Circuit Court, District of Massachusetts
Folsom v. Marsh
9 F. Cas. 342
1841
STORY, Circuit Justice.
This is one of those intricate and
embarrassing questions, arising in the administration of civil justice, in
which it is not, from the peculiar nature and character of the controversy,
easy to arrive at any satisfactory conclusion, or to lay down any general
principles applicable to all cases. Patents and copyrights approach, nearer
than any other class of cases belonging to forensic discussions, to what may be
called the metaphysics of the law, where the distinctions are, or at least may
be, very subtile and refined, and, sometimes, almost evanescent. In many cases,
indeed, what constitutes an infringement of a patented invention, is
sufficiently clear and obvious, and stands upon broad and general agreements
and differences; but, in other cases, the lines approach very near to each
other, and, sometimes, become almost evanescent, or melt into each other. So,
in cases of copyright, it is often exceedingly obvious, that the whole
substance of one work has been copied from another, with slight omissions and
formal differences only, which can be treated in no other way than as studied
evasions; whereas, in other cases, the identity of the two works in substance,
and the question of piracy, often depend upon a nice balance of the comparative
use made in one of the materials of the other; the nature, extent, and value of
the materials thus used; the objects of each work; and the degree to which each
writer may be fairly presumed to have resorted to the same common sources of information,
or to have exercised the same common diligence in the selection and arrangement
of the materials. Thus, for example, no one can doubt that a reviewer may
fairly cite largely from the original work, if his design be really and truly
to use the passages for the purposes of fair and reasonable criticism. On the
other hand, it is as clear, that if he thus cites the [345] most important
parts of the work, with a view, not to criticise, but to supersede the use of
the original work, and substitute the review for it, such a use will be deemed
in law a piracy. A wide interval might, of course, exist between these two
extremes, calling for great caution and involving great difficulty, where the
court is approaching the dividing middle line which separates the one from the
other. So, it has been decided that a fair and bonb̂ona fide abridgment of
an original work, is not a piracy of the copyright of the author. See Dodsley
v. Kinnersley, 1 Amb. 403; Whittingham v. Wooler, 2 Swanst. 428, 430, 431, note;
Tonson v. Walker, 3 Swanst. 672-679, 681. But, then, what constitutes a fair
and bonb̂ona fide abridgment, in the sense of the law, is one of the most
difficult points, under particular circumstances, which can well arise for
judicial discussion. It is clear, that a mere selection, or different
arrangement of parts of the original work, so as to bring the work into a
smaller compass, will not be held to be such an abridgment. There must be real,
substantial condensation of the materials, and intellectual labor and judgment
bestowed thereon; and not merely the facile use of the scissors; or extracts of
the essential parts, constituting the chief value of the original work. See
Gyles v. Wilcox, 2 Atk. 141.
In the present case, the work alleged to
be pirated, is the Writings of President Washington, in twelve volumes, royal
octavo, containing nearly seven thousand pages, of which the first volume
contains a life of Washington, by the learned editor, Mr. Sparks, in respect to
which no piracy is asserted or proved. The other eleven volumes consist of the
letters of Washington, private and official, and his messages and other public
acts, with explanatory notes and occasional illustrations by the editor. That
the original work is of very great, and, I may almost say, of inestimable
value, as the repository of the thoughts and opinions of that great man, no one
pretends to doubt. The work of the defendants is in two volumes, duodecimo,
containing eight hundred and sixty-six pages. It consists of a Life of
Washington, written by the learned defendant, (the Rev. Charles W. Upham),
which is formed upon a plan different from that of Mr. Sparks, and in which
Washington is made mainly to tell the story of his own life, by inserting
therein his letters and his messages, and other written documents, with such
connecting lines in the narrative, as may illustrate and explain the times and
circumstances, and occasions of writing them. Now, as I have already said,
there is no complaint, that Mr. Upham has taken his narrative part, substantially,
from the Life by Mr. Sparks. The gravamen is, that he has used the letters of
Washington, and inserted, verbatim, copies thereof from the collection of Mr.
Sparks. The master finds, by his report, that the whole number of pages in Mr.
Upham's work, corresponding and identical with the passages in Mr. Sparks's
work, are three hundred and fifty-three pages out of eight hundred and
sixty-six, a fraction more than one third of the two volumes of the defendants.
Of these three hundred and fifty-three pages, the report finds that three
hundred and nineteen pages consist of letters of Washington, which have been
taken from Mr. Sparks's work, and have never been published before; namely,
sixty-four pages are official letters and documents, and two hundred and
fifty-five pages are private letters of Washington. The question, therefore,
upon this admitted state of the facts, resolves itself into the point, whether
such a use, in the defendants' work, of the letters of Washington, constitutes
a piracy of the work of Mr. Sparks.
