment or damages by the use of the words "willfully" and "knowingly." The letter of the law is in general that the infringer must be held responsible and must make good any damages suffered by the copyright proprietor, but proof that he had no guilty knowledge or intent may effect mitigation of punitive damages. The trend of court decisions and of judicial opinion does not seem to be evident and consistent in this development; but it may perhaps be said that while copyright law is more closely applied from the letter of the statutes, in the legal aspect, the principles of equity have been given freer play where the statute is not specific and definite. In 1899, in Green _v.

Irish Independent_, the English Court of Appeal held that the proprietors of a newspaper who had printed an advertis.e.m.e.nt containing an ill.u.s.tration which the advertiser had license to use only for specified purposes, were liable for penalties, though they did not know that the ill.u.s.tration was copyrighted; and in 1902, in American Press a.s.soc. _v._ Daily Story Pub. Co., the U. S. Circuit Court of Appeals held the defendants liable, though they had innocently copied from a newspaper reprint which had inadvertently omitted the copyright notice.

But in 1898 Justice Mathew, in Bolton _v_. London Exhibitions, declined to hold the defendants punishable, because they did not know that the lithographer from whom they had ordered a poster had infringed the copyright of a photograph.

{Sidenote: "Fair use"}

"Fair use" means quotation from or other use of an author's work within the evident meaning or judicial construction of the copyright statute, and is the usual answer of the defendant to a complaint that he has taken without authority some portion of the author's work or utilized in some way the result of the author's labors. The borderland between infringement and "fair use" is peculiarly and necessarily one of uncertainty, not so much because of ambiguity in the statute as of difficulty in determining the extent of use within which it is said _non curat lex_. No statute can be so clear or so complete as to obviate questions of this kind. In general there must be copying of a material or substantial part. What is a material or substantial part, const.i.tuting infringement, is a difficult question of fact.

{Sidenote: Principle of infringement}

"Copying is not confined to literal repet.i.tion," said Judge Clifford, in Lawrence _v._ Dana, in the U. S. Circuit Court in 1869, "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 the source from which the material was derived; nor is it necessary that the whole, or even the larger portion of the work, should be taken in order to const.i.tute an invasion of copyright."

The Chancery Division, through Lord Chief Justice Alverstone, took the extreme course in Trengrouse _v._ "Sol" Syndicate, in 1901, of holding a work an infringement, though less than a page was taken from the plaintiff's football guide.

{Sidenote: Infringement by indirect copying}

Infringement may be by indirect as well as by direct copying. In the case of Cate _v._ Devon in 1889, in the Chancery Court, the defense that the copying was not from the original copyright work but from a newspaper reprint, was rejected. Infringement may be through quite a different medium from the original; thus a shorthand reproduction of a lecture on "The dog as the friend of man," published in a text-book of shorthand, was held in the Chancery case of Nichols _v._ Pitman, in 1884, to be an infringement of the lecture as much as if in ordinary type.

{Sidenote: Exceptions from infringement}

The doctrine of infringement cannot be invoked to obtain monopoly of any particular subject, and the authorized biographer of President Garfield was denied relief in 1889, in Gilmore _v._ Anderson, when he sought to prevent the publication of a life of Garfield by another writer. Nor will mere similarity of treatment of the same subject const.i.tute infringement. A copyright owner cannot prevent another person from publishing the matter contained in his book, if invented or collected independently, or from making "fair use" of its contents. Two map-makers, collecting at first hand the same _data_, would naturally make the same map, and each would equally be ent.i.tled to copyright. In this respect, copyright law differs from patent law, where a first use bars others from the same field. It has even been held that the collected material might be used by a second compiler as a guide in a second compilation, if subjected to original verification, as in the case of a street directory. But in the case of rival Boston directories in 1905, the U. S. Circuit Court of Appeals held, in Sampson & Murdock Co. _v._ Seaver Radford Co., that a verification by actual canva.s.s from a list of discrepancies made up from the earlier work was beyond fair use.

{Sidenote: Infringement by abridgment and compilation}

Abridgments were construed by early English decisions not to be infringements, and this precedent was followed, reluctantly and often with protest, in later cases by English and American judges, as set forth in the chapter on subject-matter. Later copyright provisions,--as by use of the word "_retranchements_" in the Berne-Berlin conventions, and the specific authorization in the American code "to make any other version thereof," and for copyright of an abridgment of a work in the public domain,--directly or by implication, make abridgment an infringement and free the courts to take this view. Compilations also const.i.tute infringement if they extract substantial parts of a copyright work, beyond the limits of "fair use," or even if they adopt the plan or arrangement or bodily transfer the material of a copyright compilation of non-copyright matter.

