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Time of Request: April 13, 2000  04:06 pm EST

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Lexsee 8 FCAS 615,AT 619

Prof. Rickey-

     Do you think this might be it?  I'm guessing that what you were looking
for was an opinion of Judge Story's published as a pamphlet- I pulled it out of
the Lexis/Nexis database.  Faith passed your question on to me...

            Paul Nergelovic

                                                                          PAGE 1

                            LEXSEE 8 FCAS 615,AT 619

                             EMERSON v. DAVIES et al.

                                  Case No. 4,436

                          Circuit Court, D. Massachusetts

             8 F. Cas. 615; 1845 U.S. App. LEXIS 373; 4 W.L.J. 261; 8
                                  Law Rep. 270

                                  May, 1845, Term

                                  CASE SUMMARY

PROCEDURAL POSTURE: Plaintiff sued defendant for copyright infringement for
allegedly copying a portion of plaintiff's copyrighted arithmetic book.

OVERVIEW: In plaintiff's action for copyright infringement, the first question
was whether plaintiff's book contained any thing new and original, entitling him
to a copyright. Court held there was sufficient evidence to hold the book
contained new plans, arraignments, and combinations of material to entitle it to
valid copyright. Second question was whether defendants infringed plaintiff's
copyright by their published book. Court held in comparing the two works it was
likely that defendant had before him, when he composed his own work, the work of
plaintiff, and that he made it his model, and imitated it closely in his title
and certain sections. The coincidences in plan, arrangement, modes of
illustration, and tables, appeared to be too exact, and various, to have been
wholly accidental and without resort to plaintiff's work. However, court gave
defendant the option of trying the issue before a jury, to be elected at a later

OUTCOME: Suit against defendant for copyright infringement decided in favor of
plaintiff. Book contained new combinations of material entitling it to valid
copyright and coincidences in plan, arrangement, modes of illustration were too
exact to have been wholly accidental. However, court gave defendants option of
trying the issue before a jury.




    [*618]  STORY, Circuit Justice.  This cause has been argued with great
ability, and with great fullness of the examination of the evidence.  The merits
of the case, however, seem to me to depend mainly, if not altogether, upon two
points: First, whether the plaintiff's book contains any thing new and original,
entitling him to a copy-right.  Secondly, whether, if the plaintiff has a title
by copy-right, the defendants have infringed that copy-right by the book
published by them, or, as it is technically expressed, whether they have printed
the work of the plaintiff.

                                                                          PAGE 2
              8 F. Cas. 615, *618; 1845 U.S. App. LEXIS 373, **1;
                          4 W.L.J. 261; 8 Law Rep. 270

   Upon the first question, at least, upon the evidence in the case, there does
not appear to me to be any reasonable ground of doubt.  The book of the
plaintiff is, in my judgment, new and original, in the sense in which those
words are to be understood in cases of copy-right.  The question is not, whether
the materials which are used are entirely new, and have never been used before;
or even that they have never been used before for the same purpose.  The true
question is, whether the same plan, arrangement and combination of materials
have been used before for the  [*619]  same purpose or for any other [**2]
purpose.  If they have not, then the plaintiff is entitled to a copy-right,
although he may have gathered hints for his plan and arrangement, or parts of
his plan and arrangement, from existing and known sources.  He may have borrowed
much of his materials from others, but if they are combined in a different
manner from what was in use before, and a fortiori, if his plan and arrangement
are real improvements upon the existing modes, he is entitled to a copy-right in
the book embodying such improvement.  See Lewis v. Fullarton, 2 Beav. 6. It is
true, that he does not thereby acquire the right to appropriate to himself the
materials which were common to all persons before, so as to exclude those
persons from a future use of such materials; but then they have no right to use
such materials with his improvements superadded, whether they consist in plan,
arrangement or illustrations, or combinations; for these are strictly his own.
A man who constructs a new machine, is entitled to a patent therefor, if the
combination and arrangements thereof are new and his own invention, although he
uses old materials and old mechanical apparatus and powers in constructing such
machine.  He may use [**3]  wheels, or levers, or screws, or toggle-joints, or
cranks, or any other known modes of accomplishing given mechanical ends, if he
combines them in a new manner, and thus produces a beneficial result.  The
steam-engine, the steam-boat, the cut-nail machine, the card machine, the
grooving machine, are all but new combinations of old materials, old processes,
and old mechanical powers and apparatus.