It is objected, in the first place, on
behalf of the defendants, that the letters of Washington are not, in the sense
of the law, proper subjects of copyright, for several reasons: (1) Because they
are the manuscripts of a deceased person, not injured by the publication
thereof; (2) because they are not literary compositions, and, therefore, not
susceptible of being literary property, nor esteemed of value by the author;
(3) because they are, in their nature and character, either public or official
letters, or private letters of business; and (4) because they were designed by
the author for public use, and not for copyright, or private property. Now, in
relation to the last objection, it is most manifest, that President Washington
deemed them his own private property, and bequeathed them to his nephew, the
late Mr. Justice Washington, through whom the late Mr. Chief Justice Marshall
and Mr. Sparks acquired an interest therein; and, as appears from the contract
between these gentlemen, annexed to the report, the publication of these
writings was undertaken by Mr. Sparks, as editor, for their joint benefit; and
the work itself has been accomplished at great expense and labor, and after
great intellectual efforts, and very patient and comprehensive researches, both
at home and abroad. The publication of the defendants, therefore, to some
extent, must be injurious to the rights of property of the representatives and
assignees of President Washington. Indeed, as we shall presently see, congress
have actually purchased these very letters and manuscripts, at a great price,
for the benefit of the nation, from their owner and possessor under the will of
Mr. Justice Washington, as private and most valuable property. That President
Washington, therefore, intended them exclusively for public use, as a donation
to the public, or did not esteem them of value as his own private property,
appears to me to be a proposition, completely disproved by the evidence.
Unless, indeed, there be a most unequivocal dedication of private letters and
papers by the [346] author, either to the public, or to some private person, I
hold, that the author has a property therein, and that the copyright thereof
exclusively belongs to him. Then as to the supposed distinction between letters
of business, or of a mere private or domestic character, and letters, which,
from their character and contents, are to be treated as literary compositions,
I am not prepared to admit its soundness or propriety. It is extremely
difficult to say, what letters are or are not literary compositions. In one
sense, all letters are literary, for they consist of the thoughts and language
of the writer reduced to written characters, and show his style and his mode of
constructing sentences, and his habits of composition. Many letters of business
also embrace critical remarks and expressions of opinion on various subjects,
moral, religious, political and literary. What is to be done in such cases?
Even in compositions confessedly literary, the author may not intend, nay,
often does not intend them for publication; and yet, no one on that account
doubts his right of property therein, as a subject of value to himself and to
his posterity. If subsequently published by his representatives, would they not
have a copyright therein? It is highly probable, that neither Lord
Chesterfield, nor Lord Orford, nor the poet Gray, nor Cowper, nor Lady Russell,
nor Lady Montague, ever intended their letters for publication as literary
compositions, although they abound with striking remarks, and elegant sketches,
and sometimes with the most profound, as well as affecting, exhibitions of
close reflection, and various knowledge and experience, mixed up with matters
of business, personal anecdote, and family gossip.
There is no small confusion in the
books, in reference to the question of copyright in letters. Some of the dicta
seem to suppose that no copyright can exist, except in letters which are
professedly literary; while others again recognize a much more enlarged and liberal
doctrine. See Gods. Pat. (Ed. 1840, London) pp. 327–"332; Gee v.
Pritchard, 2 Swanst. 403, 405, 426, 427; Perceval v. Phipps, 2 Ves. & B.
19, 24, 25, 28. Without attempting to reconcile, or even to comment upon the
language of the authorities on this head, I wish to state what I conceive to be
the true doctrine upon the whole subject. In the first place, I hold, that the
author of any letter or letters, (and his representatives,) whether they are
literary compositions, or familiar letters, or letters of business, possess the
sole and exclusive copyright therein; and that no persons, neither those to
whom they are addressed, nor other persons, have any right or authority to
publish the same upon their own account, or for their own benefit. But,
consistently with this right, the persons to whom they are addressed, may have,
nay, must, by implication, possess, the right to publish any letter or letters
addressed to them, upon such occasions, as require, or justify, the publication
or public use of them; but this right is strictly limited to such occasions.
Gee v. Pritchard, 2 Swanst. 415, 419. Thus, a person may justifiably use and
publish, in a suit at law or in equity, such letter or letters as are necessary
and proper, to establish his right to maintain the suit, or defend the same.