{Sidenote: Abridged compilations}

A curious complaint of infringement by abridgment was made in Gabriel _v._ McCabe, in 1896, before Judge Grosscup in the U. S. Circuit Court in Illinois, where the plaintiff had licensed the use of a copyright song, "When the roll is called up yonder," in a collection of religious poetry, "The finest of the wheat, no. 2," published by the defendant, who included the song also in an abridged edition of this collection and in a combined edition of this and another collection. Judge Grosscup held that: "Future editions of a book may contain a composition published in an earlier edition by license, even though parts of the earlier edition are omitted.... To hold otherwise would practically forbid any new editions of books of compilations, for the consent of all the authors contributing could not, in many instances, be obtained." But if the collection had been so abridged as to result in the publication of the song alone as sheet music, it would have been an unfair use under the license.

{Sidenote: Separation of infringing parts}

The general principles as to quotation beyond "fair use" were well laid down by Lord Chancellor Eldon, in the early English case of Mawman _v._ Tegg, in 1826: "If the parts which have been copied cannot be separated from those which are original, without destroying the use and value of the original matter, he who has made an improper use of that which did not belong to him must suffer the consequences of so doing. If a man mixes what belongs to him with what belongs to me, and the mixture be forbidden by law, he must again separate them, and he must bear all the mischief and loss which the separation may occasion. If an individual chooses in any work to mix my literary matter with his own, he must be restrained from publishing the literary matter which belongs to me; and if the parts of the work cannot be separated, and if by that means the injunction, which restrained the publication of my literary matter, prevents also the publication of his own literary matter, he has only himself to blame."

{Sidenote: Law digests}

The difficult question of the extent to which a compiler may utilize the materials of another has come especially to the front in the American courts with reference to law digests and reports, within recent years.

In 1896, in Mead _v._ West Pub. Co., concerning rival annotated editions of "Stephen on pleading," then out of copyright, where the defendant's editor admitted having clipped the text from the complainant's edition and having obtained some ideas or suggestions from it, Judge Lochren, in the U. S. Circuit Court in Minnesota, held that there was no infringement because non-copyright matter could not be protected in a copyright work from such clipping, because the defendant's notes were original even though suggested from the other, and because the few errors and citations in common were immaterial since there were many new citations and the work was on the whole the result of original research.

That bodily transfer of citations is beyond "fair use" was emphasized by Judge Ray in White _v._ Bender, in 1911.

{Sidenote: Proof from common errors}

As to proof from common errors, it had been held in 1895, in the case of Chicago Dollar Directory Co. _v._ Chicago Directory Co., that the later work, containing sixty-seven errors found in the other, was evidently an infringement of the earlier compilation. In Bisel _v._ Welsh, _Re_ Brightly Pennsylvania reports, in 1904, the U. S. Circuit Court held that repet.i.tions of errors in citations were evidence of infringement by the author of his own reports published under an earlier contract by the plaintiffs; and in 1911, in Shepard _v._ Taylor, Judge Hazel held that common errors were _prima facie_ proof of infringement.

{Sidenote: Infringement in part}

{Sidenote: No infringement of piracies or frauds}

In the important case of West Pub. Co. _v._ Lawyers' Pub. Co., where a collection of selected cases and a general digest were alleged to be infringements of the plaintiff's reports and monthly digests, Judge c.o.xe in the U. S. Circuit Court enjoined 303 proved "instances of piracy" but not the remaining portions of the digest, but in 1897 the U. S. Circuit Court of Appeals, through Judge Lacombe, held that under such circ.u.mstances the burden of proof must be on the unfair user and broadened the decision by issuing an injunction against the work as a whole, excepting those parts which were public property. In 1910, in Park & Pollard _v._ Kellerstra.s.s, Judge Philips enjoined the whole work because the infringing parts were not separable. In 1903, in Thompson Co. _v._ American Law Book Co., where the editor of the defendant's law encyclopaedia had made a list of cases cited in complainant's work, which included material "pirated" by the complainant from copyright works, the Circuit Court of Appeals, reversing the lower court, held through Judge c.o.xe that there was no infringement, because the only use made of the list was to guide the defendant to the reports and because the complainant had no standing in equity. "If the defendant was guilty of piracy, so was the complainant; and equity will not protect a pirate from infringements of his piratical work." To like effect in Slingsby _v._ Bradford Co., in 1905, Justice Warrington, in the Chancery Division, held that the plaintiff could not recover against an evident copying because his own catalogue was fraudulent in advertising as patented articles not so protected, and a fraud will not be protected.