   In truth, in literature, in science and in art, there are, and can be, few,
if any, things, which, in an abstract sense, are strictly new and original
throughout.  Every book in literature, science and art, borrows, and must
necessarily borrow, and use much which was well known and used before.  No man
creates a new language for himself, at least if he be a wise man, in writing a
book.  He contents himself with the use of language already known and used and
understood by others.  No man writes exclusively from his own thoughts, unaided
and uninstructed by the thoughts of others.  The thoughts of every man are, more
or less, a combination of what other men have thought and expressed, although
they may be modified, exalted, or improved by his own genius or reflection.  If
no book could be [**4]  the subject of copy-right which was not new and original
in the elements of which it is composed, there could be no ground for any
copy-right in modern times, and we should be obliged to ascend very high, even
in antiquity, to find a work entitled to such eminence.  Virgil borrowed much
from Homer; Bacon drew from earlier as well as contemporary minds; Coke
exhausted all the known learning of his profession; and even Shakespeare and
Milton, so justly and proudly our boast as the brightest originals would be
found to have gathered much from the abundant stores of current knowledge and
classical studies in their days.  What is La Place's great work, but the
combination of the processes and discoveries of the great mathematicians before
his day, with his own extraordinary genius?  What are all modern law books, but
new combinations and arrangements of old materials, in which the skill and
judgment of the author in the selection and exposition and accurate use of those
materials, constitute the basis of his reputation, as well as of his copy-right?

                                                                          PAGE 3
              8 F. Cas. 615, *619; 1845 U.S. App. LEXIS 373, **4;
                          4 W.L.J. 261; 8 Law Rep. 270

Blackstone's Commentaries and Kent's Commentaries are but splendid examples of
the merit and value of such achievements.

   In truth, every [**5]  author of a book has a copy-right in the plan,
arrangement and combination of his materials, and in his mode of illustrating
his subject, if it be new and original in its substance.  Sir John Leach, in
Barfield v. Nicholson, 2 Sim. & S. 1, 6, recognized this doctrine in its fullest
extent; and there stated, that a copy-right might well be taken where the
composition is either new, or there is a new arrangement thereof.Nay, the right
to a copy-right does much farther.  A man has a right to a copy-right in a
translation, upon which he has bestowed his time and labor.  To be sure, another
man has an equal right to translate the original work, and to publish his
translation; but then it must be his own translation by his own skill and labor;
and not the mere use and publication of the translation already made by another.
Wyatt v. Barnard, 3 Ves. & B. 77. A man has a right to the copy-right of a map
of a state or country, which he has surveyed or caused to be compiled from
existing manterials, at his own expense, or skill, or labor, or money.  Another
man may publish another map of the same state or country, by using the like
means or materials, and the like skill, labor and expense.  But [**6]  then he
has no right to publish a map taken substantially and designedly from the map of
the other person, without any such exercise of skill, or labor, or expense.  If
he copies substantially from the map of the other, it is downright piracy;
although it is plain that both maps must, the more accurate they are, approach
nearer in design and execution to each other.  Matthewson v. Stockdale, 12 Ves.
270; Wilkins v. Aikin, 17 Ves. 422. He, in short, who by his own skill, judgment
and labor, writes a new work, and does not merely copy that of another, is
entitled to a copy-right therein; if the variations are not merely formal and
shadowy, from existing works.  He, who constructs by a new plan, and
arrangement, and combination of old materials, in a book designed for
instruction, either of the young, or the old, has a title to a copy-right, which
cannot be displaced by showing that some part of his plan, or arrangement or
combination, has been used before.

   The case of Gray v. Russell [Case No. 5,728] affords a strong illustration of
the  [*620]  doctrine, as that was a case confessedly of a mere improvement of
an old work, Adams's Latin Grammar, a subject that had been discussed [**7]  and
treated in many hundred works, and in which little more could be done than to
arrange the materials upon a new plan, or in a new combination, with additional
illustrations and initial remarks.  Yet the court held it clearly to be the
subject of a copy-right; and from the doctrine therein stated I feel not the
slightest inclination to depart.  It was upon the like ground that an action has
been held to lie for the recovery of damages for pirating the new corrections
and additions to an old work, (the Itinerancy of England.) Upon that occasion,
Lord Kenyon said: "The courts of justice have been long laboring under an error,
if an author have no copy-right in any part of a book, unless he have an
exclusive right to the whole book." See, also, Trusler v. Murray, and Tonson v.
Walker, cited in 1 East, 360, 361, and notes.  Another illustration may be found
in the cases of histories and dictionaries, as stated by Lord Mansfield in Sayre
v. Moore, Id. 361, note.  "In the first, a man may give a relation of the same
facts, and in the same order of time; in the latter, an interpretation is given
of the identical same words.  But he must not servilely copy the words of
another on either [**8]  subject.  An author has as much right in his plan, and
in his arrangements, and in the combination of his materials, as he has in his
thoughts, sentiments, opinions, and in his modes of expressing them.  The former

                                                                          PAGE 4
              8 F. Cas. 615, *620; 1845 U.S. App. LEXIS 373, **8;
                          4 W.L.J. 261; 8 Law Rep. 270

as well as the latter may be more useful or less useful than those of another
author; but that, although it may diminish or increase the relative values of
their works in the market, is no ground to entitle either to appropriate to
himself the labor or skill of the other, as embodied in his own work.