So, if he be aspersed or misrepresented by the writer, or accused of improper
conduct, in a public manner, he may publish such parts of such letter or
letters, but no more, as may be necessary to vindicate his character and reputation,
or free him from unjust obloquy and reproach. If he attempt to publish such
letter or letters on other occasions, not justifiable, a court of equity will
prevent the publication by an injunction, as a breach of private confidence or
contract, or of the rights of the author; and a fortiori, if he attempt to
publish them for profit; for then it is not a mere breach of confidence or
contract, but it is a violation of the exclusive copyright of the writer. In
short, the person, to whom letters are addressed, has but a limited right, or
special property, (if I may so call it), in such letters, as a trustee, or
bailee, for particular purposes, either of information or of protection, or of
support of his own rights and character. The general property, and the general
rights incident to property, belong to the writer, whether the letters are
literary compositions, or familiar letters, or details of facts, or letters of
business. The general property in the manuscripts remains in the writer and his
representatives, as well as the general copyright. A fortiori, third persons,
standing in no privity with either party, are not entitled to publish them, to
subserve their own private purposes of interest, or curiosity, or passion. If
the case of Perceval v. Phipps, 2 Ves. & B. 21, 28, before the then vice
chancellor (Sir Thomas Plumer), contains a different doctrine, all I can say
is, that I do not accede to its authority; and I fall back upon the more
intelligible and reasonable doctrine of Lord Hardwicke, in Pope v. Curl, 2 Atk.
342, and Lord Apsley, in the case of Thompson v. Stanhope, Amb. 737, and of
Lord Keeper Henley, in the case of Duke of Queensberry v. Sheffeare, 2 Eden,
329 (cited 4 Burrows, 2329), which Lord Eldon has not scrupled to hold to be
binding authorities upon the point in Gee v. Pritchard, 2 Swanst. 403, 414,
415, 419, 426, 427. But I do not understand that Sir Thomas Plumer did, in
Perceval v. Phipps, deny the right of property of the writer in his own
letters; and so he was understood by Lord Eldon in Gee v. Pritchard; who,
however, said, that that case admitted of much remark. Indeed, if the doctrine
were otherwise, that no person, or his representatives, could have a copyright
in his own private or familiar letters, written to friends, upon interesting
political and other occasions, [347] or containing details of facts and
occurrences, passing before the writer, it would operate as a great
discouragement upon the collection and preservation thereof; and the materials
of history would become far more scanty, than they otherwise would be. What
descendant, or representative of the deceased author, would undertake to
publish, at his own risk and expense, any such papers; and what editor would be
willing to employ his own learning, and judgment, and researches, in
illustrating such works, if, the moment they were successful, and possessed the
substantial patronage of the public, a rival bookseller might republish them,
either in the same, or in a cheaper form, and thus either share with him, or
take from him the whole profits? It is the supposed exclusive copyright in such
writings, which now encourages their publication thereof, from time to time,
after the author has passed to the grave. To this we owe, not merely, the
publication of the writings of Washington, but of Franklin, and Jay, and
Jefferson and Madison, and other distinguished statesmen of our own country. It
appears to me, that the copyright act of 1831, c. 16, § 9, [4 Stat. 436], fully
recognizes the doctrine for which I contend. It gives by implication to the
author, or legal proprietor of any manuscript whatever, the sole right to print
and publish the same, and expressly authorizes the courts of equity of the
United States to grant injunctions to restrain the publication thereof, by any person
or persons, without his consent.
In respect to official letters,
addressed to the government, or any of its departments, by public officers, so
far as the right of the government extends, from principles of public policy,
to withhold them from publication, or to give them publicity, there may be a
just ground of distinction. It may be doubtful, whether any public officer is
at liberty to publish them, at least, in the same age, when secrecy may be
required by the public exigencies, without the sanction of the government. On
the other hand, from the nature of the public service, or the character of the
documents, embracing historical, military, or diplomatic information, it may be
the right, and even the duty, of the government, to give them publicity, even
against the will of the writers. But this is an exception in favor of the
government, and stands upon principles allied to, or nearly similar to, the
rights of private individuals, to whom letters are addressed by their agents,
to use them, and publish them, upon fit and justifiable occasions. But assuming
the right of the government to publish such official letters and papers, under
its own sanction, and for public purposes, I am not prepared to admit, that any
private persons have a right to publish the same letters and papers, without
the sanction of the government, for their own private profit and advantage.
Recently the Duke of Wellington's despatches have (I believe) been published,
by an able editor, with the consent of the noble duke, and under the sanction
of the government. It would be a strange thing to say, that a compilation
involving so much expense, and so much labor to the editor, in collecting and
arranging the materials, might be pirated and republished by another
bookseller, perhaps to the ruin of the original publisher and editor. Before my
mind arrives at such a conclusion, I must have clear and positive lights to
guide my judgment, or to bind me in point of authority. However, it is not
necessary, in this case, to dispose of this point, because, of the letters and
documents published by the defendants, not more than one fifth part are of an
official character.