In the later case of West Pub. Co. _v_. Thompson Co., where the publishers of the original reports and digests sought to restrain the Thompson encyclopaedias, the Circuit Court of Appeals held that while a compiler may use a copyright digest by making lists from which to run down cases, which is "fair use," extensive copying or paraphrasing of the language of the digest, whether to save literary work or mechanical labor, const.i.tutes an infringement. The case was sent back to the lower court for rehearing and a.s.sessment of damages and was settled in 1911 by an agreement involving transfer of the encyclopaedia to the plaintiff.

Reference to a copyright work giving pagination is not an infringement, as was decided in 1909, in Banks Law Pub. Co. _v._ Lawyers Co-operative Pub. Co., in the U. S. Circuit Court of Appeals.

{Sidenote: Quotation}

Whether simple quotation const.i.tutes an infringement or is "fair use,"

depends upon extent and in some respects upon purpose. In 1892 Justice North, in the English Court of Chancery, in Walter _v._ Steinkopff, held that the use by the _St. James Gazette_ of two fifths of an article by Kipling, copyrighted by the _Times_, was beyond "fair use" of quotations, notwithstanding the newspaper custom of copying from one another. On the other hand, quotations in a review of a book made to reasonable extent for the purposes of criticism, have usually been considered "fair use," provided they do not go to the extent of a description or abridgment which would be measurably a subst.i.tute for the book.

{Sidenote: Private use}

The multiplication of copies by handwriting or other process for private use, as among the members of an orchestra or in a business office, has been held an infringement in English decisions, though prohibition of the making of a single copy for personal use would be an extreme application of this doctrine, and such use is specifically permitted in the new English code.

{Sidenote: The doctrine of "unfair compet.i.tion"}

Beyond the purview of copyright law, there is a means of legal remedy for the copyright proprietor which can be enforced by state as well as by federal courts, resting either upon statutes outside the copyright law, or on the general principles of equity. This is the application of the doctrine of "unfair compet.i.tion" especially in cases involving "fraud" or fraudulent representation, direct or implied, leading the purchaser to buy something other than what he supposes he is buying.

Thus if a publisher prints and binds a book with a t.i.tle and in a style that leads a purchaser to suppose that it is another book which he is buying, the publisher of the other book has the right to obtain equitable relief by an injunction from the transgressor on the ground of unfair compet.i.tion without any reference to copyright law, although this doctrine is more applied in the case of patents, trade-marks and copyrights than perhaps any other field.

{Sidenote: The doctrine of deceptive intent}

There is also evident a growing tendency on the part of the courts to protect the public from possible deception especially if done with fraudulent intent, where some distinctive name or symbol or form a.s.sociated with some line of product is used for another line of product of different origin and character, though there may be here no direct compet.i.tion; but this comparatively new doctrine is more likely to be used in regard to trade-mark articles than in respect to literary and like property. It might, however, apply in a case where a well-known publishing house had published, for instance, a popular series of school books as Smith's Arithmetical Readers and another firm containing the same name had started to publish a Smith's Algebraic Readers--but the application would be extremely doubtful.

{Sidenote: The "Chatterbox" cases}

In the Chatterbox cases, 1884-1887, previously referred to, the final decision of Judge Shipman emphasized the view that the use of the t.i.tle "Chatterbox" on a similar publication was misleading to the public, thus bringing both trade-mark law and common law protection to the rescue against unfair compet.i.tion.

{Sidenote: Encyclopaedia Britannica cases}

In the series of Encyclopaedia Britannica cases, 1890-1904, the English publishers Black or their American representatives Scribner sought to protect in this country the English edition, or an American authorized edition, under the copyright law previous to 1891, copyrighted articles by Americans being included, and under common law because of the alleged fraudulent misuse of the name to mislead the public. In 1893, in Black _v._ Allen, Judge Townsend held that the use of copyrighted material in a non-copyright work did not vitiate the copyright, that the American author was ent.i.tled to secure and protect copyright even though the right to use was a.s.signed to an English house which could not directly secure copyright, and that the fact of discrepancy in the t.i.tle of the copyrighted articles as registered for copyright on separate publication and deposit and in the cyclopaedia, did not endanger the copyright. In 1904, in Encyclopaedia Britannica Co. _v._ Tribune a.s.sociation, Judge Lacombe in the U. S. Circuit Court enjoined condensations of the copyrighted American articles. But in Black _v._ Ehrich and other cases, the complainants were not successful in obtaining an injunction against the use of the t.i.tle Encyclopaedia Britannica on reprints of non-copyright material which did not mislead the public.