   It is a great mistake to suppose, because all the materials of a work or some
parts of its plan and arrangements and modes of illustration, may be found
separately, or in a different form, or in a different arrangement, in other
distinct works, that therefore, if the plan or arrangement or combination of
these materials in another work is new, or for the first time made, the author,
or compiler, or framer of it, (call him which you please,) is not entitled to a
copy-right.  The reverse is the truth in law, and, as I think, in common sense
also.  It is not, for example, in the present case, of any importance that the
illustrating of lessons in artithmetic by attaching unit [**9]  marks
representing the numbers, embraced in the example, may be formed by dots in
Wallis's Opera Mathematica, p. 28; or in Colburn's Arithmetic in the form of
upright linear marks, in a pamphlet detached from the main work.  That is not
what the plaintiff purports to found his copy-right upon.  He does not claim the
first use or invention of unit marks for the purpose above mentioned.  The use
of these is a part of and included in his plan; but it is not the whole of his
plan.  What he does claim is, 1. The plan of the lessons in his book; 2. The
execution of that plan in a certain arrangement of a set of tables in the form
of lessons to illustrate those lessons; 3. The gradation of examples to precede
each table in such manner as to form with the table a peculiar and symmetrical
appearance of each page; 4. The illustration of his lessons by attaching to each
example unit marks representing the numbers embraced in the example.  It is,
therefore, this method of illustration in the aggregate that he claims as his
invention, each page constituting of itself a complete lesson; and he alleges
that the defendants have adopted the same plan, arrangement, tables, gradation
of examples and [**10]  illustrations by unit marks, in the same page, in
imitation of the plaintiff's book, and in infringement of his copy-right, and,
in confirmation of this statement, he refers to divers pages of his own book in
comparison with divers pages of the book of the defendants.  Now, I say that it
is wholly immaterial whether each of these particulars, the arrangement of the
tables and forms of the lessons, the gradation of the examples to precede the
tables, the illustration of the examples by unit marks, had each existed in a
separate form in different and separate works before the plaintiff's work, if
they had never been before united in one combination or in one work, or on one
page in the manner in which the plaintiff has united and connected them.  No
person had a right to borrow the same plan, and arrangement, and illustrations,
and servilely to copy them into any other work.  The same materials were
certainly open to be used by any other author, and he would be at liberty to use
unit marks and gradations of examples and tables and illustrations of the
lessons, and to place them in the same page.  But he could not be at liberty to
transcribe the very lessons and pages and examples and [**11]  illustrations of
the plaintiff, and thus to rob him of the fruits of his industry, his skill, and
his expenditures of time and money.

   I have dwelt the more upon this point, because it seems to me that some of
the learned witnesses, whose evidence is in the case, have entirely
misunderstood the law upon this subject; and some portions of the argument at
the bar seem to me to have proceeded upon an equally inadmissible ground, that
if none of the materials of the plaintiff's book were new, or invented by him,
that new combinations or arrangements, or illustrations of the old materials

                                                                          PAGE 5
              8 F. Cas. 615, *620; 1845 U.S. App. LEXIS 373, **11;
                          4 W.L.J. 261; 8 Law Rep. 270

would give a title to a copy-right.  My judgment is far otherwise; and as far as
the evidence in this case goes, it is clear to my mind, that the plaintiff has a
good copy-right in his book; that taking his plan, arrangements, lessons,
examples and illustrations, as a whole, they are not to be found combined in any
former work.  I must confess,  [*621]  that it strikes me that the plaintiff's
method is a real and substantial improvement upon all the works which had
preceded his, and which have been relied on in the evidence; but whether to be
better or worse is not a material inquiry in this case.  [**12]  If worse, his
work will not be used by the community at large; if better, it is very likely to
be so used.  But either way, he is entitled to his copy-right, "valere quantum
valere potest."

   The second question is the real and important question in the cause; and
certainly it is not without its difficulties.  It falls within that class of
cases, where the differences between different works are of such a nature, that
one is somewhat at a loss to say, whether the differences are formal or
substantial; whether they indicate a resort to the same common sources to
compile and compose them, or one is (as it were) uno flatu borrowed from the
other, without the employment of any research or skill, with the disguised but
still apparent intention to appropriate to one what in truth belongs exclusively
to the other, and with no other labor than that of mere transcription, with such
omissions or additions as may serve merely to veil the piracy.  It is like the
case of patented inventions in art or machinery, where the resemblances or
diversities between the known and the unknown, and between invention and
imitation, are so various or complicated, or minute or shadowy, that it is
exceedingly [**13]  difficult to say what is new or not, or what has been
pirated and what is substantially different.  The approaches on either side may
be almost infinitely varied, and the identity or diversity sometimes becomes
almost evenescent.  In many cases, the mere inspection of a work may at once
betray the fact that it is borrowed from another author with merely formal or
colorable omissions or alterations.  In others, again, we cannot affirm that
identity in the appearance or use of the materials is a sufficient and
conclusive test of piracy, or that the one had been fraudulently or designedly
borrowed from the other.  Take the case for example (already referred to) of
two maps of a city, a county or a country.  We cannot predicate that the one is
a piracy from the other, simply, because their external appearance is in nearly
all respects the same, with or without some additions or alterations or
omissions.  Take the case of two engravings copied from the same picture, or two
pictures of natural objects by different artists; -- it would not be
practicable, in many cases, from the mere inspection of them and their apparent
identity, to say, that the one was a transcript of the other.  It would [**14]
be necessary to resort to auxiliary and supplementary evidence to establish the
fact either way.  And this leads me to remark, that the bill directly charges
"that the said work of the defendant Davies is copied and pirated from that" of
the plaintiff, and is an infringement of his copy-right in the particulars set
forth in the bill.  These particulars we shall have occasion hereafter to
consider.  The defendant, Davies, in his answer, alleges from his own knowledge,
and the other defendant Barnes alleges from information and belief.  "That
neither the said work composed by the defendant Davies, nor any part thereof,
is copied, adopted or taken from the said book of the said complainant, or any
part thereof." Now this part of the answer, being directly responsive to the
charge made in the bill, is positive evidence of the fact for the defendants,
unless it is overcome by the clear testimony of two witnesses, or of one witness
and equivalent circumstances.  In short, the true exposition of this rule in