Another and distinct objection urged on
behalf of the defendants, is, that congress have purchased the manuscripts of
these letters and documents, and they have become public property, and may be
published by any one. An answer, in part, has been already given to this
objection. Congress have, indeed, authorized the purchase of these manuscripts
from the owner and possessor thereof, and paid the liberal price of 25,000
dollars therefor; and they have thus become national property. But it is an
entirely inadmissible conclusion that, therefore, every private person has a
right to use them, and publish them. It might be contended, with as much force
and correctness, that every private person had an equal right to use any other
national property at his pleasure, such as the arms, the ammunition, the ships,
or the custom houses, belonging to the government. But a reason, which is entirely
conclusive upon this point, is, that the government purchased the manuscripts,
subject to the copyright already acquired by the plaintiffs in the publication
thereof. The vendor took them subject to that copyright, and could convey no
title which he did not himself possess, or beyond what he possessed. Nor is
there any pretence to say that he either did convey, or intended to convey, to
the government, the property in these manuscripts, except subject to the
copyright already acquired.
The next and leading objection is, that
the defendants had a right to abridge and select, and use the materials which
they have taken for their work, which, though it embraces the number of letters
above stated, is an original and new work, and that it constitutes, in no just
sense, a piracy of the work of the plaintiffs. This, in truth, is the real
hinge of the whole controversy, and involves the entire merits of the suit. It
is certainly true, that the defendants' work cannot properly be treated as an
abridgment of that of the plaintiffs; neither is it strictly and wholly a mere
compilation from the latter. So far as the narrative goes, it is either
original, or derived (at least as far as the matter has been brought before the
court) from common sources of information, open to all authors. [348] It is not
even of the nature of a collection of beauties of an author; for it does not
profess to give fugitive extracts, or brilliant passages from particular
letters. It is a selection of the entire contents of particular letters, from
the whole collection or mass of letters of the work of the plaintiffs. From the
known taste and ability of Mr. Upham, it cannot be doubted, that these letters
are the most instructive, useful and interesting to be found in that large
collection.
The question, then, is, whether this is
a justifiable use of the original materials, such as the law recognizes as no
infringement of the copyright of the plaintiffs. It is said, that the defendant
has selected only such materials, as suited his own limited purpose as a
biographer. That is, doubtless, true; and he has produced an exceedingly
valuable book. But that is no answer to the difficulty. It is certainly not
necessary, to constitute an invasion of copyright, that the whole of a work
should be copied, or even a large portion of it, in form or in substance. 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 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. Neither does it necessarily depend upon the quantity
taken, whether it is an infringement of the copyright or not. It is often
affected by other considerations, the value of the materials taken, and the
importance of it to the sale of the original work. Lord Cottenham, in the
recent cases of Bramwell v. Halcomb, 3 Mylne & C. 737, 738, and Saunders v.
Smith, Id. 711, 736, 737, adverting to this point, said: 'When it comes to a
question of quantity, it must be very vague. One writer might take all the
vital part of another's book, though it might be but a small proportion of the
book in quantity. It is not only quantity, but value, that is always looked to.
It is useless to refer to any particular cases, as to quantity.' In short, we
must often, in deciding questions of this sort, 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. Many mixed ingredients enter into
the discussion of such questions. In some cases, a considerable portion of the
materials of the original work may be fused, if I may use such an expression,
into another work, so as to be undistinguishable in the mass of the latter,
which has other professed and obvious objects, and cannot fairly be treated as
a piracy; or they may be inserted as a sort of distinct and mosaic work, into
the general texture of the second work, and constitute the peculiar excellence
thereof, and then it may be a clear piracy. If a person should, under color of
publishing 'Elegant Extracts' of poetry, include all the best pieces at large
of a favorite poet, whose volume was secured by a copyright, it would be
difficult to say why it was not an invasion of that right, since it might constitute
the entire value of the volume. The case of Mawman v. Tegg, 2 Russ. 385, is to
this purpose. There was no pretence in that case, that all the articles of the
encyclopedia of the plaintiffs had been copied into that of the defendants; but
large portions of the materials of the plaintiffs' work had been copied. Lord
Eldon, upon that occasion, held, that there might be a piracy of part of a
work, which would entitle the plaintiffs to a full remedy and relief in equity.
In prior cases, he had affirmed the like doctrine. In Wilkins v. Aikin, 17 Ves.