                                                                          PAGE 6
              8 F. Cas. 615, *621; 1845 U.S. App. LEXIS 373, **14;
                          4 W.L.J. 261; 8 Law Rep. 270

equity is, that where the answer is responsive to the charge in the bill, it is
to be taken as true, unless its credibility is impeached in such a manner as
renders it unsafe and improper [**15]  to place confidence in it; and this may
be by direct testimony, or by circumstantial evidence sufficient to overthrow
its credibility.

   It has been suggested at the bar, and it is a suggestion not without weight,
that the answer of the defendants no where denies, that Davies had seen the
plaintiff's book before his own was compiled and published.  The omission of
such denial would have been more stringent if the bill had contained any
interrogatory pointed directly to the fact that Davies had seen it.  Not
containing any such interrogatory, the attention of the defendants may not have
been drawn to the importance of such a denial, if it could be correctly made.
Still, as the book of Emerson was published in 1829, and had a wide circulation,
and that of Davies was not published until 1840, the natural inference certainly
is, that, composing a book on the same subject, for the same professed object,
the instruction of beginners in arithmetic, he should, considering his local
position in New York, have examined all the existing works published and on sale
in the neighboring states upon the same subject.  I rather incline, therefore,
to think, that under all the circumstances, it must [**16]  be taken as a fact
by the court, that Davies, when he compiled his work, had seen and read that of
Emerson.  But then this circumstance does not necessarily displace the substance
of the answer to the charge in the bill.It may be true, that Davies had seen and
read Emerson's book, and yet that he may not have copied or adopted or taken any
part of it from that of Emerson; but from common sources open to all authors and
compilers.  It should be added that the answer expressly alleges that the
similarity of appearance between certain pages of the two books alleged in the
bill, "if such similarity of appearance do exist, which the defendants deny, was
purely accidental and was not intended, expected or desired by this defendant,
[*622]  Davies." There is some evidence that the arrangement of the whole matter
of one lesson on one and the same page was the act of the stereotyper, and was
afterwards adopted by Davies.  But the stereotyper did not change the
arrangement by Davies of the matter of each lesson; and if that matter had been
on different pages, and yet it had been a mere transcript from Emerson's book,
it would have been a clear invasion of his copy-right.  The question is [**17]
not in what part of one or more pages the matter is found, but whether it is
borrowed or pirated from the plaintiff, without any substantial alteration or
difference.  In truth, however, the placing each lesson in one and the same
page, having been finally accepted and acted upon by Davies, binds him just as
much as if he had originally authorized or directed it.

   The case, therefore, comes back at last to the naked consideration, whether
the book of Davies, in the parts complained of, has been copied substantially
from that of Emerson, or not.  It is not sufficient to show, that it may have
been suggested by Emerson's, or that some parts and pages of it have
resemblances, in method and details and illustrations, to Emerson's.  It must be
further shown, that the resemblances in those parts and pages are so close, so
full, so uniform, so striking, as fairly to lead to the conclusion that the one
is a substantial copy of the other, or mainly borrowed from it.  In short, that
there is substantial identity between them.  A copy is one thing, an imitation
or resemblance another.  There are many imitations of Homer in the Aeneid; but
no one would say that the one was a copy from the other.  [**18]  There may be a
strong likeness without an identity; and as was aptly said by the learned
counsel for the plaintiff in the close of his argument, "Facies non omnibus una,

                                                                          PAGE 7
              8 F. Cas. 615, *622; 1845 U.S. App. LEXIS 373, **18;
                          4 W.L.J. 261; 8 Law Rep. 270

non diversa tamen, qualem debet esse sororum." The question is, therefore, in
many cases, a very nice one, what degree of limitation constitutes an
infringement of the copy-right in a particular work.  It is very clear that any
use of materials, whether they are figures or drawings, or other things which
are well known and in common use, is not the subject of a copy-right, unless
there be some new arrangement thereof.  Still, even here, it may not always
follow, that any person has a right to copy the figures, drawings, or other
things, made by another, availing himself solely of his skill and industry,
without any resort to such common source.  A striking case to illustrate the
first part of this proposition, is Barfield v. Nicholson, 2 Sim. & S. 1, 6.
There, the question was whether a work called the "Practical Builder," was an
infringement upon the "Architectural Dictionary," both works having been
compiled by the same gentleman, Mr. Nicholson, and both being, plainly, on the
same subject, the science of architecture [**19]  and the art of building.  On
that occasion, Sir John Leach (the vice-chancellor) said: "The Architectural
Dictionary, and The Practical Builder, are plainly both works upon the same
subjects, namely, the science of architecture and the art of building.  The
question is, whether the latter work is a piracy upon any part of the former
work, which the author of that work had a right to claim as his own property, in
respect that it was his own composition.  Composition is either in new matter or
new arrangement.  The arrangement in the two works is altogether different.  In
The Architectural Dictionary, the information is scattered through the whole
work, under the head of each particular term of science or art, arranged in
alphabetical order: in The Practical Builder, the information is conveyed in the
connected form of a treatise.  If there be piracy here, it must be piracy of the
matter of The Architectural Dictionary.  The general answer of the defendant is,
that The Practical Builder was conceived and planned by him as a speculation on
his own account, and that he employed various artists in the execution of this
work, and, among others, Nicholson and his son; and especially in the [**20]
plates; and that he paid for everything as original design; and that, if it be
a piracy, he is himself imposed upon.  The Practical Builder, as far as
published, consists of forty-six plates; and the affidavits alleged that
thirteen of these plates contain one, two, three or four figures, which the
imitations of figures contained in The Architectural Dictionary; and the
particular figures are pointed out in the affidavits.  The entire resemblance of
these figures, though in some instances denied, is generally admitted; but it is
said, this resemblance is no proof of imitation.  The figures of geometry must
necessarily resemble each other in all works; and, in a great degree, this
applies to the figures of architecture or building, where they are descriptions
of things in use, as, for instance, in one of the articles, 'Roofs.' Where two
works describe the figures of roofs in use, they must necessarily produce
resembling figures.  And the defendant then proceeds to show, that the figures
used in his plates, supplied by the Nicholsons, are not, in fact, piratical
copies of the plaintiff's works.  The defendant does not deny (what could not be
denied) that if the Nicholsons, whom he employed,  [**21]  piratically copied
these figures from the plaintiff's work, that he is bound by their acts, as the
acts of his agents, and that piracy in the Nicholsons is piracy in him.  As to
those figures in which he admits resemblance, he says there is not one of them,
which was not given to the public in some or many works prior to The
Architectural Dictionary; that some of these prior works were the works of
Nicholson himself, as the articles of architecture in Rees's Cyclopedia, and the
same articles in Brewster's Encyclopedia, and The Carpenter's Guide,  [*623]
published in 1792.  And he says further, that not only were these figures extant
prior to The Architectural Dictionary, but that the Nicholsons had not, in fact,

                                                                          PAGE 8
              8 F. Cas. 615, *623; 1845 U.S. App. LEXIS 373, **21;
                          4 W.L.J. 261; 8 Law Rep. 270

recourse to The Architectural Dictionary for them, nor to any materials
collected for The Architectural Dictionary.  Upon reference to the prior
publications, it is proved to be indisputably true, that there is not one of
these figures which had not been given to the world prior to The Architectural
Dictionary; and the matter not being new, the author of The Architectural
Dictionary could acquire no property in these figures except by a new
arrangement; but there is clearly [**22]  no novelty in his arrangement.  The
figures of The Architectural Dictionary are introduced to illustrate the
letter-press; and so are all figures in prior works, as well as in The Practical
Builder.  If therefore the figures furnished by Nicholson for The Practical
Builder had in fact been copied from the Architectural Dictionary, this would
have been no piracy, because the author of The Architectural Dictionary had no
property in these figures.  But the Nicholsons, both father and son, positively
swear that these figures were not copied from The Architectural Dictionary, nor
from any materials collected for The Architectural Dictionary.  With respect to
the letter-press, the affidavits filed by the plaintiff do not point out
particular instances of invasion; but upon the motion, I was referred to the
article 'Roofs,' which is nearly a verbatim copy of the same article in The
Architectural Dictionary.  The defendant's answer here is the same as to the
figures.  This article was published verbatim in the Encyclopedia prior to The
Architectural Dictionary, and is not therefore the property of the plaintiff."