422, 424, he said: 'There is no doubt, that a man cannot, under the pretence of
quotation, publish either the whole or a part of another's book, though he may
use, what in all cases it is difficult to define, fair quotation.' In Roworth
v. Wilkes, 1 Camp. 94, Lord Ellenborough said: 'A review will not, in general,
serve as a substitute for the book reviewed; and even there, if so much is
extracted, that it communicates the same knowledge with the original work, it
is an actionable violation of literary property. The intention to pirate is not
necessary in an action of this sort; it is enough, that the publication
complained of is in substance a copy, whereby a work vested in another is
prejudiced. A compilation of this kind (an encyclopedia) may differ from a
treatise published by itself; but there must be certain limits fixed to its
transcripts; it must not be allowed to sweep up all modern works, or an
encyclopedia would be a recipe for completely breaking down literary property.'
The vice chancellor (Sir L. Shadwell), in Sweet v. Shaw, 1 Jur. (London) 212 [3
Jur. 217], referring to the remarks of Lord Ellenborough, cited by counsel,
said: 'That does not mean a substitute for the whole work. From what you state,
suppose a book to contain one hundred articles, and ninety-nine were taken,
still it would not be a substitute.' And in this very case he granted an
injunction, being of opinion, that there was primp̂rima facie, at law, an
invasion of the plaintiffs' right; not only an injury, but also a damage to the
plaintiffs, in copying from several volumes of Reports, published by the
plaintiffs, although eleven only had been copied verbatim, but a considerable
number of what were called 'abridged cases,' were, in truth, copies of the
plaintiffs' volumes, with little, or trifling, alterations. It is manifest,
also, from what fell from Lord Chancellor Cottenham, in Saunders v. Smith, 3
Mylne & C. 711, that he entertained no doubt, (although he did not decide
the point,) that there might be a violation of the copyright of volumes of
Reports, by copying [349] verbatim a part only of the cases reported. Much
must, in such cases, depend upon the nature of the new work, the value and
extent of the copies, and the degree in which the original authors may be
injured thereby. In Lewis v. Fullarton, 2 Jur. (London) 127 [3 Jur. 669], 2
Beav. 6, Lord Langdale, in the case of a topographical dictionary, held, that
largely copying from the work in another book having a similar object, was a
violation of that copyright, although the same information might have been
(but, in fact, was not) obtained from common sources, open to all persons. On
that occasion, he said: 'None are entitled to save themselves trouble and
expense, by availing themselves, for their own profit, of other men's works,
still entitled to the protection of copyright;' and, accordingly, in that case,
he granted an injunction as to the parts pirated, although it was admitted, on
all hands, that there was much which was original in the new work.
In the present case, I have no doubt
whatever, that there is an invasion of the plaintiffs' copyright; I do not say
designedly, or from bad intentions; on the contrary, I entertain no doubt, that
it was deemed a perfectly lawful and justifiable use of the plaintiffs' work.
But if the defendants may take three hundred and nineteen letters, included in
the plaintiffs' copyright, and exclusively belonging to them, there is no
reason why another bookseller may not take other five hundred letters, and a
third, one thousand letters, and so on, and thereby the plaintiffs' copyright
be totally destroyed. Besides; every one must see, that the work of the
defendants is mainly founded upon these letters, constituting more than one
third of their work, and imparting to it its greatest, nay, its essential
value. Without those letters, in its present form the work must fall to the
ground. It is not a case, where abbreviated or select passages are taken from
particular letters; but the entire letters are taken, and those of most
interest and value to the public, as illustrating the life, the acts, and the
character of Washington. It seems to me, therefore, that it is a clear invasion
of the right of property of the plaintiffs, if the copying of parts of a work,
not constituting a major part, can ever be a violation thereof; as upon
principle and authority, I have no doubt it may be. If it had been the case of
a fair and bona fide abridgment of the work of the plaintiffs, it might have
admitted of a very different consideration.
I have come to this conclusion, not without some regret, that it may interfere, in some measure, with the very meritorious labors of the defendants, in their great undertaking of a series of works adapted to school libraries. But a judge is entitled in this case, as in others, only to know and to act upon his duty. I hope, however, that some means may be found, to produce an amicable settlement of this unhappy controversy. The report of the master must stand confirmed, and a perpetual injunction be awarded, restraining the defendants, their agents, servants and salesmen, from farther printing, publishing, selling, or disposing of any copy or copies of the work complained of; the 'Life of Washington,' by the Rev. Charles W. Upham, containing any of the three hundred and nineteen letters of Washington, stated in the report of the master, and never before published; and that it be referred to a master, to take an account of the profits made by the defendants, in the premises; with leave for either party to apply to the court for farther directions.