   The other part of the proposition may be illustrated by the case, already
[**23]  stated, of maps and engravings borrowed from copy-right maps and
engravings, without any resort to the originals, or to any common sources.
Wilkins v. Aikin, 17 Ves. 422, 424, 425; Matthewson v. Stockdale, 12 Ves. 270;
Longman v. Winchester, 16 Ves. 269. In Roworth v. Wilkes, 1 Camp. 94, which was
among other things, an action for pirating certain prints in a work on fencing,
it appeared in evidence that three of the engravings of the defendant
represented figures in exactly the same attitudes as the plaintiff's, but
disguised by a different costume.  Lord Ellenborough on that occasion, said:
"But it is still to be considered whether there be such a similitude and
conformity between the prints, that the person who executed the one set must
have the others as a model.  In that case, he is a copyist of the main design.
But if the similitude can be supposed to have arisen from accident, or
necessarily from the nature of the subject, or from the artist having sketched
designs merely from reading the letter-press of the plaintiff's work, the
defendant is not answerable.  It is remarkable, however, that he has given no
evidence to explain the similitude, or to repel the presumption which [**24]
that necessarily causes." And the verdict was for the plaintiff.  Now, it is
quite as remarkable that the defendant, Davies, has not, (as far as I recollect)
given any evidence as to what sources he examined in the compilation of his own
work; and this, coupled with the fact that he has offered no denial, or proof
that he had not seen, or read the plaintiff's book before his own compilation
was made, is certainly a circumstance of some significance.  It is in the
highest degree probable that he had seen and read some of the works on
arithmetic, referred to by the witnesses, before, his compilation was made, such
as Colburn's Arithmetic, Leslie's Philosophy of Arithmetic, Adams's Arithmetic,
Develey's Arithmetique d'Emile, for they are all to be found in the library at
West Point, where he was a professor.  But it is far from being certain, that he
had ever seen Francoeur's Cours complet de Mathematique Pures, or Jonaune's
Arithmetique Elementaire; and there is no pretence to say that he had seen or
used Wallis's Arithmetic.  But neither of these works embraces in itself the
same plan, method, arrangement, tables and examples, in the same connection, or

                                                                          PAGE 9
              8 F. Cas. 615, *623; 1845 U.S. App. LEXIS 373, **25;
                          4 W.L.J. 261; 8 Law Rep. 270

for the same purposes, or in [**25]  the same progressive order of lessons, as
the plaintiff's.  Adams's Arithmetic is wholly different.  Colburn's Arithmetic
approaches the nearest to the plaintiff's in its use of unit marks.  But it
differs from the plaintiff's in this material respect; that in Colburn's the
unit marks are in a separate pamphlet from the text, and need, of course, the
aid of an instructor.  In the plaintiff's they are united, and the child
instructs himself.

   Now, it is by no means clear, that the defendant, Davies, without consulting
the plaintiff's work, was in fact led to the same course of lessons, examples,
and illustrations, and tables, which he has used in the first twenty pages of
his work, on addition, and which bears so close a resemblance to the first
eighteen pages of the plaintiff's work.  And the question then comes to this,
whether he has, in substance, copied these pages, in plan, method, arrangement,
illustrations and tables, from the plaintiff's work, with merely colorable
alterations and devices to disguise the copy, or whether the resemblances are
merely accidental, and naturally or necessarily grew out of the objects and
scheme of the defendant, Davies's work, without any use of [**26]  the
plaintiff's.  If the defendant, Davies, had before him, at the time, the work of
the plaintiff, and used it as a model for his own plan, arrangements, examples
and tables, then I should say, following the doctrine of Lord Ellenborough, in
Roworth v. Wilkes, that it was an infringement of the plaintiff's copyright,
notwithstanding the alterations and disguises in the forms of the examples and
unit marks.  Lord Mansfield, in Sayre v. Moore, cited 1 East, 361, 362, note,
said: "In  [*624]  all these cases the question of fact to come to a jury,
is, whether the alteration be colorable or not.  There must be such a similitude
as to make it probable and reasonable to suppose, that one is a transcript of
the other, and nothing more than a transcript.  So in the case of prints; no
doubt different men may take engravings from the same picture.  The same
principle holds in regard to charts, that a man who has it in his intention to
publish a chart, may take advantage of all prior publications.  There is no
monopoly in the subject here, any more than in the other instances.  But upon a
question of this nature the jury will decide, whether it be a servile imitation
or not." Observe, his [**27]  lordship does not say, a mere literal copy, but a
servile imitation.  In Trusler v. Murray, Id. 362, note, Lord Kenyon put the
point in the same light, and said: "The main question here, was, whether, in
substance, the one work is a copy and imitation of the other; for, undoubtedly,
in a chronological work, (the case before the court was of that nature) the same
facts must be related." The same doctrine was recognized by the court of king's
bench, in Cary v. Longman, Id. 358; and it was fully acted on in Matthewson v.
Stockdale, 12 Ves. 270, and Longman v. Winchester, 16 Ves. 269, and Wilkins v.
Aikin, 17 Ves. 422, 424, 425, in the court of chancery.  So that, I think, it
may be laid down as the clear result of the authorities in cases of this nature,
that the true test of piracy or not is to ascertain whether the defendant has,
in fact, used the plan, arrangements, and illustrations of the plaintiff, as the
model of his own book, with colorable alterations and variations only to
disguise the use thereof; or whether his work is the result of his own labor,
skill, and use of common materials and common sources of knowledge, open to all
men, and the resemblances are either accidental [**28]  or arising from the
nature of the subject.  In other words, whether the defendant's book is, quoad
hoc, a servile or evasive imitation of the plaintiff's work, or a bona fide
original compilation from other common or independent sources.

   In respect to the Abacus, I throw it, at once, out of the case.  The

                                                                         PAGE 10
              8 F. Cas. 615, *624; 1845 U.S. App. LEXIS 373, **28;
                          4 W.L.J. 261; 8 Law Rep. 270

controversy is not, here, in respect to a patent for a machine, embodying the
Abacus, but in respect to the copy-right of a book, instructing by lessons in an
entirely different form and method.  The abacus may have suggested means of
instruction by signs; but it is not a book, and has not the same identical
objects, uses and methods of instruction.  In comparing the book of the
plaintiff with that of the defendant, Davies, in the first eighteen to twenty
pages, the tables appear to be identical.  It is said, that there is nothing new
in these tables.  That they are well known, and were in common use, long before
the plaintiff's work was published.  Be it so.  The question is, not whether
such tables existed before; but whether the use and arrangement of them as a
part of the plaintiff's work, is new, and has not been borrowed by the defendant
from the plaintiff.  In each book they [**29]  stand at the bottom of the page
or lesson, and are used for the same purpose, to fix in the memory what has been
previously taught in the lesson which precedes it.  Then again, the mode of
illustration by progressive lessons, and visible unit marks, is the same in
each, and is used for precisely the same purpose.  Take, for example, pages 10
and 11 of Davies and compare them with pages 8 and 9, of Emerson's; each puts
the question in the same form, and each suggests the answer by visible unit
marks.  The unit marks in Davies are, uniformly, a star; the unit marks in
Emerson are various -- trees, apples, horses, chairs, &c.  But will it be
contended, that, if in all other respects these twenty pages were identical, the
substitution of a star for other figures, or of one figure for another, would
have made these pages substantially different?  I presume not.  The change of
costume of the fencing figures, in the case before Lord Ellenborough, was
treated as a mere evasion.

   The two principal differences between the book of the defendant, Davies, and
that of the plaintiff, in the pages in "Addition," already referred to, seem to
be, first, that Davies uniformly uses stares as unit marks,  [**30]  and the
plaintiff a great variety of different figures, to illustrate the questions; and
secondly, that Davies there omits all the different modes of illustrating the
questions by putting cases which the plaintiff uniformly uses.  Thus Davies puts
the question, "One and two are how many?" merely, and then places a star under
one, and two stars under two; whereas the plaintiff puts the case thus, "Tell me
how many trees are one and two trees," placing the figure of a tree by itself,
and then the figures of two trees together, and then comes the question in the
abstract, "One and two are how many?" Davies, however, puts divers illustrative
examples, see pages 20, 21, but they are placed in a subsequent page, and are
not a part of the original lesson, nor put in juxtaposition.  In each book, (as
has been already remarked), tables exactly alike follow at the bottom of the
page, to be committed to memory, as the result of the lesson.  The resemblances
in the title or section of "Subtraction" in Davies are not so striking.  The
questions there put, and the tables there given, are of a similar nature; but
the stars are omitted.  But it is principally in the title or section of
"Addition"  [**31]  that the resemblances are so close and exact, as directly to
raise the question whether the title or section of the one book was borrowed,
with colorable alterations only, from the other.  If it was then, quoad this
title or section, the injunction ought to be granted, although the rest of the
work of Davies may not infringe any part of that of the plaintiff;  [*625]
for, to amount to an infringement, it is not necessary that there should be a
complete copy or imitation in use throughout; but only that there should be an
important and valuable portion, which operates injuriously to the copy-right of
the plaintiff.  The cases of Wilkins v. Aikin, 17 Ves. 422, and Bramnell v.
Halcomb, 3 Mylne & C. 737, 738, and Campbell v. Scott, 11 Sim. 31, fully

                                                                         PAGE 11
              8 F. Cas. 615, *625; 1845 U.S. App. LEXIS 373, **31;
                          4 W.L.J. 261; 8 Law Rep. 270

establish this position.  See, also, Mawman v. Tegg, 2 Russ. 385, 397-400.Nor is
it any objection to the injunction, that if it goes to a part of a work, it may
render the other part, which is original, wholly without value, or injuriously
diminish its value.  The answer to this suggestion, if made, is to be found in
the language of Lord Eldon, in Id. 388, 390. His lordship there said: "As to the
hard consequences which would follow from [**32]  granting an injunction, when a
very large proportion of the work is unquestionably original, I can only say,
that, 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 the 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."

   It has been truly said, that the subject of both of these works is of such a
nature that there must be close resemblances between them.  But the real
question on this point, is, not whether such resemblances exist, but whether
[**33]  these resemblances are purely accidental and undesigned, and unborrowed,
because arising from common sources accessible to both the authors, and the use
of materials open equally to both; whether, in fact, the defendant Davies used
the plaintiff's work as his model, and imitated and copied that, and did not
draw from such common sources or common materials.  Then, again, it has been
said that, to amount to piracy, the work must be a copy and not an imitation.
That, as a general proposition, cannot be admitted.  It is true the imitation
may be very slight and shadowy.  But on the other hand, it may be very close,
and so close as to be a mere evasion of the copy-right, although not an exact
and literal copy.  And again, it is said that the plan of the work of the
defendant Davies is different from that of the plaintiff's.  The volume is but
the commencement of a course of mathematics.  It may be true, (but into this I
do not inquire), that taking the entire volume, the other parts may not be
executed upon the same plan as the plaintiff's.  But, then, if it substantially
includes the essential parts of the plaintiff's plan, of his arrangement,
examples and tables, so as to supersede [**34]  the work of the plaintiff, it is
a violation of his copy-right.  It is like the case of publishing the substance
of an article of an author in an Encyclopedia; or the substance of a volume of
poems of an author in a work purporting to contain extracts from his works and
those of other authors.  Yet in each of these cases the copy-right of the author
is violated.  The cases of Mawman v. Tegg, 2 Russ. 388, and Campbell v. Scott,
11 Sim. 31, abundantly establish this.  The plaintiff's volume consists but of
forty-eight pages; and if it turns out that twenty or more of them have been so
closely imitated by the defendant, Davies, and that it superseded that of the
plaintiff, it will be difficult to say that it is not an infringement of his

   I have bestowed a good deal of reflection upon this case; and, at last, I
feel constrained to say, that I am unable to divest myself of the impression
that, in point of fact, the defendant, Davies, had before him, when he composed
his own work, the work of the plaintiff, and that he made it his model, and
imitated it closely in his title or section of "Addition," and in a great

                                                                         PAGE 12
              8 F. Cas. 615, *625; 1845 U.S. App. LEXIS 373, **35;
                          4 W.L.J. 261; 8 Law Rep. 270

measure, in that of "Subtraction" also.  The coincidences in [**35]  plan,
arrangement, modes of illustration, and tables, appear to me to be too exact,
and various, to have been wholly accidental and without resort to the
plaintiff's work.  Both of the works appear to me to be highly meritorious;
which is the most useful and convenient in practice, it is no part of my duty to
consider or decide.  That properly belongs to another tribunal -- the public.
Nor do I mean to suggest that the defendants have not acted with entire good
faith; although I cannot but think they have acted under a mistake of the law.
I strongly incline to the opinion, although I admit the case is not free from
all difficulty, that it is my duty to order an injunction as to all the book of
the defendant, Davies, from the tenth to the nineteenth pages inclusive, and
from the twenty-fifth to the thirty-fourth pages, inclusive.

   My only doubt has been, whether, under all the circumstances of the case, I
ought not to direct an issue to try the question of the violation of the
copy-right, as was done in Bramnell v. Halcomb, 3 Mylne & C. 737. If such an
issue were directed, I should order it to be tried by a jury at the bar of this
court, in the following form and confined to that;  [**36]  the jury to find
whether the defendant, Davies, in his book, entitled "First Lessons in
Arithmetic," stated in the case, in the pages thereof from the tenth to the
nineteenth pages inclusive, and from  [*626]  the twenty-fifth to the
thirty-fourth pages inclusive, and from the thirty-seventh to the forty-fourth
pages inclusive, did use the work of the plaintiff entitled "The North American
Arithmetic, Part First," stated in the case, as a model, and copy or imitate the
plan, arrangement, mode of illustration, and tables thereof, or whether the same
pages of the work of the said Davies were prepared without knowledge or use of,
or reference to the said work of the plaintiff, and the coincidences therein
arose from the use of common sources of information and common materials, open
to both, and were accidental and undesigned.  If the defendants shall elect the
trial of such an issue, I shall be willing to grant it upon the terms, that they
pay the ordinary taxable costs of the suit to the plaintiff up to the present
time, the expense of the printing of the record being divided between the
plaintiff and the defendants; and the future costs to abide the result of the
verdict and decree [**37]  of the court.  In case such an issue shall be
elected, no other evidence is to be laid before the jury except that contained
in the record and the works therein referred to -- with this qualification and
enlargement, that the defendants shall be at liberty to offer evidence (if they
choose), to show what were, in point of fact, the original sources and works to
which the defendant, Davies, resorted, or which he used in compilling his work;
and the plaintiff shall also be at liberty to offer evidence (if he chooses),
that the defendant, Davies, had before or in compiling his work, seen, known,
and used the plaintiff's work; and for this, and for no other purpose, the
plaintiff shall be at liberty to require the defendant, Davies, to answer upon
oath, such written interrogatories as to his having seen, known, or used the
plaintiff's work before or in compiling his own work, as he shall be advised.

   The defendants are to elect whether they will take an issue or not, on or
before the first day of September.

   A petition for a re-hearing was afterwards filed [Case No. 4,437], but while
it was under argument, the matter was finally settled by a private agreement of
the parties, the plaintiff [**38]  admitting, that the infringement of the
copy-right by the defendant was unintentional, and the petition was accordingly

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Time of Request:   April 13, 2000  04:06 pm EST

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